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Telemundo Network Group LLC v. LaPorte Holdings [2005] GENDND 1754 (31 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Telemundo Network Group LLC v. LaPorte Holdings

Case No. D2005-0966

1. The Parties

The Complainant is Telemundo Network Group LLC, Hialeah, Florida, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.

The Respondent is LaPorte Holdings, Los Angeles, California, United States of America.

2. The Domain Names and Registrar

The disputed domain names <mundostv.com>, <muntv.com>, <muntv2.com>, <mun2tv.net>, and <telemundopuertorico.com> (collectively, the “Subject Domain Names”) are registered with NameKing.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2005. On September 9, 2005, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the Subject Domain Names. On September 10, 2005, NameKing.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 14, 2005. The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 21, 2005. In accordance with the Rules, Paragraph 5(a), the due date for Response was October 11,  2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on October 12, 2005.

The Center appointed Lorelei Ritchie de Larena as the sole panelist in this matter on October 20, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, Paragraph 7.

4. Factual Background

Complainant, Telemundo Network Group (“Telemundo”), is a multinational media company which specializes in Spanish-language television programming. Telemundo broadcasts via its own stations, as well as via numerous broadcast and cable affiliates thoughout the United States and Puerto Rico, among other markets. Telemundo also owns and operates cable television channels Telemundo International (in Latin America) and Mun2 (in the United States of America) and cable network Telemundo Puerto Rico (in the United States). Telemundo is a subsidiary of NBC Universal, which is a subsidiary of General Electric. Telmundo has been in operation since the 1950’s.

Complainant is the owner of current United States trademark registrations on various iterations of its name and business uses, including TELEMUNDO (filed 1988); MUN2 (filed 2001); and TELEMUNDO together with other terms describing its business (such as TELEMUNDO DISCOS (filed 2004)). Complainant has also registered its trademarks in other jurisdictions. Complainant, via General Electric, holds the registration on a number of domain names that incorporate its trademarks, including: <telemundo.com>; <mun2tv.com>; <mun2.tv>; and other variations that include geographical or other descriptive terms. Complainant uses these domain names to link Internet viewers to active websites that describe or advertise its programming and other services.

Respondent has linked the Subject Domain Names to websites that describe or advertise goods or services that are unaffiliated with Complainant or Complainant’s services. Respondent lists administrative, billing, and technical contacts for the subject domain names all at the same address in Los Angeles, California.

5. Parties’ Contentions

A. Complainant

Complainant contends that:

(i) the Subject Domain Names are identical or confusingly similar to Complainant’s trademarks; and

(ii) Respondent has no rights or legitimate interest in the Subject Domain Names; and

(iii) Respondent registered and is using the Subject Domain Names in bad faith.

B. Respondent

The Respondent did not reply to Complainant’s contentions in this proceeding.

6. Discussion and Findings

A. Identical or Confusingly Similar

This Panel must first determine whether the Subject Domain Names are “identical or confusingly similar to a trademark or service mark in which the Complainant has rights” in accordance with Paragraph (4)(a)(i) of the Policy. The Panel finds that each of the Subject Domain Names meets that standard.

1. <mundostv.com>: The first domain name at issue is <mundostv.com>. This domain name includes direct phonetic incorporation of Complainant’s registered trademark MUN2 since the number “2” in Spanish – the language of most of Complainant’s clientele – is pronounced “dos.” The addition of the descriptive term “tv” at the end of the domain name does not detract from, but rather adds to, the confusing similarity since Complainant is well known in the field of television, and has been for decades. Numerous UDRP panels have agreed that supplementing or modifying a trademark with a generic term does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of Paragraph (4)(a)(i) of the Policy. See, for example, DaimlerChrysler A.G. v. Donald Drummonds, WIPO Case No. D2001-0160; and Microsoft Corp. v. Stepweb, WIPO Case No. D2000-1500. Furthermore, the domain name <mundostv.com> closely reflects domain names registered and in use by Complainant, <mun2tv.com> and <mun2.tv.> This Panel therefore finds that this domain name is identical or confusingly similar to a trademark in which Complainant has rights.

2. <muntv.com>: The second domain name at issue is <muntv.com>. Here, Respondent has taken an abbreviated version of Complainant’s registered trademarks TELEMUNDO and MUN2 and added the descriptive term “TV.” For the reasons stated in #1, this Panel again finds that this domain name is identical or confusingly similar to a trademark in which Complainant has rights.

