national arbitration forum

 

DECISION

 

DIRECTV, Inc. v. Gioacchino Zerbo

Claim Number: FA1112001421764

 

PARTIES

Complainant is DIRECTV, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA.  Respondent is Gioacchino Zerbo (“Respondent”), Italy.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <drectv.com>, registered with Fabulous.com Pty Ltd.

 

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.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 28, 2011; the National Arbitration Forum received payment on January 5, 2012.

 

On December 29, 2011, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <drectv.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On January 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 25, 2012 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@drectv.com.  Also on January 5, 2012, 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 January 26, 2012, 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 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, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <drectv.com> domain name is confusingly similar to Complainant’s DIRECTV mark.

 

2.    Respondent does not have any rights or legitimate interests in the <drectv.com> domain name.

 

3.    Respondent registered and used the <drectv.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, DIRECTV, Inc., has offered digital television services and the distribution and installation of satellite television dish receivers, tuning boxes and other products related to television services.  Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for the DIRECTV mark (e.g., Reg. No. 2,503,432 registered November 6, 2001). 

 

Respondent, Gioacchino Zerbo, registered the <drectv.com> domain name on May 23, 2003.  Respondent’s domain name resolves to a website that purports to offer a gift card in exchange for Internet users providing their name, mobile phone number, and e-mail address. 

 

Respondent has been the respondent in several prior UDRP proceedings in which it was ordered to transfer the registered domain names to the respective trademark owners.  See Fandango, Inc. v. Zerbo, FA 1358962 (Nat. Arb. Forum Dec. 30, 2010); see also AOL Inc. v. Zerbo, FA 1346202 (Nat. Arb. Forum Oct. 28, 2010); see also Travelocity.com LP v. Zerbo, FA 1343692 (Nat. Arb. Forum Oct. 12, 2010); see also The Travel Channel, L.L.C. v. Zerbo, FA 1333952 (Nat. Arb. Forum Aug. 17, 2010); see also LEGO Juris A/S v. Zerbo, D2009-0500 (WIPO June 29, 2009); see also Yamaha Motor Corp., USA v. Zerbo, D2007-1879 (WIPO Feb. 7, 2008). 

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant has submitted evidence indicating that it owns multiple trademark registrations with the USPTO for the DIRECTV mark (e.g., Reg. No. 2,503,432 registered November 6, 2001).  The Panel finds that this evidence is sufficient for Complainant to establish protectable rights in the DIRECTV mark under Policy ¶ 4(a)(i).  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 Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).

 

Complainant argues that Respondent’s <drectv.com> domain name is confusingly similar to Complainant’s DIRECTV mark.  The Panel notes that the domain name merely removes the letter “i” from the mark while adding the generic top-level domain (“gTLD”) “.com.”  The Panel determines that such changes to Complainant’s mark are not sufficient to remove the domain name from the realm of confusing similarity under Policy ¶ 4(a)(i).  See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”); see also 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).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant contends that Respondent does not possess rights or legitimate interests in the disputed domain name.  The initial burden of proof under Policy ¶ 4(a)(ii) is on the Complainant to provide the Panel with a prima facie case in support of its contentions.  Upon providing such a case, the burden of proof shifts to Respondent to defend its rights and interests in the domain name.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).  The Panel determines that Complainant has supplied a prima facie case in this matter, thereby shifting the burden of proof onto Respondent.  However, due to Respondent’s failure to respond to this Complaint, the Panel may accept all of Complainant’s allegations as true.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”).  Nonetheless, the Panel will evaluate all of the evidence on record in making its determinations under Policy ¶ 4(c). 

 

Complainant contends that Respondent is neither commonly known by the domain name nor does Respondent operate a business or organization under the domain name or DIRECTV mark.  The Panel notes that the WHOIS information identifies “Gioacchino Zerbo” as the domain name registrant, and the Panel finds that this is not similar to the <drectv.com> domain name.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

Complainant argues that “Respondent’s actions are not a bona fide offering of goods or services under Policy ¶ 4(c)(i).”  Complainant contends that Respondent is forwarding Internet users from its domain name to a third-party website that contains “bogus, information-harvesting gift card and prize offers…,” thereby diverting Complainant’s customers and potential customers to third-party websites which are not associated with Complainant.  Complainant goes on to argue that Respondent commercially benefits from this use, thereby removing protection of Policy ¶ 4(c)(iii).  The Panel agrees and finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Victoria’s Secret Stores Brand Mgmt., Inc. v. egyGossip.com, FA 1288062 (Nat. Arb. Forum Nov. 20, 2009) (holding that the use of a confusingly similar disputed domain name to offer a complainant’s gift cards in exchange for Internet users completing surveys is not a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Homer TLC, Inc. v. Wang, FA 1336037 (Nat. Arb. Forum Aug. 23, 2010) (finding that the “[r]espondent 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 pursuant to Policy ¶ 4(c)(iii)” when the disputed domain name resolved to a survey website that purported to offer Internet users a gift card to the complainant’s stores).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent has been the respondent in several prior UDRP proceedings in which it was ordered to transfer the registered domain names to the respective trademark owners.  See Fandango, Inc. v. Zerbo, FA 1358962 (Nat. Arb. Forum Dec. 30, 2010); see also AOL Inc. v. Zerbo, FA 1346202 (Nat. Arb. Forum Oct. 28, 2010); see also Travelocity.com LP v. Zerbo, FA 1343692 (Nat. Arb. Forum Oct. 12, 2010); see also The Travel Channel, L.L.C. v. Zerbo, FA 1333952 (Nat. Arb. Forum Aug. 17, 2010); see also LEGO Juris A/S v. Zerbo, D2009-0500 (WIPO June 29, 2009); see also Yamaha Motor Corp., USA v. Zerbo, D2007-1879 (WIPO Feb. 7, 2008).  The Panel finds that this evidence of prior UDRP decisions against Respondent establishes bad faith in the present matter under Policy ¶ 4(b)(ii).  See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).

 

Further, Complainant contends that Respondent’s use of the disputed domain name to forward Internet users to a gift card and information harvesting website results in commercial gain for Respondent.  Complainant alleges that such commercial gain comes from the receipt of affiliate or other forwarding fees.  Further, the domain name resolves to a website which purports to offer a gift card in exchange for personal information.  Respondent has not come forward with any explanations for its use of the disputed domain name.  Therefore, the Panel finds that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) in order to realize a financial gain by creating confusion with Complainant and its DIRECTV mark.  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. Privacy Protect, FA 1404667 (Nat. Arb. Forum Sept. 30, 2011) (finding Policy ¶ 4(b)(iv) bad faith registration and use when a disputed domain name resolves to a website that offers visitors gift cards in exchange for completing surveys and providing personal information).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <drectv.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  February 9, 2012

 

 

 

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