DISH Network L.L.C. v. Digital Satellite Connections LLC
Claim Number: FA1306001504221
Complainant is DISH Network L.L.C. (“Complainant”), represented by James E. Rosini of Kenyon & Kenyon LLP, New York, USA. Respondent is Digital Satellite Connections LLC (“Respondent”), represented by Paul Overhauser of Overhauser Law Offices, LLC, Indiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dishnet.com>, <dishnet500.com>, <dishnetworks.com>, and <dishnetworksatellite.com>, registered with TUCOWS, INC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 10, 2013; the National Arbitration Forum received payment on June 10, 2013.
On June 11, 2013, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <dishnet.com>, <dishnet500.com>, <dishnetworks.com>, and <dishnetworksatellite.com> domain names are registered with TUCOWS, INC. and that Respondent is the current registrant of the names. 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 June 18, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 29, 2013 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@dishnet.com, postmaster@dishnet500.com, postmaster@dishnetworks.com, postmaster@dishnetworksatellite.com. Also on June 18, 2013, 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.
A timely Response was received and determined to be complete on July 29, 2013.
A timely Supplemental Statement was received from Complainant on August 5, 2013, in the nature of a reply to Respondent’s Response.
On August 2, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant’s Contentions
Policy ¶ 4(a)(i): Complainant’s Rights / Confusing Similarity
1. Complainant uses the DISH NETWORK mark in connection with the various products and services needed to provide satellite television and electronic media services. Complainant has registered this mark. See USPTO Reg. No. 2,155,313 registered on May 5, 1998.
2. Complainant spends millions of dollars advertising and promoting DISH NETWORK goods and services through print, radio, television, and online media.
3. Respondent has registered the <dishnet.com>, <dishnet500.com>, <dishnetworks.com>, and <dishnetworksatellite.com> domain names. All of the names take Complainant’s DISH NETWORK mark and either abbreviate it, add generic terms or numbers, or add numerals. All of the domain names include the irrelevant addition of the generic top-level domain (“gTLD”) “.com.”
Policy ¶ 4(a)(ii): Respondent Lacks Rights and Legitimate Interests
1. Respondent has not been known by these domain names based upon the WHOIS information, as well as Complainant’s express prohibition on Respondent’s use of the mark in domain names.
2. Respondent uses these domain names to create the appearance that it is an authorized retailer of Complainant when it is not. Respondent is offering its own Internet services under the guise of Complainant’s own business. Respondent has no right to do this, as per its written agreement.
Policy ¶ 4(a)(iii): Respondent’s Bad Faith Use and Registration
1. Respondent’s demand of $9,000,000.00 for the <dishnet.com> domain name, clearly in excess of out-of-pocket expenses, evidences bad faith.
2. Respondent has registered and is using four domain names that all infringe on Complainant’s DISH NETWORK mark. Respondent renewed its domain names in 2013, after losing its status as an authorized seller of Complainant’s services.
3. Respondent seeks to attract Internet users to these domain names so as to confuse the user into believing they are being solicited services that bear Complainant’s endorsement and approval. Respondent then capitalizes on this confusion by obtaining a customer base that is under the impression that their television services derive from Complainant and its DISH NETWORK mark. Respondent was stripped of its licenses and of its authorizations to use Complainant’s intellectual property, yet throughout 2013 Respondent continues to identify itself with Complainant.
4. Respondent knew of Complainant’s rights, as evidenced through Respondent’s signature on documents between the parties that limited Respondent’s ability to use Complainant’s marks.
Respondent registered the following domain names:
1. <dishnet.com>, registered on May 13, 1999.
2. <dishnet500.com>, registered on May 28, 2000.
3. <dishnetworks.com>, registered on May 18, 1999.
4. <dishnetworksatellite.com>, registered on May 18, 1999.
Respondent’s Contentions
Policy ¶ 4(a)(i)
1. Respondent alleges that there is no confusing similarity or identicalness and that the mark is composed of generic words.
