DIRECTV, INC. v. Dyk Dylina
Claim Number: FA1102001372039
Complainant is DIRECTV, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Dyk Dylina (“Respondent”), Finland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <directvcinema.com>, registered with Hebei Guoji Maoyi (Shanghai) LTD d/b/a HebeiDomains.com.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 9, 2011; the National Arbitration Forum received payment on February 15, 2011. The Complaint was submitted in both Finnish and English.
On February 14, 2011, Hebei Guoji Maoyi (Shanghai) LTD d/b/a HebeiDomains.com confirmed by e-mail to the National Arbitration Forum that the <directvcinema.com> domain name is registered with Hebei Guoji Maoyi (Shanghai) LTD d/b/a HebeiDomains.com and that Respondent is the current registrant of the name. Hebei Guoji Maoyi (Shanghai) LTD d/b/a HebeiDomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) LTD d/b/a HebeiDomains.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 23, 2011, the Forum served the Finnish language Complaint and all Annexes, including a Finnish language Written Notice of the Complaint, setting a deadline of March 15, 2011 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@directvcinema.com. Also on February 23, 2011, the Finnish language 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 March 17, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Finnish language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <directvcinema.com> domain name is confusingly similar to Complainant’s DIRECTV mark.
2. Respondent does not have any rights or legitimate interests in the <directvcinema.com> domain name.
3. Respondent registered and used the <directvcinema.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, DIRECTV, INC., provides satellite TV services under its DIRECTV mark. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its DIRECTV mark (e.g., Reg. No. 2,503,432 issued November 6, 2001).
Respondent, Dyk Dylina, registered the <directvcinema.com> domain name on January 28, 2010. The disputed domain name resolves to a website which hosts hyperlinks to Complainant’s competitors and unrelated third-parties.
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 federal trademark registrations with the USPTO (e.g., Reg. No. 2,503,432 issued November 6, 2001). In Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005), the panel determined that a trademark registration with the USPTO was sufficient to establish rights in a mark. In Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), the panel held that a complainant was not required to register a mark in the country that a respondent resides in. Therefore, the Panel finds that Complainant has established rights in the DIRECTV mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <directvcinema.com> domain name is confusingly similar to Complainant’s DIRECTV mark. The disputed domain name contains Complainant’s mark and simply adds the descriptive term “cinema,” which describes Complainant’s movie services, and the generic top-level domain (“gTLD”) “.com.” In Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007), the panel held that the addition of a descriptive term failed to adequately distinguish the disputed domain name from the complainant’s mark. In Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003), the panel found that the addition of a gTLD was irrelevant because gTLDs are required elements of any domain name. Thus, the Panel concludes that Respondent’s <directvcinema.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 alleged that Respondent does not have any rights or legitimate interests in any of the <directvcinema.com> domain name. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel held that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). In this case, the Panel finds Complainant made a sufficient prima facie case. In Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000), the panel held that a respondent’s failure to respond to the Complaint allows the Panel to infer that a respondent does not have rights or legitimate interests in a disputed domain name. However, this Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the <directvcinema.com> domain name or Complainant’s DIRECTV mark. Respondent has failed to present any evidence to contradict Complainant’s assertion and the Panel fails to find any evidence in the record that would allow the Panel to find Respondent is commonly known by the domain name. The WHOIS information identifies the registrant of the domain name as “Dyk Dylina,” which is not similar to Respondent’s <directvcinema.com> domain name. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) and M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panels found that a respondent is not commonly known by a disputed domain name if the respondent failed to present any evidence of such a fact and the WHOIS information was not similar to the disputed domain name. Therefore, the Panel holds that Respondent is not commonly known by the <directvcinema.com> domain name pursuant to Policy ¶ 4(c)(ii).
Respondent uses the <directvcinema.com> domain name to resolve to a website that contains hyperlinks to Complainant’s competitors in the satellite TV service business and third-parties unrelated to Complainant. Complainant alleges, and the Panel agrees, that Respondent likely receives click-through fees. In Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) and DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002), the panels concluded that the use of a domain name to host a website containing hyperlinks to a complainant’s competitors does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). This Panel finds accordingly.
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <directvcinema.com> domain name resolves to a website which features a list of hyperlinks, some of which resolve to Complainant’s competitors in the satellite TV service industry. Internet users interested in Complainant’s services may purchase similar services from a competitor due to Respondent’s use of the disputed domain name. In Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) and Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), the panels held that the use of a domain name to host hyperlinks to a complainant’s competitors constitutes bad faith registration and use under Policy ¶ 4(b)(iii). In this case, the Panel finds Respondent’s use of the <directvcinema.com> domain name disrupts Complainant’s business and is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).
As noted above, Complainant asserts, and the Panel agrees, that Respondent receives click-through fees from the aforementioned hyperlinks. Each time an Internet user accesses Respondent’s website and clicks on one of the hyperlinks, Respondent receives a fee. Respondent, therefore, commercially benefits from increased Internet traffic to its website. As Respondent is using a confusingly similar domain name, the Panel infers Respondent is attempting to create confusion among Internet users as to Complainant’s affiliation with the domain name in order to increase the traffic to the website. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) and Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006), the panels determined that such a use constitutes bad faith registration and use under Policy ¶ 4(b)(iv). The Panel agrees and finds accordingly in this case.
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 <directvcinema.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: March 18, 2011
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