DIRECTV, Inc. v. Applied Information Management Solutions Pty Ltd.
Claim Number: FA0801001140688
Complainant is DIRECTV Inc. (“Complainant”), represented by Evan
Finkel, of Pillsbury Winthrop Shaw Pittman LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <directvreview.com> and <directvreviews.com>, registered with Godaddy.com, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 28, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 29, 2008.
On January 29, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <directvreview.com> and <directvreviews.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. 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 February 4, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 25, 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 postmaster@directvreview.com and postmaster@directvreviews.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 29, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <directvreview.com> and <directvreviews.com> domain names are confusingly similar to Complainant’s DIRECTV mark.
2. Respondent does not have any rights or legitimate interests in the <directvreview.com> and <directvreviews.com> domain names.
3. Respondent registered and used the <directvreview.com> and <directvreviews.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Directv, Inc., offers satellite television and other telecommunications products and services under its DIRECTV mark. Complainant filed a trademark application for its DIRECTV mark with the United States Patent and Trademark Office (“USPTO”) on February 15, 1999 (Reg. No. 2,503,432), and the USPTO issued the registration on November 6, 2001.
Respondent registered the <directvreview.com> and <directvreviews.com> domain names on March 1, 2001. Respondent’s disputed domain names resolve to websites which display links to third-party websites offering products and services which directly compete with Complainant’s business.
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. Other Panels have
found that when the USPTO has registered a mark, Complainant’s rights in the
mark date back to when the application was filed. See Thompson v. Zimmer, FA 190625
(Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was
subsequently approved by the U.S. Patent and Trademark Office, the relevant
date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i)
dates back to Complainant’s filing date.”).
In this case, Complainant filed an application for its DIRECTV mark on
February 15, 1999. Therefore, the Panel
finds Complainant has sufficiently established rights in the DIRECTV mark
pursuant to Policy ¶ 4(a)(i), dating back to February 15, 1999. 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 <directvreview.com> and <directvreviews.com>
domain names are confusingly similar to Complainant’s DIRECTV mark pursuant to
Policy ¶ 4(a)(i). Respondent’s disputed
domain names fully incorporate Complainant’s DIRECTV mark with the addition of
the generic terms “review” and “reviews.”
Additionally, it is well established that the generic top-level domain
(“gTLD”) “.com” is considered immaterial when assessing whether a disputed
domain name is confusingly similar to a mark.
See Arthur Guinness Son
& Co. (
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted Respondent does not have rights or legitimate interests in the disputed domain names. 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 names pursuant to Policy ¶ 4(a)(ii). The Panel finds 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 names. The Panel, however, will inspect the record and determine whether Respondent has rights or legitimate interests in the disputed domain names 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 names to resolve to websites which display links for third-party websites offering telecommunication products and 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 Respondent is commonly known by the <directvreview.com> and <directvreviews.com> domain names. The WHOIS information indicates Respondent is named “Applied Information Management Solutions Pty Ltd.” Also, Complainant has not authorized Respondent to use its DIRECTV mark. Therefore, the Panel finds Respondent has no rights or legitimate interests in the disputed domain names 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 names resolve to websites which display links to third-party websites offering telecommunications services that compete with Complainant. The Panel finds 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 names to provide links to websites for competing telecommunication
businesses, from which Respondent presumably receives click-through fees. 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 <directvreview.com> and <directvreviews.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 13, 2008
National
Arbitration Forum