national arbitration forum

 

DECISION

 

DIRECTV, LLC. v. null

Claim Number: FA1208001456614

 

PARTIES

Complainant is DIRECTV, LLC. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA.  Respondent is null (“Respondent”), North Carolina, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <directvxpress.com>, registered with Tucows, Inc.

 

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 August 3, 2012; the National Arbitration Forum received payment on August 10, 2012.

 

On August 3, 2012, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <directvxpress.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name.  Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 August 10, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 30, 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@directvxpress.com.  Also on August 10, 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 September 5, 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

  1. Complainant claims:
    1. Complainant owns the DIRECTV mark, which Complainant uses in connection with its provision of digital television services and distribution of satellite dish receivers, tuning boxes, and related products.
    2. Complainant owns multiple 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).  See Complainant’s Exhibit E.
    3. Respondent’s <directvxpress.com> domain name is confusingly similar to Complainant’s DIRECTV mark.
    4. Respondent is not commonly known by the <directvxpress.com> domain name.
    5. Respondent is not affiliated with Complainant and is not authorized to use Complainant’s DIRECTV mark.
    6. The <directvxpress.com> domain name resolves to a website that purports to offer Complainant’s services, but, even if the website does actually offer these services, the resolving website does not satisfy the standards in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001).  See Complainant’s Exhibit F.
    7. Respondent registered and uses the <directvxpress.com> domain name for the purpose of attempting to attract, for commercial gain, Internet searchers to Respondent’s website by creating a likelihood of confusion as to Complainant’s association with the disputed domain name.
    8. Respondent had actual and constructive knowledge of Complainant’s rights in the DIRECTV mark when Respondent registered the <directvxpress.com> domain name.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.     Complainant has rights in its DIRECTV mark.

2.    Respondent’s <directvxpress.com> domain name is confusingly similar to Complainant’s mark.

3.    Respondent has no rights to or legitimate interests in the domain name.

4.    Respondent registered and used the domain name in bad fairh.

 

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."

 

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.”).

 

Identical and/or Confusingly Similar

 

Complainant claims that it owns rights in the DIRECTV mark.  Complainant asserts that it uses the mark in connection with its provision of digital television services and distribution of satellite dish receivers, tuning boxes, and related products.  According to Complainant, Complainant owns multiple trademark registrations with the USPTO for the DIRECTV mark (e.g., Reg. No. 2,503,432 registered November 6, 2001).  See Complainant’s Exhibit E.  In AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006), the panel found that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”  Based on UDRP precedent and Complainant’s trademark registrations, the Panel concludes that Respondent owns rights in the DIRECTV mark under Policy ¶ 4(a)(i).

 

Complainant contends that Respondent’s <directvxpress.com> domain name is confusingly similar to Complainant’s DIRECTV mark.  Complainant alleges that Respondent’s addition of the term “xpress,” which the Panel infers is a misspelling of the term “express,” is not sufficient to distinguish the disputed domain name.  The Panel notes that the disputed domain name also contains the generic top-level domain name (“gTLD”) “.com.”  In Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004), the panel held that the respondent’s <amextravel.com> domain name was confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i).  In Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), the panel concluded that the affixation of a gTLD to a domain name was irrelevant to a Policy ¶ 4(a)(i) analysis.  In accordance with the panels in Am. Express Co. and Trip Network Inc., the Panel concludes that the additions of the term “xpress” and the gTLD “.com” fail to remove the <directvxpress.com> domain name from the realm of confusing similarity according to Policy ¶ 4(a)(i). 

 

Rights or Legitimate Interests

 

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.”).

 

Complainant alleges that Respondent is not commonly known by the <directvxpress.com> domain name.  Complainant argues that Respondent is not affiliated with Complainant and is not authorized to use Complainant’s DIRECTV mark.  Complainant also contends that the WHOIS information, which lists “null” as the registrant of the disputed domain name, does not indicate that Respondent is commonly known by the domain name.  See Complainant’s Exhibit B.  The Panel notes that Respondent did not respond to this case and, therefore, did not present any evidence of rights and legitimate interests in the <directvxpress.com> domain name.  In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel held that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark.  As the Panel may find that the facts of this case align with the facts of the Braun Corp. case, the Panel concludes that Respondent is not commonly known by the <directvxpress.com> domain name under Policy ¶ 4(c)(ii).

