DIRECTV, Inc. v. Guaranteed Direct Marketing, Inc. / James O'Brien
Claim Number: FA1204001439237
Complainant is DIRECTV, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Guaranteed Direct Marketing, Inc. / James O'Brien (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bestdirectv.com>, registered with GoDaddy.com, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 12, 2012; the National Arbitration Forum received payment on April 18, 2012.
On April 13, 2012, GoDaddy.com, LLC. confirmed by e-mail to the National Arbitration Forum that the <bestdirectv.com> domain name is registered with GoDaddy.com, LLC. and that Respondent is the current registrant of the name. GoDaddy.com, LLC. has verified that Respondent is bound by the GoDaddy.com, LLC. 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 April 20, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 10, 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@bestdirectv.com. Also on April 20, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 May 14, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant is America's leading satellite TV service and its more than 16,000 employees offer 265+ digital channels to over 50 million viewers. The company provides access to quality programming delivered to homes, airports, hotels, restaurants, hospitals, office buildings, airplanes, automobiles and portable electronics.
Complainant owns trademark registrations with the Unites States Patent and Trademark Office (“USPTO”) for the DIRECTV mark (e.g. Reg. No. 2,503,432 registered November 6, 2001).
Complainant uses the DIRECTV mark in connection with the delivery of digital television services.
Respondent registered the disputed domain name on August 12, 2010.
The disputed domain name is confusingly similar to Complainant’s mark.
Respondent is not commonly known by the disputed domain name.
The disputed domain name resolves to a parked page displaying sponsored links to Complainant’s competitors. Respondent commercially benefits from these links through the collection of click-through fees.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant had, and has, trademark rights in DIRECTV at all times relevant to this proceeding. Respondent’s <bestdirectv.com> domain name is confusingly similar to Complainant’s trademark.
Respondent registered the at-issue <bestdirectv.com> domain name on August 12, 2010.
Respondent knew of Complainant’s DIRECTV trademark at the time it registered the at-issue domain name.
Respondent had, and has, no authority to use Complainant’s trademarks in any manner whatsoever.
Respondent registered and uses the at-issue domain name to sponsor a website that displays pay-per-click hyperlinks to at least one of Complainant’s competitors as wells as to other non-related businesses.
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."
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.
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.”).
The at-issue domain name is confusingly similar to a mark in which Complainant has trademark rights.
Complainant’s USPTO trademark registrations for its DIRECTV marks (e.g. Reg. No. 2,503,432 registered November 6, 2001) conclusively supports its claim to “a mark in which the [C]omplainant has rights” under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
The <bestdirectv.com> domain name is confusingly similar to Complainant’s DIRECTV mark under Policy ¶ 4(a)(i). The at-issue domain name contains Complainant’s mark in its entirety, while adding the generic term “best” and affixing the generic top-level domain (“gTLD”) “.com.” Neither the addition of a generic word nor the affixation of a gTLD to a complainant’s mark, even if taken collectively, creates a distinctive, non-infringing domain name under Policy ¶ 4(a)(i). See DIRECTV, Inc v. Digi Real Estate Foundation, NAF Claim No. FA0702000914942 (finding that the <dishdirectv.com> domain name contains Complainant’s mark in its entirety and only adds the generic word ‘dish’ and that prefixing ‘directv’ with the generic word ‘dish’ does not prevent a finding of confusingly similarity under Policy ¶ 4(a)(i)); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
Respondent lacks rights and legitimate interests in respect of the <bestdirectv.com> domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the domain name and then the burden, in effect, shifts to Respondent to come forward with evidence supporting that it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since there was no response to the Complaint, Complainant’s prima facie case will act conclusively.
Respondent is not commonly known by the <bestdirectv.com> domain name. Complainant has not authorized or licensed Respondent’s use of its DIRECTV mark in any way. Furthermore, the relevant WHOIS information indicates that the domain name registrant is “James O'Brien.” “James O’Brien” does not nominally relate to or otherwise identify the at-issue domain name. Additionally, there is nothing in the record that supports a finding that Respondent is commonly known by the disputed domain name. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); 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).
Respondent uses the disputed domain name to reference a website featuring hyperlinks to third-party sites, some of which compete with Complainant’s business. This use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).”). Therefore, Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Given Complainant’s uncontroverted evidence, Complainant satisfies its initial burden. Thereby conclusively demonstrates that Respondent lacks rights and interests in respect of the <bestdirectv.com> domain name pursuant to Policy ¶4(a)(ii).
Respondent registered and uses the at-issue domain name in bad faith.
Respondent’s use of the disputed domain name constitutes bad faith pursuant to Policy ¶4(b)(iv). Respondent exhibits its intent to affiliate the website referenced by the at-issue domain name with services identical or similar to those Complainant provides under its mark. It is reasonable to assume that Respondent generates, or tries to generate, an economic profit from the operation of its infringing website. It is thus clear that Respondent’s use of the confusingly similar domain name is an attempt to create confusion as to Complainant’s affiliation with Respondent and/or its affiliation with the at-issue domain name’s referenced website. Respondent’s attempt to create confusion in order to financially benefit from Complainant’s goodwill constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Complainant registered its DIRECTV trademarks well before Respondent registered the disputed domain name. While Complainant argues that Respondent had constructive knowledge of Complainant's rights in the DIRECTV marks, it is almost inconceivable to hold that Respondent lacked actual knowledge of Complainant’s rights in DIRECTV prior to registering the domain name. Indeed, there can be little doubt that Respondent registered the at-issue domain name with Complainant’s well known trademark in mind. This further shows that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bestdirectv.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 14, 2012
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