DISH Network Corp. and DISH
Network L.L.C. v. Matrix, Inc. a/k/a Matrix Networks
Claim Number: FA0912001299752
PARTIES
Complainant is DISH Network Corp. and DISH
Network L.L.C. (“Complainant”),
represented by Max Gratton, of DISH Network L.L.C., Colorado, USA. Respondent is Matrix, Inc. a/k/a Matrix
Networks (“Respondent”), represented by Rebel
Hays,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dishnetwork.ws> and <signupfordish.net>,
registered with GoDaddy.com, Inc., and <signupfordish.com> registered with Wild
West Domains, Inc.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on December 18, 2009; the
National Arbitration Forum received a hard copy of the Complaint on December 21, 2009.
On December 18, 2009, GoDaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <dishnetwork.ws> and <signupfordish.net>
domain names are registered with GoDaddy.com,
Inc. and that the 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 December 18, 2009, Wild West Domains, Inc. confirmed by e-mail to
the National Arbitration Forum that the <signupfordish.com> domain name is registered with Wild West Domains, Inc. and that the Respondent
is the current registrant of the name. Wild West Domains, Inc. has verified that
Respondent is bound by the Wild West Domains,
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 29, 2009, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 19, 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 postmaster@dishnetwork.ws, postmaster@signupfordish.com, postmaster@signupfordish.net by e-mail.
A timely Response was received and determined to be complete on January 19, 2010.
On January 29, 2009, 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.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
makes the following assertions:
1.
The respondents
<dishnetwork.ws> <signupfordish.net> and <signupfordish.com> domain names are
confusingly similar to Complainant’s DISH NETWORK mark.
2.
Respondent
does not have any legitimate interests in the said domain names.
3.
Respondent
registered the said domain names in bad faith.
B.
Respondent
makes the following assertions:
1.
The
subject domain names are not confusing or similar to Complainant’s mark.
2.
Respondent
has rights and legitimate interests in all subject domain names in question.
3.
The
subject domain names were neither registered or used
in bad faith.
DISCUSSION
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.
Complainant owns multiple trademark
registrations for the DISH NETWORK mark with the United States Patent and
Trademark Office (“USPTO”) (e.g., Reg. No. 2,088,761 issued August 19,
1997). The Panel finds that Complainant
has established rights in the DISH NETWORK mark for purposes of Policy ¶
4(a)(i) through its trademark registration with the USPTO. See
Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a
trademark registration adequately demonstrates a complainant’s rights in a mark
under Policy ¶ 4(a)(i)); see also
Complainant argues that Respondent’s <dishnetwork.ws> is identical to Complainant’s DISH NETWORK mark
pursuant to Policy ¶ 4(a)(i). The Panel
finds that Respondent’s <dishnetwork.ws>
domain name contains Complainant’s DISH NETWORK mark in its entirety, omits
spacing between the terms, and adds the country-code top-level domain (“ccTLD”)
“.ws.” The Panel finds that Respondent’s
<dishnetwork.ws> is identical
to Complainant’s DISH NETWORK mark pursuant to Policy ¶ 4(a)(i). See
George
Weston Bakeries Inc. v. McBroom, FA
933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space
between terms of a mark still rendered the <gwbakeries.mobi> domain name
identical to the complainant’s GW BAKERIES mark); see also Citigroup
Inc. v. CAAB, FA 1231645 (Nat. Arb. Forum Dec. 8, 2008) (finding that the
country-code top-level domain “.ws,” which is the country-code for Western
Samoa, is without significance in ¶ 4(a)(i) analysis.).
Respondent argues that Respondent’s disputed domain names are not
identical or confusingly similar to Complainant’s DISH NETWORK mark pursuant to
Policy ¶ 4(a)(i). The Panel finds that Respondent’s disputed domain
names <signupfordish.com> and
<signupfordish.net> are not
identical or confusingly similar to Complainant’s mark pursuant to Policy ¶
4(a)(i). See Primo Incense v.
Spring.net, FA 96565 (Nat. Arb. Forum Apr. 12, 2001) (finding that the
<primoincense.com> domain name was not confusingly similar to the
complainant’s PRIMO mark despite the complainant’s business name of Primo
Incense Distributing Company); see also
FloridaFirst Bank v. Carlson, FA 143677 (Nat. Arb. Forum Apr. 10, 2003) (holding
that as the complainant disclaimed the exclusive right to use “BANK”, apart
from the FLORIDAFIRST BANK mark, the validity of the mark was to be determined
by viewing the trademark as a whole and not just the words “FloridaFirst.”
Hence, when viewing the complainant’s FLORIDAFIRST BANK mark as a whole, the
respondent’s <floridafirst.com> domain
name was not confusingly similar to the registered mark).