 

Complainant next argues that the <directvxpress.com> domain name resolves to a website that purports to offer Complainant’s services.  See Complainant’s Exhibit F.  Complainant asserts that it is impossible to know if Respondent actually offers these services.  Complainant contends that, even if the website does actually offer Complainant’s services, the resolving website does not satisfy the standards in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001).  The Oki Data Americas, Inc. panel established that an authorized dealer may use the complainant’s trademark in a domain name if the respondent is 1) selling the products at issue; 2) selling only the complainant’s products; 3) accurately disclosing the relationship between the complainant and the respondent; and 4) has not attempted to register all domain names incorporating the complainant’s mark, thus preventing the complainant from reflecting its mark in a domain name.  Complainant claims that Respondent fails to meet the first prong and the third prong of Oki Data Americas, Inc. because it is unclear if Respondent actually sells Complainant’s services and because Respondent does not accurately disclose Respondent’s relationship with Complainant.   The Panel finds that Respondent failed to satisfy the Oki Data Americas, Inc. standard. The Panel holds that Respondent is making neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <directvxpress.com> domain name. 

 

Moreover, Complainant alleges that the phone number provided by Respondent on the resolving website does not work.  If Respondent is not selling Complainant’s products, Complainant accuses Respondent of potentially gathering personal information at the “Request Information” section of Respondent’s website.  Complainant claims that Respondent can commercially benefit by selling that information to third parties.  In Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010), the panel stated that “[the respondent’s] attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”   The Panel agrees and determines that Respondent is attempting to acquire personal information of Internet users. The Panel holds that Respondent is making neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <directvxpress.com> domain name.

 

Registration and Use in Bad Faith

 

According to Complainant, Respondent registered and uses the <directvxpress.com> domain name for the purpose of attempting to attract, for commercial gain, Internet searchers to Respondent’s website by creating a likelihood of confusion as to Complainant’s association with the disputed domain name.  Complainant asserts that the resolving website contains Complainant’s mark and Complainant’s images and offers to sell Complainant’s services.  The Panel infers that Internet users may become confused as to Complainant’s affiliation with the disputed domain name due to the content of the resolving website.  Complainant further argues that Respondent improperly commercially benefits from either the sale of Complainant’s services or the collection of personal information from Internet users.  In Stanley Logistics, Inc. v. Motherboards.com, FA 128068 (Nat. Arb. Forum Dec. 2, 2002), the panel found that the respondent, through the use of the complainant’s mark to redirect Internet users to a website selling the complainant’s product, placed itself, without the complainant’s consent, in a preferred position with respect to other distributors, which caused consumer confusion and evidenced bad faith registration and use of the domain name.  Similarly, in Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006), the panel determined that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name.  Therefore,  the Panel finds that Respondent was attempting to confuse Internet users in order to commercially benefit, by selling Complainant’s services or by receiving personal information. The Panel determines that Respondent is guilty of Policy ¶ 4(b)(iv) bad faith registration and use in regards to the directvxpress.com> domain name.

 

Finally, Complainant contends that Respondent had actual and constructive knowledge of Complainant’s rights in the DIRECTV mark when Respondent registered the <directvxpress.com> domain name.  Complainant claims that its USPTO trademark registrations ensure that Respondent had constructive knowledge of Complainant’s rights.  Complainant also argues that Respondent’s offering of Complainant’s services and Respondent’s use of Complainant’s mark and images on the resolving website indicate actual knowledge of Complainant’s rights.  The Panel may disregard Complainant's arguments concerning constructive knowledge as panels have held that constructive knowledge is not enough evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel agrees with Complainant regarding Respondent's actual knowledge, however, concluding that Respondent registered the <directvxpress.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").

 

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 <directvxpress.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  September 18, 2012

 

 

 

 

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