DirecTV, Inc. v. Privacy Protection Service
Claim Number: FA0911001296444
Complainant is DirecTV, Inc. (“Complainant”), represented by Steven
M. Levy,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <dierctv.com>, registered with Fabulous.com Pty Ltd.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 30, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 2, 2009.
On November 30, 2009, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <dierctv.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 7, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 28, 2009 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@dierctv.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 5, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant holds trademark
registrations for its DIRECTV mark with the United States Patent and Trademark
Office (“USPTO”), including Reg. No. 2,503,432, issued November 6, 2001, in
connection with its marketing of telecommunications products.
Respondent registered the
disputed domain name on April 3, 2002.
The disputed domain name resolves to a pay-per-click website featuring links to websites unrelated to the business of Complainant.
Respondent’s <dierctv.com> domain name is confusingly similar to Complainant’s DIRECTV trademark.
Respondent does not have any rights to or legitimate interests in the disputed <dierctv.com> domain name.
Respondent registered and uses the <dierctv.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the DIRECTV trademark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):
As
the [complainant’s] mark is registered with the USPTO, [the] complainant has
met the requirements of Policy ¶ 4(a)(i).
See also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006): “Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”
Respondent’s <dierctv.com> domain name is confusingly similar to Complainant’s DIRECTV mark pursuant to Policy ¶ 4(a)(i) because the domain name merely transposes two letters in Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com.” The transposition of letters in Complainant’s DIRECTV mark creates terms that are visually similar to Complainant’s DIRECTV mark, resulting in confusing similarity between the mark and the domain for purposes of Policy ¶ 4(a)(i). See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to a complainant’s GOOGLE mark and noting that:
[t]he
transposition of two letters does not create a distinct mark capable of
overcoming a claim of confusing similarity, as the result reflects a very
probable typographical error.
See also Wyndham IP Corp. v. LaPorte Holdings, Inc., FA 373545 (Nat. Arb. Forum Jan. 17, 2005) (finding the <wynhdam.com> and <wyandham.com> domain names to be confusingly similar to a complainant’s WYNDHAM mark because the domain names merely transposed letters in the mark).
Similarly, the addition of a gTLD to a mark in forming a
domain name is irrelevant in distinguishing the domain name from the mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that affixing a gTLD
to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Jerry Damson, Inc. v.
The
mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to
adequately distinguish the Domain Name from the mark.
Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s DIRECTV mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights to or
legitimate interests in the disputed domain name. Once Complainant makes out a
prima facie case in support of its
allegations, the burden shifts to Respondent to prove that it has such rights
or interests in the disputed domain name. See Intel Corp. v.
Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that a “complainant
must first make a prima facie case that [the] respondent lacks rights
and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to
show it does have rights or legitimate interests.”); see also Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must
first make out a prima facie case that a respondent lacks rights to and
legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before
the burden shifts to that respondent to show that it does have rights or
legitimate interests in a contested domain name).
Complainant has established a prima facie case in support of its contentions, and Respondent, for
its part, has failed to submit a response in this proceeding. We are therefore free to conclude, without
more, that Respondent has no rights or legitimate interests in the contested
domain name which are cognizable under the Policy. See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum
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).
Nevertheless,
we will examine the record before us, in light of the considerations set out in
Policy ¶ 4(c), to determine if there is in it any basis for concluding that Respondent
has rights or legitimate interests in its domain name sufficient for purposes
of the Policy.
We begin by noting that the pertinent WHOIS information for the disputed domain name does not indicate Respondent is commonly known by any variant of the disputed domain name. Moreover, Complainant alleges, and Respondent does not deny, that Respondent does not operate a business or other organization under the disputed domain name and Respondent does not own any trademark or service mark rights in the DIRECTV name. We are therefore constrained to conclude that Respondent is not commonly known by the disputed domain name purusant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights or legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent had no rights to or legitimate interests in a disputed domain name where there was no evidence in the record indicating that that respondent was commonly known by the disputed domain name).
Complainant also asserts, without contradiction from
Respondent, that the disputed domain name resolves to a pay-per-click website featuring links to websites unrelated to the
business of Complainant. Fropm this we
conclude that Respondent is not using the disputed domain name in connection
with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use
of the domain name pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June
11, 2006) (finding that a respondent’s use of a domain name to redirect
Internet users to websites unrelated to a complainant’s mark is not a bona
fide use under Policy ¶ 4(c)(i)); see also Constellation Wines U.S., Inc. v.
Finally under this head, Complainant argues that Respondent employed a common typographical error in forming the contested domain name as a means to redirect to Respondent’s website Internet users searching for Complainant’s website, and, in the process, profiting through the collection of pay-per-click fees. In the circumstances here presented, we agree. As a consequence, Respondent has no rights to or legitimate interests in the contested domain name under Policy ¶ 4(a)(ii). See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (finding that a respondent’s disputed domain names were confusingly similar to a complainant’s mark because the disputed domains were common misspellings of the mark involving keys that were adjacent to the standard keyboard keys used to comprise a complainant’s mark); see also Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum July 23, 2002) (finding that the <neimanmacus.com> domain name is a simple misspelling of a complainant’s NEIMAN MARCUS mark and therefore a classic example of “typo-squatting,” which is evidence that a domain name is lacking in rights or interests sufficient to satisfy the requirements of the Policy).
The Panel thus finds that Policy ¶ 4(a)(ii)
has been satisfied.
We have already concluded that Respondent’s domain name resolves to a website displaying click-through links to third-party websites unrelated to Complainant’s business. Respondent’s use of the disputed domain name to attract Internet users attempting to access Complainant’s goods and services and redirect them to the website resolving from the disputed domain name, and thus to profit from the receipt of pay-per-click fees, is evidence of bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that a respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking a complainant’s website to its own website for commercial gain where that respondent likely profited from this diversion scheme); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
As previously established, Respondent has engaged in the practice of typo-squatting by using a common mistyping of Complainant’s DIRECTV mark in forming the contested domain name thus to misdirect Internet users. Typo-squatting is itself evidence of bad faith registration and use of a domain name under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that a respondent engaged in typo-squatting, which is evidence of bad faith registration and use of a domain name under Policy ¶ 4(a)(iii)); see also Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003):
Respondent’s
registration and use of the disputed domain name demonstrates a practice
commonly referred to as ‘typosquatting.’
This practice diverts Internet users who misspell Complainant’s mark to
a website apparently owned by Respondent for Respondent’s commercial gain.
‘Typosquatting’ has been recognized as evidencing bad faith registration and use
under Policy ¶ 4(b)(iv).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <dierctv.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 18, 2010
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