DIRECTV, INC. v. Joe Fenchal
Claim Number: FA0801001139691
Complainant is DIRECTV, INC. (“Complainant”), represented by Evan Finkel, of Pillsbury Winthrop Shaw Pittman LLP, California USA. Respondent is Joe Fenchal (“Respondent”), California USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <directvespanol.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 22, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 23, 2008.
On January 23, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <directvespanol.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 January 24, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 13, 2008 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 21, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <directvespanol.com> domain name is confusingly similar to Complainant’s DIRECTV mark.
2. Respondent does not have any rights or legitimate interests in the <directvespanol.com> domain name.
3. Respondent registered and used the <directvespanol.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Directv, Inc., offers satellite television and other telecommunications services under its DIRECTV mark. Complainant registered its DIRECTV mark with the United States Patent and Trademark Office (“USPTO”) on November 6, 2001 (Reg. No. 2,503,432).
Respondent registered the <directvespanol.com> domain name on July 4, 2005. Respondent’s disputed domain name resolves to a website which offers links to services which directly compete with Complainant.
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant registered the DIRECTV mark with the USPTO on November
6, 2001. The Panel finds this
registration sufficiently establishes Complainant’s rights in the DIRECTV mark
pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Inertia 3D, FA 1118154 (Nat. Arb. Forum Jan. 18, 2008) (“Complainant asserts rights in the mark
through its registration of the mark with the United States Patent and
Trademark Office. This registration
sufficiently establishes Complainant’s rights in the mark pursuant to Policy ¶
4(a)(i).”); see also
The Panel finds Respondent’s <directvespanol> domain name is confusingly similar to Complainant’s DIRECTV mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name fully incorporates Complainant’s DIRECTV mark with the addition of the generic language indicator, “espanol.” Additionally, it is well established that the generic top-level domain “.com” is considered immaterial when assessing whether a disputed domain name is confusingly similar to a mark. See State Farm Mutual Auto. Ins. Co. v. Continental Alliance Corp., FA 795458 (Nat. Arb. Forum Oct. 24, 2006) (finding that the domain name <statefarmespanol.com> was confusingly similar to complainant’s STATE FARM mark); see also AmericaOnline, Inc. v. CredoNIC.com, FA 432156 (Nat. Arb. Forum March 2, 2005) (finding <icqespanol.com> is confusingly similar to complainant’s ICQ mark); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant presents a prima facie case in support of these assertions, the burden shifts to Respondent to establish that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has established a prima facie case to support its assertions and Respondent has failed to submit a response to the case. Therefore, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain name. The Panel, however, will inspect the record and determine whether Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Respondent is currently using the disputed domain name to resolve to a website which displays links for advertisements to telecommunication services that directly compete with Complainant’s business. The Panel finds that such use is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names).
In addition, the record and WHOIS information do not indicate that Respondent is, or ever has been, commonly known by the <directvespanol> domain name. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Michael Smith Custom Clothiers, Inc. v. Custom Shirt Shop, FA 1109402 (Nat. Arb. Forum Jan. 4, 2008) (“. . .other ICANN panels have held, and this Panel agrees, that in order to have rights or legitimate interests under the “commonly known” provision of the Policy a respondent must be commonly known by the domain name prior to registration of the domain name in issue.”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain name resolves to a website which offers links to third-party websites offering telecommunications services that compete with Complainant. The Panel finds that this use constitutes disruption and is evidence of registration and use in bad faith pursuant to Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Also, Respondent is using the confusingly similar disputed domain name to provide links to competing telecommunication businesses, from which Respondent presumably receives a click-through fee. The Panel finds this is an attempt by Respondent to profit from the goodwill associated with Complainant’s DIRECTV mark, and constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <directvespanol.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 3, 2008
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