Policy ¶ 4(a)(ii)
1. Respondent has become known by these domain names, as it has used them to operate its own legitimate business for well over a decade. Internet users associate these particular domain names with Respondent now, and thus Respondent has become known by the names.
2. Respondent removed all of Complainant’s trademarks from its domain name’s website when requested. It has replaced what were once links with Complainant’s products and services listed with a series of generic terms describing Respondent’s service packages.
3. Respondent has been in business since 1999, selling and installing satellite television goods and services. Respondent generated about $9,000,000 a year for Complainant during their business relationship. Respondent advertised its business under this mark (Exhibit 3), and engaged in numerous business e-mail correspondences with Complainant (e.g., Exhibits 3 – 4).
Policy ¶ 4(a)(iii)
1. Respondent’s opening position of $9,000,000.00 for the <dishnet.com> domain name was a response to Complainant’s initial offer of $50,000.00 for the domain name. Merely engaging in a bilateral negotiation process is not the type of conduct the Policy envisions as bad faith.
2. Respondent generated millions in revenue to Complainant for years, and throughout all of this time Complainant did not once express that these domain names were preventing Complainant from independently finding revenue sources on the Internet via domain names.
3. Respondent removed the objectionable use of Complainant’s marks on its websites when Complainant requested.
Laches
1. Complainant knew of Respondent’s ownership of all of these domain names since 1999. Complainant did not care about whatever “rights” it may have had in these domain names when Respondent was generating money for Complainant. Only after Complainant ended its profitable business relationship with Respondent did Complainant seek to come after its “rights” in these domain names. Complainant is not a novice in these matters, it is a savvy and successful business that could easily have understood that it waited far too long to plan this filing.
Reverse Domain Name Hijacking
1. Complainant only filed this dispute after Respondent sought to declare its rights in U.S. federal court. Given the nature of the parties overall business relationship, and Respondent’s use of the domain names with Complainant’s consent for over a decade, Complainant is guilty of reverse domain name hijacking the domain names. The UDRP was devised as a precursor and deterrent to formal litigation—not as a tool through which complainants could make an attempt to dodge another jurisdiction’s legal judgments.
Complainant’s Reply
A. Respondent is bound by the DISH Agreements which prohibited use of the domains.
1. Respondent has hidden her true identity.
2. Respondent is nonetheless bound by the DISH agreements.
3. The Dish agreements signed by Respondent prohibited use of the domains.
B. Laches does not apply.
C. Respondent fails to rebut DISH’s showing that the domain names are confusingly similar to DISH’s trademarks and were registered by Respondent in bad faith without any legitimate interest in the domains.
1. The domains are nearly identical/confusingly similar to DISH’s marks.
2. DSC has no legitimate interest in the domains.
3. Respondent’s brief discloses even more bad faith.
Procedural Issue: Concurrent Court Proceedings
Complainant notes that Respondent has sued it in the United States District Court for the Middle District of Florida, seeking injunctive relief against Complainant’s usage of the DISHNET mark, as well as disgorgement, attorney’s fees, and damages on theories of treble damages and breach of contract. See Complainant’s Annex B, Ex. R. Complainant contends that this UDRP proceeding does not impact that litigation, and that the court in that proceeding is not bound by this decision in any way. Complainant seeks the immediate transfer of these domain names to prevent ongoing harm received from Respondent’s cybersquatting.
Respondent argues that even if Complainant were to prevail here, it would be futile as the federal court actions could transfer these domain names right back to Respondent. All that would be accomplished is the complete dismantling of Respondent’s own business for a lesser and insignificant relief for Complainant—a massive company with many domain names of its own. Furthermore, a transfer to Complainant would place on U.S. federal court the further burden of finding reverse domain name hijacking pursuant to 15 U.S.C. § 114(2)(D).