3. <muntv2.com>: The third domain name at issue is <muntv2.com> Again, here, Respondent has taken a version of Complainant’s registered trademarks TELEMUNDO and MUN2 and added the descriptive term “TV.” For the reasons stated in #1, this Panel again finds that this domain name is identical or confusingly similar to a trademark in which Complainant has rights.

4. <mun2tv.net>: The fourth domain name at issue is <mun2tv.net>.

This domain name directly incorporates Complainant’s registered trademark MUN2. Once again relying on the reasoning discussed in #1, this Panel therefore finds that this domain name is identical or confusingly similar to a trademark in which Complainant has rights.

5. <telemundopuertorico.com>: The fifth domain name at issue is <telemundopuertorico.com>. Again, Respondent has directly incorporated a trademark registered by Complainant, TELEMUNDO. Also, the addition of the descriptive geographical term “Puerto Rico” at the end of the domain name does not detract from, but rather adds to, the confusing similarity, particularly since Complainant and its affiliates operate in Puerto Rico and Complainant operates a cable network called “Telemundo Puerto Rico” in the United States of America. This Panel therefore finds that this domain name is identical or confusingly similar to a trademark in which Complainant has rights.

In summary, this Panel finds that each of the Subject Domain Names is identical or confusingly similar to a trademark in which Complainant has rights in accordance with Paragraph (4)(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Policy provides some guidance to Respondents on how to demonstrate rights or legitimate interests in a domain name in a UDRP dispute. For example, Paragraph (4)(c) of the Policy gives examples that might show rights or legitimate interest in a domain name. These examples include:

(i) use of the domain name “in connection with a bona fide offering of goods or services”; or

(ii) demonstration that the Respondent has been “commonly known by the domain name”; or

(iii) “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

Respondent did not reply to the Complaint, however, and no evidence has been presented to this Panel that might support a claim of Respondent’s rights or legitimate interest in the Subject Domain Names. Rather, as mentioned in Section 4 of this Panel’s decision, Respondent has used the domain name to divert Internet users to websites that are unaffiliated with Complainant or Complainant’s services. Therefore, this Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of “rights or legitimate interests” in accordance with Paragraph (4)(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, Paragraph (4)(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] website or location or of a product or service on [the] web site or location.” As noted in Section 4 of this Panel’s decision, Respondent has linked the Subject Domain Names to websites that describe or advertise goods or services that are unaffiliated with Complainant or Complainant’s services. In so doing, Respondent is trading on the goodwill of Complainant’s trademarks to attract Internet users for Respondent’s own commercial gain. This evidences bad faith by Respondent.

The Policy provides another instructive example of how to evidence bad faith registration and use. Paragraph (4)(b)(ii) of the Policy notes that Complainant can show bad faith by demonstrating that Respondent has “registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct.” (emphasis added). Indeed, Complainant has provided evidence that Respondent is the registrant of other domain names that include, or slightly misspell, other famous trademarks such as <chuckychees.com>; <disneycredit.com>; <dressupbarbie.com>; <kmartpharmacy.com>; <citibankdirect.com>; <howardstrern.com>; <abcmorningshow.com> and others.

Furthermore, Respondent has already been found by other administrative panels constituted under the UDRP to have engaged in a pattern of bad faith registration and use of domain names. See for example PepsiCo, Inc. v. LaPorte Holdings, Inc., WIPO Case No. D2005-0087; General Electric Company v. LaPorte Holdings, Inc., WIPO Case No. D2005-0076; Societe des Hotels Meridien v. LaPorte Holdings, WIPO Case No. D2004-0849; and Krome Studios Pty, Ltd. V. LaPorte Holdings, Inc., WIPO Case No. D2004-0707.

Finally, Complainant’s marks are famous and have been for many years, particularly in the State of California where Respondent lists its administrative, billing, and technical contacts. It would be difficult for Respondent to demonstrate that it was not aware of Complainant’s marks at the time it registered the Subject Domain Names, nor did Respondent offer any evidence to that effect.

Therefore, this Panel finds that Respondent registered and used the Subject Domain Names in bad faith in accordance with Paragraph (4)(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <mundostv.com>; <muntv.com>; <muntv2.com>; <mun2tv.net>; and <telemundopuertorico.com> be transferred to the Complainant.

Lorelei Ritchie de Larena
Sole Panelist

Dated: October 31, 2005