As the Panel concludes that Complainant has not satisfied Policy ¶
4(a)(i) because the disputed domain names <signupfordish.com> and
<signupfordish.net> are not confusingly similar to the mark, the
Panel declines to analyze the other two elements of the Policy with respect to
those domain names. See Creative Curb
v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002)
(finding that because the complainant must prove all three elements under the
Policy, the complainant’s failure to prove one of the elements makes further
inquiry into the remaining element unnecessary); see also Hugo Daniel
Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into
the respondent’s rights or legitimate interests or its registration and use in
bad faith where the complainant could not satisfy the requirements of Policy ¶
4(a)(i)).
That Complainant must first make a prima
facie case that Respondent lacks rights and legitimate interests in the remaining
disputed domain name <dishnetwork.ws>
under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it
does have rights or legitimate interests.
See Hanna-Barbera
Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that
the complainant must first make a prima facie case that the respondent
lacks rights and legitimate interests in the disputed domain name under UDRP ¶
4(a)(ii) before the burden shifts to the respondent to show that it does have
rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb.
Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that
Respondent does not have rights or legitimate interest in the subject domain
names, which burden is light. If
Complainant satisfies its burden, then the burden shifts to Respondent to show
that it does have rights or legitimate interests in the subject domain
names.”).
The Panel holds that Complainant has not established
a prima facie case in support of its arguments that Respondent lacks
rights and legitimate interests to the domain name <dishnetwork.ws>
under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v.
HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006)
(holding that the complainant did not satisfactorily meet its burden and as a
result found that the respondent had rights and legitimate interests in the
domain name under UDRP ¶ 4(a)(ii)); see
also Workshop Way, Inc. v. Harnage, FA
739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the
complainant’s burden by showing it was making a bona fide offering of
goods or services at the disputed domain name).
Respondent uses and has
used the disputed domain name <dishnetwork.ws> for over five years
to operate its business as a third-party dealer of satellite products and
services.
The Panel finds that
Respondent has made demonstrable use of the disputed domain name in connection
with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i). See Suspensions, LLC v. The LBC Group, Inc., FA 662305 (Nat. Arb. Forum May 5, 2006) (denying the complainant
relief where the panel was unclear after reviewing the evidence in the record
whether or not the complainant authorized the respondent to register a domain
name containing its mark); see also Grobet
File Co. of Am., Inc. v. Exch. Jewelry Supply, FA 94960 (Nat. Arb. Forum July 14, 2000) (“Within its
rights as a distributor, therefore, Respondent registered the domain name and
sold Complainant's legitimate goods online. In sum, Respondent has successfully shown
that it was using the <grobet.com> domain name and web site in connection
with the bona fide offering of goods and services, before any notice of the
dispute.”).
The Panel declines to address this element,
as Complainant has not safisfied Policy ¶ 4(a)(ii) with respect to the domain
name <dishnetwork.ws>
Doctrine
of Laches
Complainant has waited five years before making any claim
in respect of the disputed domain names.
Therefore, the Panel considered
the doctrine of laches as evidence for Respondent in its considerations of the
elements of the Policy. See Square Peg Interactive Inc. v. Naim Interactive Inc., FA 209572 (Nat. Arb. Forum Dec. 29, 2003)
(“Although laches by itself is not a defense to a complaint brought under
the Policy, Complainant's delay in seeking relief is relevant to a
determination of whether Respondent has been able to build up legitimate rights
in the Domain Name in the interim, and whether it is using the Domain name in
bad faith.”); see also Meat & Livestock Comm’n
v. Pearce, D2003-0645 (WIPO Oct. 27, 2003) (“Although laches is not
a defence in itself under the Policy, the absence of any complaint over a long
period of time in which domain names are in active use can suggest that such
use does not give rise to a serious problem.”).
Reverse Domain Name Hijacking
Respondent contends
that Complainant is engaging in reverse domain name hijacking by attempting to
acquire the disputed domain names in bad faith. If
the Panel agrees and finds that Complainant has commenced this proceeding in
bad faith based, then the Panel may conclude that Complainant has engaged in
reverse domain name hijacking. See NetDeposit, Inc. v. NetDeposit.com, D2003-0365 (WIPO July 22, 2003) (finding reverse domain
name hijacking because “Respondent's domain name registration preceded the
Complainant's creation of its trademark rights”); see also Aspen Grove, Inc. v. Aspen Grove, D2001-0798
(WIPO Oct. 5, 2001) (finding that when the complainant knows it has no rights
in the mark but brings a complaint despite this fact, the complainant has acted
in bad faith and attempted Reverse Domain Name Hijacking which constitutes an
abuse of the administrative proceeding).
Despite the finding that Complainant has failed
to satisfy its burden under the Policy, this does not necessarily render a
finding of reverse domain name hijacking on behalf of Complainant in bringing
the instant claim.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be DENIED. Respondent’s request for a finding of Reverse
Name Hijacking is DENIED.
John
J. Upchurch, Panelist
Dated: February 12, 2009
National
Arbitration Forum
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