In situations where concurrent court proceedings are pending, as is the situation with respect to the instant Complaint, some panels have chosen to proceed with the UDRP filing. See eProperty Direct LLC v. Miller, FA 836419 (Nat. Arb. Forum Jan. 3, 2007) (holding that the panel could decide the dispute under Rule 18(a) of the Policy “since the legal proceedings referred to by the parties appear to be concluded and Orders made. Moreover,… those Orders do not touch directly on the disposition of the disputed domain name or on the parties’ intellectual property rights.”); see also W. Fla. Lighting v. Ramirez, D2008-1122 (WIPO Oct. 2, 2008) (deciding to proceed under the UDRP despite concurrent court proceedings because “the Panel does not find that it is necessary or advantageous to await a judicial determination of the issues raised in the federal litigation in order to reach a decision strictly under the Policy. This administrative proceeding under the Policy concerns only control of the Domain Name, not any of the other remedies at issue in the federal litigation. It is not binding on the court, and it does not preclude the prosecution of any claims, defenses, or counterclaims in the federal litigation”); see also Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Nat. Arb. Forum Aug. 13, 2007) (choosing to proceed under the UDRP despite concurrent court proceedings for multiple reasons, including that the proceedings appeared to be filed in a court that did not commonly adjudicate intellectual property issues and that the court proceedings were filed by the respondent on the same day the response in these proceedings was filed).
Alternatively, other panels have chosen not to proceed with the UDRP because of the pending litigation. See AmeriPlan Corp. v. Gilbert FA105737 (Nat. Arb. Forum Apr. 22, 2002) (Regarding simultaneous court proceedings and UDRP disputes, Policy ¶ 4(k) requires that ICANN not implement an administrative panel’s decision regarding a UDRP dispute “until the court proceeding is resolved.” Therefore, a panel should not rule on a decision when there is a court proceeding pending because “no purpose is served by [the panel] rendering a decision on the merits to transfer the domain name, or have it remain, when as here, a decision regarding the domain name will have no practical consequence.”). In resolving this issue, the Panel has considered the contentions of Complainant and Respondent as outlined below.
Preliminary Issue: This Is a Business/Contractual Dispute Outside the Scope of the UDRP
Respondent denies that it was ever in a contract with Complainant, but that various individuals such as “Donald King” or “Catherine King” entered into long-since terminated contracts with Complainant.
Complainant alleges that Respondent’s predecessor-in-interest entered into a retail agreement with Complainant’s predecessor-in-interest over a decade ago, governing the parties’ usage of each other’s intellectual property. Under this agreement, Respondent allegedly agreed to not use the term “dish” with the term “net” in marketing its business. Complainant admits that there was to some extent a licensing agreement. Complainant alleges that Kathy (“Catherine”) King is an alter-ego of Respondent.
In this instance, the Panel finds that this is a business and/or contractual dispute between two companies that falls outside the scope of the UDRP. In Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007), the panel stated:
A dispute, such as the present one, between parties who each have at least a prima facie case for rights in the disputed domain names is outside the scope of the Policy … the present case appears to hinge mostly on a business or civil dispute between the parties, with possible causes of action for breach of contract. . . Thus, the majority holds that the subject matter is outside the scope of the UDRP and dismisses the Complaint.
In Love, the panel was concerned with possible causes of action for breach of contract. In this case, however, Respondent points out that these causes of action are currently active cases that are pending with the courts. According to the panel in Love, complex cases such as the one presented here may be better decided by the courts than by a UDRP panel:
When the parties differ markedly with respect to the basic facts, and there is no clear and conclusive written evidence, it is difficult for a Panel operating under the Rules to determine which presentation of the facts is more credible. National courts are better equipped to take evidence and to evaluate its credibility.
The panel in Luvilon Indus. NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005) concurred with this reasoning:
[The Policy’s purpose is to] combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes .… The issues between the parties are not limited to the law of trade marks. There are other intellectual property issues. There are serious contractual issues. There are questions of governing law and proper forum if the matter were litigated. Were all the issues fully ventilated before a Court of competent jurisdiction, there may be findings of implied contractual terms, minimum termination period, breach of contract, estoppels or other equitable defenses. So far as the facts fit within trade mark law, there may be arguments of infringement, validity of the registrations, ownership of goodwill, local reputation, consent, acquiescence, and so on.
