DirecTV, Inc. v. Pimenov Pavel
Claim Number: FA0911001296479
Complainant is DirecTV, Inc. (“Complainant”), represented by Steven M. Levy,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <direct-tv.com>, registered with Ovh.
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.
Roberto A. Bianchi as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 30, 2009. The Complaint was submitted in both French and English. With its Complaint, Complainant also chose to proceed entirely electronically under the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitting an “opt-in” form available on the Forum’s website.
On January 4, 2010, Ovh confirmed by e-mail to the National Arbitration Forum that the <direct-tv.com> domain name is registered with Ovh and that the Respondent is the current registrant of the name. Ovh has verified that Respondent is bound by the Ovh 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 8, 2010, a French Written Notice of the Complaint, setting a deadline of January 28, 2010 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 in English was received and determined to be complete on January 28, 2010.
Respondent chose to opt-in to the electronic process with its submission and submitted its Response in electronic copy only.
On February 2, 2010, Complainant filed an Additional Submission that was deemed timely and complete pursuant to the Forum’s Supplemental Rule 7.
On February 5, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Roberto A. Bianchi as Panelist.
On February 8, 2010, Respondent filed a timely Additional Written Statement in reply to Complainant’s Additional Submission.
Complainant requests that the domain name be transferred from Respondent to Complainant.
In its Complaint, Complainant contends as follows:
- Respondent’s domain name <direct-tv.com> is confusingly similar to Complainant’s registered DIRECTV trademarks.
- Respondent has no rights or legitimate interest in the domain name <direct-tv.com>. Through the use of a classic pay-per-click website, Respondent’s domain name diverts Complainant’s customers and potential customers to Respondent’s pay-per-click website and then to many websites not associated with Complainant, which is not a bona fide use. Respondent is not commonly known by the <direct-tv.com>. Respondent is not making a legitimate noncommercial or fair use of the <direct-tv.com> domain without intent for commercial gain. Instead, Respondent is using the domain name to confuse and misleadingly divert consumers, or to tarnish the Marks. Respondent’s use has tarnished and diluted the Marks.
- Respondent registered and used the domain name in bad faith. Respondent was put on constructive notice of Complainant’s rights in the DIRECTV Marks through federal trademark applications and registrations, most of which predate the creation date of <direct-tv.com>. Therefore, Respondent knowingly and intentionally used the marks in violation of Complainant’s rights in the marks. The content on Respondent’s website at <direct-tv.com> reveals that Respondent has actual knowledge of Complainant’s marks and the goods associated with the marks and is purposefully trading on the marks. Respondent is obtaining commercial gain from its use of the <direct-tv.com> website. This is a directory or “pay-per-click” website providing a listing of hyperlinks, some of which lead to Complainant’s website and some to the websites of Complainant’s competitors.
- Respondent intentionally uses the marks in its domain name to attract Internet searchers by creating a likelihood of confusion with Complainant’s DIRECTV marks.
In its Response, Respondent contends as follows:
- Respondent registered and used the disputed domain name well before the Complainant bought rights to the DIRECTTV brands and logos, whereas it was available.
- Respondent produced no evidence that it developed its offer as from 1994, or any information proving that Respondent could not be unaware of Complainant’s business when he registered the disputed domain name. The offer on Respondent’s site is only for links and free software developed by Respondent, which has nothing to do with Complainant’s offer for paying video contents, and therefore does not compete with Complainant. The links and the software programs offered by Respondent are entirely free. Respondent offers no contents, services or products for due consideration.
- Respondent denies that he receives compensation from the sites he offers. Complainant produces no information likely to prove so. Respondent’s site accepts Google advertising messages at the bottom of its page. However, the proceeds from these ads are so marginal that they not even cover the site’s operating costs. Nor does Complainant produce evidence that Respondent via his site diverts Complainant’s clients and damages Complainant’s image. Respondent’s domain name was not registered or used in the wake of DIRECTV. Respondent never approached complainant for any business transaction whatsoever. The “direct” and “tv” names are general and would be highly unlikely to constitute protectable rights. Complainant could only register its marks because it has created a distinctive combination of those two names: DIRECTV.
