DIRECTV, INC. v. Satellite Use LLC
Claim Number: FA0711001116241
Complainant is DIRECTV, INC. (“Complainant”), represented by Evan
Finkel, of Pillsbury Winthrop Shaw Pittman LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <orderdirectv.com>, registered with Enom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Joel M. Grossman, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 30, 2007; the National Arbitration Forum received a hard copy of the Complaint on December 3, 2007.
On December 3, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <orderdirectv.com> domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 10, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 31, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on December 31, 2007.
On January 4, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Joel M. Grossman as Panelist.
An additional submission was submitted by Respondent on January 11, 2008, and was determined to be deficient. The Panel has chosen not to consider this additional submission.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant asserts rights in the DIRECTV mark through its registered trademarks, and its well-known usage dating back to 1994. Complainant further asserts that the domain name <orderdirectv.com> is confusingly similar to its mark, as it incorporates the entire mark, and that adding the generic term “order” to the mark does not alleviate the confusion. Indeed, Complainant asserts that attaching the word “order” to its mark adds to the confusion, as potential customers might believe that Respondent’s website is the place to order satellite television service from Complainant. Next, Complainant asserts that Respondent has no legitimate rights or interests in the domain name. Complainant points out that Respondent has never been known by that name, and has not been licensed by Complainant to process orders for Complainant’s services. Complainant further asserts that Respondent is not using the domain name for a bona fide offering of goods or services, since the website directs the users to a competing site for Dish Network. Finally, Complainant asserts that the domain name was registered and is being used in bad faith. Complainant points out that Respondent was clearly aware of Complainant’s famous mark, and registered and then used the domain name to mislead customers seeking to do business with Complainant and to redirect them to a competitor’s website. Complainant also asserts that Respondent offered to sell the domain name to Complainant, constituting further evidence of bad faith.
Respondent has submitted a one-page Response which does not specifically address any of the three issues. Rather, Respondent contends generally that he has owned the domain name for two years and that Complainant is his direct competitor. Respondent asserts that transferring the name to Complainant would give Complainant a competitive advantage. Respondent claims that Complainant failed to register the domain name when it had the opportunity, i.e., before Respondent did, and that it belongs to Respondent. Respondent claims that the only domain name Complainant should be entitled to is “<directv.com>.”
The Panel determines that:
1) the domain name is identical to or confusingly similar to Complainant’s mark;
2) Respondent has no legitimate rights or interest in the mark; and
3) The domain name was registered and is being used in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel accepts that Complainant’s mark is
very famous, and was properly trademarked. The domain name is identical to or
confusingly similar to the Complainant’s mark in that it wholly incorporates
the mark. Adding a generic word or term such as “order” does not eliminate the
confusion. See Arthur Guinness Son &
Respondent has not attempted to demonstrate that it is commonly known by the name or that it is engaged in bona fide offering of goods and services using the name. Indeed, Respondent describes itself as a competitor of Complainant. Respondent also does not deny that its website is being used to direct visitors to purchase satellite TV services from Dish Network, Complainant’s competitor. (No evidence has been presented that Dish Network is involved, or even aware, of Respondent’s activity in this regard.) Respondent also does not dispute Complainant’s assertion that Respondent is not a licensee of Complainant. Because Respondent is not commonly known by the domain name, is not a licensee of Complainant, and is using the name to redirect business from Complainant to a competitor, the Panel determines that Respondent has no rights or legitimate interests in the domain name. See Computerized Sec. Sys. Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (a respondent’s appropriation of complainant’s mark in order to market products that compete with complainant’s products does not constitute a bona fide offering of goods and services); see also Fanuc Ltd. v. Machine Control Services, FA 93667 (Nat. Arb. Forum March 13, 2000) (holding that when respondent does not own a mark, is not affiliated with complainant, and has no permission from the complainant to use the mark then respondent has no rights or legitimate interest in the mark).
Respondent does not dispute that it was aware
of Complainant’s mark when it registered the domain name, that it has used the
domain name to redirect customers to Complainant’s competitors, and that it has
offered to sell the domain name to Complainant. Under these circumstances, the
Panel finds that the domain name was registered and is being used in bad faith.
Respondent’s activity in redirecting visitors to a competitor’s website so that
they may purchase a competing product clearly constitutes a bad faith use of
the domain name. See Surface
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <orderdirectv.com> domain name be TRANSFERRED from Respondent to Complainant.
Joel M. Grossman, Panelist
Dated: January 14, 2008
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