Based upon the reasoning outlined in the aforementioned cases and the record, the Panel concludes that the instant dispute contains a question of contractual interpretation, and thus falls outside the scope of the UDRP. Having made such a finding, the Panel chooses to dismiss the Complaint. See Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum Apr. 27, 2005) (“The Panel finds that this matter is outside the scope of the Policy because it involves a business dispute between two parties. The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”); see also Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb. Forum Jan. 8, 2007) (“The Complaint before us describes what appears to be a common-form claim of breach of contract or breach of fiduciary duty. It is not the kind of controversy, grounded exclusively in abusive cyber-squatting, that the Policy was designed to address.”); see also Frazier Winery LLC v. Hernandez, FA 841081 (Nat. Arb. Forum Dec. 27, 2006) (holding that disputes arising out of a business relationship between the complainant and respondent regarding control over the domain name registration are outside the scope of the UDRP Policy).
Trademark Dispute Outside the Scope of the UDRP
Complainant argues that despite the fact that Respondent entered a contract, agreeing not to use the terms “dish” and “net” in its business, Respondent applied for USPTO registration of the DISH NET mark, and this application was denied on April 27, 2013. Complainant acknowledges a licensing agreement between the parties, but states that this agreement prohibited the use of the DISH NETWORK mark.
Respondent notes that at the time it filed the trademark, it was still an authorized reseller of Complainant’s goods. Respondent notes that Complainant’s own application for two DISH NET trademarks were rejected by the USPTO—suggesting that American trademark authorities have reasons for refusing such a mark beyond protecting Complainant’s interest in DISH NETWORK.
In sum, Complainant and Respondent both assert rights to the DISH NET mark. The Panel must therefore determine if this dispute falls outside the scope of the Policy, and may choose to dismiss the Complaint. In Commercial Publishing Co. v. EarthComm, Inc., FA 95013 (Nat. Arb. Forum July 20, 2000), the panel indicated that legitimate disputes should be decided by the courts:
The adopted Policy establishes a streamlined, inexpensive administrative-dispute resolution procedure intended only for the relatively narrow class of cases of “abusive registrations.” Thus, the fact that the Policy’s administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute is a feature of the Policy, not a flaw. The Policy relegates all “legitimate disputes” to the courts. Only cases of abusive registrations are intended to be subject to the streamline [sic] administrative dispute-resolution procedure.
Previous panels have chosen to dismiss UDRP complaints which centered upon legitimate trademark disputes. See, e.g., Abbott Labs. v. Patel, FA 740337 (Nat. Arb. Forum Aug. 15, 2006) (holding that assertions of trademark infringement are “entirely misplaced and totally inappropriate for resolution” in a domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else); see also Stevenson Indus., Inc. v. CPAP-PRO Online, FA 105778 (Nat. Arb. Forum Apr. 25, 2002) (“If the existence of [rights or legitimate interests] turns on resolution of a legitimate trademark dispute, then Respondent must prevail, because such disputes are beyond the scope of this proceeding.”). This Panel chooses to dismiss the instant Complaint.
Accordingly, the Panel concludes that this is a contractual business dispute that falls outside of the scope of the UDRP; and that it also involves a trademark dispute that is outside the scope of the UDRP. Given that there are concurrent court proceedings pending before the Federal District Court, Middle District of Florida, and all of these issues are central to those proceedings, this matter is clearly outside the scope of the UDRP, and the Panel hereby dismisses the Complaint.
It is Ordered that the request to transfer the <dishnet.com>, <dishnet500.com>, <dishnetworks.com>, and <dishnetworksatellite.com> domain names be, and the same is hereby DENIED.
John J. Upchurch, Panelist
Dated: August 16, 2013
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