DIRECTV, LLC v. DN Media, Inc
Claim Number: FA1205001444678
Complainant is DIRECTV, LLC (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is DN Media, Inc (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <satellitedirecttv-pc.com>, registered with GoDaddy.com, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 17, 2012; the National Arbitration Forum received payment on May 23, 2012.
On May 18, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <satellitedirecttv-pc.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 May 23, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 12, 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@satellitedirecttv-pc.com. Also on May 23, 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 June 18, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
1. Complainant owns trademark rights for its DIRECTV mark through numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,503,432 registered November 6, 2001). See Exhibit E-1.
2. Complainant uses the DIRECTV mark in connection with television distribution and installation services. Complainant has used the DIRECTV mark since 1994 to deliver television services to its consumers and uses extensive resources to promote its services under the DIRECTV mark.
3. Respondent’s <satellitedirecttv-pc.com> domain name is confusingly similar to Complainant’s DIRECTV mark.
4. Respondent’s disputed domain name resolves to a website and the website’s content does not fit into a category of fair use or a legitimate non-commercial use and confuses consumers.
5. Respondent is not commonly known by the disputed domain name and used the DIRECTV mark without Complainant’s consent. Respondent obtains a commercial profit from its use of the disputed domain name.
6. Respondent had constructive and actual notice of Complainant’s rights in the mark prior to the time Respondent registered the <satellitedirecttv-pc.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is America's leading satellite TV service with more than 16,000 employees and offering more than 265 digital TV channels to over 50 million viewers.
2. Complainant owns trademark rights for its DIRECTV mark through numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,503,432 registered November 6, 2001).
3. Complainant uses the DIRECTV mark in connection with television distribution and installation services. Complainant has used the DIRECTV mark since 1994 to deliver television services to its consumers and uses extensive resources to promote its services under the DIRECTV mark.
4. Respondent registered the <satellitedirecttv-pc.com> domain name on February 23, 2010. The domain name resolves to a website the content of which purports to offer services in competition with those of Complainant, does not fit into a category of fair use or a legitimate non-commercial use and potentially confuses internet users.
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 first question that arises is whether Complainant has rights in a trademark or service mark. In that regard, Complainant contends that it owns trademark registrations with the USPTO for its DIRECTV mark (e.g., Reg. No. 2,503,432 registered November 6, 2001). The Panel determines that, by holding trademark registrations with the USPTO, Complainant confirms its rights in the DIRECTV mark under Policy ¶ 4(a)(i). See Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (finding that “Complainant’s timely registration with the USPTO and subsequent use of the BIG TOW mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i).”). The Panel also finds that Complainant need not register its DIRECTV mark in the same country where Respondent resides and operates, for the purposes of Policy ¶ 4(a) (i). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s DIRECTV mark. Complainant argues that the <satellitedirecttv-pc.com> domain name is confusingly similar to the DIRECTV mark. Complainant alleges that, by adding the descriptive terms “satellite,” “tv” and “pc” to a nearly identical copy of Complainant’s mark, the disputed domain name is confusingly similar to the DIRECTV mark. The Panel notes that, instead of adding the descriptive term “tv” to Complainant’s DIRECTV mark, Respondent adds the letter “t” to the mark. The Panel also notes that the disputed domain name includes a hyphen and the generic top-level domain “.com.” The Panel finds the modifications to the mark in the disputed domain name are insufficient to alter the confusing similarity between the DIRECTV mark and the <satellitedirecttv-pc.com> domain name under Policy ¶ 4(a)(i) and that consequently the domain name is confusingly similar to the mark. See DIRECTV, Inc. v. Lander, FA 1434832 (Nat. Arb. Forum Apr. 13, 2012) (finding that the <directtvrebates.com> domain name included an additional “t” and the generic word “rebates,” which nonetheless caused the domain name to be confusingly similar to the complainant’s DIRECTV mark); Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)); see also Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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 finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s DIRECTV mark, add the terms “satellite,” “tv” and “pc” and then use the resulting combined expression as its domain name;
(b) The disputed domain name resolves to a website the content of which purports to offer services in competition with those of Complainant, does not fit into a category of fair use or a legitimate non-commercial use and potentially confuses internet users.