C. Additional Submissions
In its Additional Submission, Complainant contends the following:
- Complainant attaches to its Additional Statement copies of its original French trademark registration from 1993 (noting that Hughes Communication, Inc. is the former parent company of Complainant) and its European Community Trademark registrations from 1998 and 1999 for the DIRECTV mark, all of which predate Respondent’s domain. Furthermore, Complainant also attaches evidence of its actual use of the DIRECT trademark, including copies of the cover of Complainant’s June, 1994 program schedule guide, a 1995 advertising flier describing its services, a 1996 advertisement describing its programming packages, the <directv.com> website as it appeared in June of 1997, a Commercial Viewing Agreement from July of 1997, a 1998 advertising flier, and selected pages from a 1999 Hughes Communication Annual Report, all of which predate Respondent’s domain and demonstrate the publicity and notoriety of the DIRECTV mark. By the time Respondent registered its <direct-tv.com> domain name, Complainant was the world’s largest satellite television provider and had over 8 million subscribers in the US, Latin America and, through a newly-acquired company, in Japan. These trademark registrations and Complainant’s extensive public use of its DIRECTV mark demonstrates the strong rights which Complainant owned in this mark as of Respondent’s December 31, 1999 registration date.
- Although Complainant owns prior rights to its DIRECTV trademark in many different countries, since Respondent’s domain uses the dot-com top-level rather than a country-specific top-level domain (such as .fr), since Respondent’s website appears in the English language, and since its website prominently features links to television programming from the USA, it is Complainant’s contention that, regardless of where it is hosted, the website is significantly directed towards USA visitors and so Complainant’s trademark rights in the USA are also applicable to and dispositive in this dispute.
- The phrase “Direct TV”, as used by Respondent, is likely to be viewed as a trademark by visitors to the <direct-tv.com> website and not as a merely descriptive term. In any case, Respondent acknowledges that Complainant “has created a distinctive combination between those two names, ‘DIRECTV’” and thus acknowledges that this term is capable of supporting trademark rights.
- That Respondent does not charge a fee for its TV distribution services does not negate the fact that it is engaging in obvious trademark infringement when it provides services which are nearly identical to those provided by Complainant under a domain that is confusingly similar to Complainant’s trademark. Such infringing activity cannot create a legitimate interest under the Policy. The fact that Respondent may not charge a fee for its TV distribution services does not change the commercial nature of the <direct-tv.com> website. The bottom and/or right side of nearly every page of this website features “Ads By Google” as acknowledged by Respondent. The ads feature links to both Complainant and its main competitors, Comcast, DishTV and others. Respondent even provides an accounting of such Google ad revenue amounting to approximately US$1342.67 (€968.44) between April, 2008 and December, 2009. Even if Respondent’s claim is true that this money does not cover the costs of operating its website, this is irrelevant since the site is “commercial” whether or not it makes a profit.
- Even if visitors to the <direct-tv.com> website are able to determine that Respondent is not affiliated with Complainant, Respondent’s website nevertheless draws visitors away from Complainant’s websites under the theory of initial interest confusion.
- In claiming that it did not act in bad faith, Respondent states that Complainant “produces no … information proving that the RESPONDENT could not be unaware of CLAIMANT’s business when he registered the disputed domain name.” This asks for Complainant to prove a negative, which is logically impossible.
- Regardless of whether it charges a fee for its competing television distribution services, it is clearly bad faith for Respondent to use the <direct-tv.com> domain name to attract visitors to its website for the commercial purpose of collecting Google ad fees.
- Even if one were to accept, arguendo, that Respondent had no actual knowledge of Complainant’s marks, Respondent should have known of them yet it chose to bury its head in the sand with regard to the <direct-tv.com> domain name. As such, it has clearly demonstrated bad faith in registering the name.
- Respondent’s bad faith may also be demonstrated by the fact that it has repeatedly provided false information in the Whois record of his <direct-tv.com> domain. Providing false Whois information has been held to support a finding of bad faith.
In its Additional Written Statement, Respondent contends the following:
- A search in the trademark database of the French trademark agency as well as in the database of OHIM shows no result for “DIRECT TV”. Complainant made no attempt to protect or register “DIRECT-TV”. A search of “Direct tv” or “Direct-tv” shows a lot of related websites but not the Respondent’s web site:
- DIRECTV didn’t complain or attempt to contact the respondent over a period of more than 10 years.
The Panel admits and will consider both additional submissions.
Complainant is a
Respondent’s website at the disputed domain
name describes itself as a Web TV catalogue. It offers links to Web-based TV
channels from many countries including
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.
