national arbitration forum

 

DECISION

 

EUTELSAT SA v. Eko Hadi Prayetno

Claim Number: FA1309001518921

PARTIES

Complainant is EUTELSAT SA (“Complainant”), represented by NAMESHIELD, France.  Respondent is Eko Hadi Prayetno (“Respondent”), Indonesia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <eutelsatinc.us>, registered with Dynadot LLC.

 

PANEL

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.

 

Darryl C. Wilson, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 11, 2013; the National Arbitration Forum received a hard copy of the Complaint on September 25, 2013.

 

On September 11, 2013, Dynadot LLC confirmed by e-mail to the National Arbitration Forum that the <eutelsatinc.us> domain name is registered with Dynadot LLC and that Respondent is the current registrant of the name.  Dynadot LLC has verified that Respondent is bound by the Dynadot LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On September 27, 2013, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 17, 2013 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On October 21, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.   Complainant

Policy ¶ 4(a)(i)

a.    Complainant, EUTELSAT SA, is a leading European satellite operator for the supply of fixed satellite services. Complainant’s business covers 150 countries and reaches an audience of 204 million cable and satellite TV homes.

b.    Complainant has registered the EUTELSAT mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,868,318 registered August 3, 2004). See Complainant’s Exhibit 2.

c.    The <eutelsatinc.us> domain name is confusingly similar to Complainant’s EUTELSAT mark because the domain name fully incorporates the mark and merely adds the country code top-level domain (“ccTLD”) “.us” and the generic term “inc.”

Policy ¶ 4(a)(ii)

d.    Respondent is not commonly known as <eutelsatinc.us> because the WHOIS information identifies the registrant of the disputed domain name as “Eko Hadi Prayetno” and Complainant has not given Respondent permission to use its EUTELSAT mark in a domain name.

e.    Respondent’s use of the disputed domain name is not protected as a bona fide offering of goods and services or a legitimate noncommercial or fair use, because the disputed domain name does not resolve to an active website, and such an inactive holding of a domain name is not protected under the Policy. See Complainant’s Exhibit 7.

Policy ¶ 4(a)(iii)

f.      Because of the international popularity of the EUTELSAT mark, the Panel may infer that Respondent registered the disputed domain name with actual notice of Complainant’s rights in the mark, which tends to show Respondent acted in bad faith under Policy ¶ 4(a)(iii).

g.    Respondent has demonstrated bad faith registration and use under Policy ¶ 4(a)(iii), because the <eutelsatinc.us> domain name resolves to an inactive website. See Complainant’s Exhibit 7.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant is EUTELSAT SA of Paris, France. Complainant is the owner of several international registrations for the mark EUTELSAT, including in the USA, which it uses in connection with the provision of fixed satellite services throughout the world. Complainant also owns registrations for various websites with the primary site for the company being found at <www.eutelsat.com>.

 

Respondent is listed as Eko Hadi Prayetno of Malang, Indonesia. Respondent’s registrar’s address is San Mateo, CA, USA. Respondent registered the disputed domain name on August 26, 2013.

 

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.”).

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD polciy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

Complainant states that it is a leading European satellite operator for the supply of fixed satellite services. Complainant’s business covers 150 countries and reaches an audience of 204 million cable and satellite TV homes. Complainant alleges that it owns rights in the EUTELSAT mark with the USPTO (e.g., Reg. No. 2,868,318 registered August 3, 2004). See Complainant’s Exhibit 2. The Panel notes that previous panels have held that a complainant sufficiently establishes its rights in a mark by registering the mark with the USPTO. See, e.g., Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under UDRP ¶ 4(a)(i)). It has also previously been determined that a complainant need not register its mark in the respondent’s country of residence in order to establish its rights in the mark. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). The Panel here finds that Complainant has sufficiently established its rights in the EUTELSAT mark pursuant to Policy ¶ 4(a)(i).