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant also contends that Respondent is not commonly known by the <satellitedirecttv-pc.com> domain name and provides evidence that the WHOIS information for the disputed domain name identifies “DN Media, Inc.” as the registrant. See Exhibit B-1. Complainant further alleges that it has not granted Respondent permission to use the DIRECTV mark in any way. The panel in Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), concluded that the respondent was not commonly known by the disputed domain name based on the WHOIS information and the complainant’s claim that it did not permit the respondent to use its mark in a domain name. The panel in Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001), held that the respondent lacks rights in a domain name when the respondent is not known by the mark. The Panel thus determines that Respondent is not commonly known by the <satellitedirecttv-pc.com> domain name pursuant to Policy ¶ 4(c) (ii) because the WHOIS information does not support such a conclusion and because Complainant did not authorize Respondent’s use of the DIRECTV mark.
(e) Complainant also submits evidence that, as the Panel finds, shows Respondent hosts a website that offers “Satellite Direct” services, which Complainant claims is a purely commercial use of the disputed domain name and competes with Complainant for TV broadcasting services. See Exhibits F-1 – F-5. The Panel finds that, by offering services in competition with Complainant’s business, Respondent is not using the <satellitedirecttv-pc.com> domain name in a way that embodies 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). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c) (i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also Am. Tool & Machining, Inc. v. EZ Hitch Inc., FA 113961 (Nat. Arb. Forum July 16, 2002) (holding that Respondent lacks rights and legitimate interests in the domain name because “Respondent is competing in the same industry as Complainant, selling a product that is arguably identical to Complainant's product and under the same name”).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant alleges that Respondent has registered and is using the disputed domain name in bad faith because Respondent is deliberately using a domain name that is identical to Complainant’s mark to attract Internet users.
Complainant adds that Respondent demonstrates an “intent to infringe upon well-known trademarks,” evidenced by the pattern of other domain names Respondent holds, including <ncaafootball.info>, <newbalanceshoes.info>, and <olympuscameras.info>. Although these matters have not resulted in decided UDRP cases, the Panel holds the view that registering multiple domain names that infringe on the marks of third parties is evidence to the effect that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b) (iv). See Nabisco Brands Co. v. Patron Group, Inc., D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain names is one factor in determining registration and use in bad faith).
Secondly, Complainant claims that Respondent uses the <satellitedirecttv-pc.com> domain name to offer a service that is in competition with Complainant’s products. Complainant alleges that the resolving website provides a place for Internet users to enter credit card information when purchasing a service and that Respondent receives monetary compensation for every purchase made at the disputed domain name. The panel in Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000), held that the respondent’s use of the disputed domain name to offer services similar to those offered by the complainant was likely to confuse the user as to the sponsorship of the services offered at the site and constituted bad faith registration and use. In Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003), the panel stated that the respondent registered and used the domain name in bad faith because the disputed domain name was in direct competition with the complainant and gave the appearance of being affiliated with the complainant. The Panel finds bad faith pursuant to Policy ¶ 4(b)(iv) in Respondent’s registration and use of the <satellitedirecttv-pc.com> domain name because the resolving website attracts Internet traffic by offering similar services to those offered by Complainant, causing potential consumer confusion and resulting in a profit to Respondent.
Thirdly, Complainant asserts that Respondent was put on constructive and actual notice of Complainant’s rights in the DIRECTV mark because of Complainant’s widespread use of the mark and by complainant’s numerous trademark registrations that precede the registration date corresponding to the <satellitedirecttv-pc.com> domain name. The panel in Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Nat. Arb. Forum Nov. 13, 2008), stated that constructive knowledge alone does not support a finding of bad faith registration. In Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007), the panel held that the respondent had actual knowledge of the complainant’s mark at the time it registered the disputed domain name and therefore did so in bad faith. The Panel finds that constructive knowledge of Complainant’s mark does not support a finding of bad faith registration. However, the Panel infers from the evidence that Respondent had actual knowledge of Complainant’s rights in the DIRECTV mark prior to registering the <satellitedirecttv-pc.com> domain name and the Panel therefore concludes that Respondent registered the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the DIRECTV mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <satellitedirecttv-pc.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 19, 2012
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