With copies of trademark registration certificates issued by the French
Institut National de la Propriété Industrielle (INPI), the OHIM, and by
submitting a list of
Complainant denies that any of the circumstances of Policy ¶ 4.c. be applicable in this case. In particular, it contends that through the use of a classic pay-per-click website, Respondent’s domain name diverts Complainant’s customers and potential customers to Respondent’s pay-per-click website and then to many websites not associated with Complainant, which is not a bona fide use. Complainant also denies that Respondent is commonly known by the <direct-tv.com>, and that he is making a legitimate noncommercial or fair use of the <direct-tv.com> domain without intent for commercial gain. Instead, says Complainant, Respondent is using the domain name to confuse and misleadingly divert consumers, or to tarnish the Marks. Taken together, these contentions amount to a prima facie case that Respondent lacks rights or legitimate interests in the domain name.
For his part, Respondent contends that he registered and used the disputed domain name well before the Complainant bought rights to the DIRECTV brands and logos, i.e. when it was available. While Respondent appears to suggest that he registered the domain name because “direct” and “TV” were generic or common terms, he also acknowledges that Complainant has created “a distinctive combination between those two names”, thus accepting that the combination of the words “direct” and “TV”, as used and registered by Complainant, is apt to constitute a mark. Moreover, it appears that at his website at the disputed domain name, Respondent is using the terms “direct-tv” as a mark. Moreover, an independent search on Yahoo.com conducted by the Panel on February 16, 2010 for the terms “direct tv” showed the first two results pointing to Complainant’s website www.directv.com. Thus, Respondent’s argument that the terms “direct” and “tv” are generic is not convincing. See HSBC Fin. Co. v. Clear Blue Sky Inc., D2007-0062 (WIPO Jun. 4, 2007) (the panel was not persuaded from the record of the case that the respondent could have formed a good faith belief that the disputed domain name’s value was attributable to its generic or descriptive characteristics, since the domain name <creditkeeper.com> is not itself a dictionary word, and even a cursory search on search engines like Yahoo! or Google would have shown that CREDITKEEPER was the Complainant’s trademark).
Respondent’s offer on his website for TV links and free software appears to benefit from the fact that Complainant is a well-known provider of TV content for a payment. Given that the domain name at issue is confusingly similar to Complainant’s DIRECTV marks, it presumably is attracting traffic likely intended (i.e. Internet users presumably looking) for Complainant’s website. However small Respondent’s income from Google Ads may be, Respondent is certainly extracting a profit from the fact that he registered and is operating a website at the disputed domain name, which is confusingly similar to Complainant’s mark. This cannot qualify as a bona fide use pursuant to Policy ¶ 4(c)(i), or as a legitimate, noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). The Panel concludes that Complainant made out its case that Respondent lacks rights or legitimate interests in the domain name in dispute.
Respondent denies that he knew Complainant’s mark at the time he registered the domain name, and submits negative results of searches conducted on the INPI and the OHIM trademark databases for the terms “direct tv”. Thus, an inference that Respondent, residing in a country other than the country of trademark registration, knew or ought to have known a complainant’s mark at the time of the domain name registration must be based on other arguments.
In the present case, Complainant has shown that in some cases,
years before, and in other cases, months before Respondent acquired the
disputed domain name, Complainant’s mark had already
been registered not only in the United Stated, but also in
Complainant also evidenced its actual use of the DIRECT trademark since 1994 by submitting a program schedule guide, advertising fliers, and part of a 1999 Hughes’ – Complainant’s parent company- Communication Annual Report. The Panel is satisfied that the DIRECTV mark was well known before 1999, when the disputed domain name was registered.
Respondent’s web site basically consists of a long list of links leading to websites of TV channels from over one hundred countries. According to the Response, Respondent has created a software program allowing recording content broadcasted by TV channels. This means that Respondent’s business is related to TV channels, which also happens to be Complainant’s line of business.
Moreover, Complainant has also shown with a printout taken from Respondent’s website at the disputed domain name, that this site contains a link to Complainant’s “Official website” www.directv.com. There is no explanation that Respondent’s website is in no way related to Complainant.
Lastly, Respondent’s offer and
texts on his website at the disputed domain name is in English, and many of the
listed TV channels are based in the
All these factors lead to conclude that Respondent, who conducts a business in the same industry sector as Complainant, in all likelihood registered the domain name in dispute knowing about Complainant, its DIRECTV marks, products and services.
As to the use of the domain name,
the offer on Respondent’s website consists of posting links to web-based TV
channels of over one hundred countries, including
It may well be that once Internet users looking for Complainant find themselves in Respondent’s site they conclude this is not Complainant’s web site. By that time, however, initial confusion and disruption of Complainant’s business have already taken place. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
The Panel concludes that Respondent registered and is using the domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <direct-tv.com> domain name be TRANSFERRED from Respondent to Complainant.
Roberto A. Bianchi, Panelist
Dated: February 19, 2010
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