DIRECTV, Inc. v. Bruce Fuhrman
Claim Number: FA1007001334678
Complainant is DIRECTV,
Inc. (“Complainant”), represented by Steven
M. Levy,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <directvhd.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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 12, 2010.
On July 13, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <directvhd.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 July 21, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 2010 by which Respondent could file a response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@directvhd.com. Also on July 21, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 17, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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" through submission of a Written Notice, as defined in Rule 1. 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 <directvhd.com> domain name is confusingly similar to Complainant’s DIRECTV mark.
2. Respondent does not have any rights or legitimate interests in the <directvhd.com> domain name.
3. Respondent registered and used the <directvhd.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, DIRECTV, Inc., provides digital TV services and distributes and installs satellite TV dish receivers, tuning boxes, and other products and services related to such TV services. Complainant owns multiple trademark registrations for the DIRECTV mark with the United States Patent and Trademark Office (“USPTO”):
DIRECTV Reg. No. 2,503,432 issued November 6, 2001;
DIRECTV Reg. No. 2,628,178 issued October 1, 2002;
DIRECTV Reg. No. 2,698,197 issued March 18, 2003;
DIRECTV Reg. No. 2,820,253 issued March 2, 2004;
DIRECTV Reg. No. 2,939,061 issued April 12, 2005; and
DIRECTV2PC Reg. No. 3,598,467 issued March 31, 2009.
Respondent, Bruce Fuhrman, registered the <directvhd.com> domain name on January 30, 2004. The disputed domain name does not resolve to an active web page and displays no content.
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 owns multiple trademark registrations for the DIRECTV mark with the USPTO:
DIRECTV Reg. No. 2,503,432 issued November 6, 2001;
DIRECTV Reg. No. 2,628,178 issued October 1, 2002;
DIRECTV Reg. No. 2,698,197 issued March 18, 2003;
DIRECTV Reg. No. 2,820,253 issued March 2, 2004;
DIRECTV Reg. No. 2,939,061 issued April 12, 2005; and
DIRECTV2PC Reg. No. 3,598,467 issued March 31, 2009.
The Panel finds that Complainant has established that it has
rights in the DIRECTV mark for the purposes of Policy ¶ 4(a)(i) by providing
this conclusive evidence of USPTO trademark registration. See Metro. Life Ins. Co. v. Glu, FA
874496 (Nat. Arb. Forum Feb. 13, 2007) (finding that the complainant had rights
in the METLIFE mark as a result of its registration of the mark with the United
States federal trademark authority); see
also SDC
Media, Inc. v. SCMedia, FA
960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his trademark
registration [with the USPTO] establishes Complainant’s rights in the mark
pursuant to Policy ¶ 4(a)(i).”).
Complainant alleges that Respondent’s <directvhd.com> domain name is confusingly similar to Complainant’s DIRECTV mark. Respondent’s disputed domain name begins with Complainant’s complete mark and then appends the descriptive abbreviation “hd,” which stands for “high definition,” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that combining Complainant’s mark with a term or abbreviation that describes Complainant’s television services does not remove the disputed domain name from the realm of confusing similarity according to Policy ¶ 4(a)(i). See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The Panel also finds that the presence of a gTLD does not affect the confusing similarity analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel finds that Respondent’s <directvhd.com> domain name is confusingly similar to Complainant’s DIRECTV mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has presented a prima facie case in support of its allegation that Respondent lacks rights and legitimate interests in the disputed domain name. According to Policy ¶ 4(a)(ii), the burden now transfers to Respondent to demonstrate that it does have rights and legitimate interests. Respondent’s failure to respond to the Complaint, however, allows the Panel to infer that Respondent does not contest Complainant’s allegations and does not possess rights and legitimate interests in the disputed domain name. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Wild West Domains, Inc. v. Jung, D2004-0243 (WIPO May 18, 2004) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest in the Domain Name . . . . It is incumbent on Respondent to contribute to the fact-finding and if contrary to that, it rather incurs in default, there is nothing that the Panel could do to discuss in its benefit.”). The Panel elects to consider the evidence in record, however, in light of the Policy ¶ 4(c) factors in order to make a complete determination on Respondent’s rights and legitimate interests.
Complainant argues that Respondent is not commonly known by the <directvhd.com> domain name, operates no business under that name, and owns no trademarks for that name. The WHOIS information for the disputed domain name lists the registrant as “Bruce Fuhrman,” a name indicating no association between Respondent and the disputed domain name. The Panel accordingly finds that Respondent is not commonly known by the disputed domain name and does not possess rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant asserts that Respondent’s <directvhd.com> domain name does not resolve to an active website. The Panel finds that Respondent’s failure to actively use the disputed domain name in connection with online content indicates that Respondent lacks rights and legitimate interests in the disputed domain name as there is no bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
When conducting a Policy ¶ 4(a)(iii) analysis, the Panel finds that it may consider the totality of the circumstances without being limited to the enumerated factors in Policy ¶ 4(b). See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples of [bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Complainant argues that Respondent fails to make active use of the <directvhd.com> domain name as the disputed domain name does not resolve to any website displaying content. The Panel finds that such non-use of the disputed domain name indicates bad faith under Policy ¶ 4(a)(iii). See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
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 <directvhd.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 24, 2010
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