 

Complainant argues that the disputed <eutelsatinc.us> domain name is confusingly similar to Complainant’s EUTELSAT mark because the domain name fully incorporates the mark and merely adds the country code top-level domain (“ccTLD”) “.us” and the generic term “inc.” The Panel notes that previous panel decisions state that the addition of a ccTLD such as “.us” does not sufficiently distinguish a domain name from a complainant’s mark pursuant to Policy ¶ 4(a)(i). See, e.g., Lockheed Martin Corp. v. Roberson, FA 323762 (Nat. Arb. Forum Oct. 19, 2004) (holding that the ccTLD “.us” does not differentiate the disputed domain name from Complainant’s mark). The Panel also notes that in Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000), a previous panel held that the domain name <bodyshopdigital.com> was confusingly similar to the complainant’s THE BODY SHOP trademark, because the domain name’s addition of the generic term “digital” did not sufficiently distinguish the domain name from the mark.

 

The Panel here finds that the addition of the term “inc” in the <eutelsatinc.us> domain name does not adequately differentiate the disputed domain name from Complainant’s EUTELSAT mark and that the disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).

 

Respondent makes no contentions with regards to Policy ¶ 4(a)(i). 

 

The Complainant has proven this element.

 

Rights or Legitimate Interests

The Panel recognizes 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). The Complainant has met this burden.

 

Complainant alleges that Respondent is not commonly known as <eutelsatinc.us>, because Respondent does not have Complainant’s permission to use the EUTELSAT mark in a domain name and the WHOIS information identifies the registrant of the disputed domain name as  “Eko Hadi Prayetno.” It has previously been determined that a respondent is not commonly known by the disputed domain name where the complainant allegedly has not authorized the respondent to appropriate its mark and there is no evidence in the record, including the WHOIS information, that otherwise indicates that respondent is commonly known by the disputed domain name. See 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). The Panel notes that there is no evidence in the record here to suggests that Respondent is commonly known by the name of <eutelsatinc.us>. The Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(iii).

 

Complainant suggests that Respondent’s use of the disputed domain name is not protected as a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv), because the <eutelsatinc.us> domain name does not resolve to an active website, and such an inactive holding of a domain name is not protected under the Policy. See Complainant’s Exhibit 7. The Panel notes that according to a screenshot provided by Complainant, the at-issue website displays no content other than a Wordpress template. Id. Previous panels have held that a respondent’s inactive holding of a domain name tends to show that the respondent lacks rights or legitimate interests in the domain name under Policy  ¶¶ 4(c)(ii) or 4(c)(iv). See, e.g., Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website.  The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to UDRP  ¶ 4(c)(iii).”).

 

The Panel here finds that the use of the disputed domain name to display no content other than a blank Wordpress template constitutes an inactive holding of the disputed domain name. The Panel finds that Respondent’s use of the <eutelsatinc.us> domain name is not protected as a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy  ¶ 4(c)(iv).

 

Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).

 

Because the Respondent has not provided a response to this action the Respondent cannot meet its burden regarding proof of any rights or legitimate interest in the disputed domain.

 

The Complainant has proven this element.

 

Registration or Use in Bad Faith

Complainant argues that Respondent has demonstrated bad faith registration and use under Policy ¶ 4(a)(iii), because the <eutelsatinc.us> domain name resolves to an inactive website. See Complainant’s Exhibit 7. The Panel again notes that, according to a screenshot provided by Complainant, the at-issue website displays no content other than a Wordpress template. Id. The Panel further notes that it has previously been determined that a respondent’s inactive holding of a disputed domain name indicates the respondent’s bad faith where there are no indications that the respondent could have registered and used the disputed domain name for any non-infringing purpose. See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose).

 

In the instant proceedings, the Panel finds that Respondent has failed to make an active use of the disputed domain name and that Respondent’s inactive use of the disputed domain name supports a finding of the Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii).

 

The Complainant has proven this element.

 

DECISION

Because the Complainant has established all three elements required under the usTLD Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.

 

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

 

 

                                       Darryl C. Wilson, Panelist

                                       Dated: November 4, 2013

 

 

 

 

 

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