DIRECTV, INC. v. Satellite
Use LLC
Claim Number: FA0711001116241
PARTIES
Complainant is DIRECTV, INC. (“Complainant”), represented by Evan
Finkel, of Pillsbury Winthrop Shaw Pittman LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <orderdirectv.com>, registered with Enom, 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.
Joel M. Grossman, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 30, 2007; the
National Arbitration Forum received a hard copy of the Complaint on December 3, 2007.
On December 3, 2007, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <orderdirectv.com> domain name is
registered with Enom, Inc. and that the
Respondent is the current registrant of the name. Enom, Inc.
has verified that Respondent is bound by the Enom,
Inc. registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 10, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 31, 2007 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@orderdirectv.com by
e-mail.
A timely Response was received and determined to be complete on December 31, 2007.
On January 4, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Joel M. Grossman as Panelist.
An additional submission was submitted by
Respondent on January 11, 2008, and was determined to be deficient. The Panel
has chosen not to consider this additional submission.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts rights in the DIRECTV mark through its registered
trademarks, and its well-known usage dating back to 1994. Complainant further
asserts that the domain name <orderdirectv.com>
is confusingly similar to its mark, as it incorporates the entire mark, and
that adding the generic term “order” to the mark does not alleviate the
confusion. Indeed, Complainant asserts that attaching the word “order” to its
mark adds to the confusion, as potential customers might believe that
Respondent’s website is the place to order satellite television service from
Complainant. Next, Complainant asserts that Respondent has no legitimate rights
or interests in the domain name. Complainant points out that Respondent has
never been known by that name, and has not been licensed by Complainant to
process orders for Complainant’s services. Complainant further asserts that
Respondent is not using the domain name for a bona fide offering of goods or
services, since the website directs the users to a competing site for Dish
Network. Finally, Complainant asserts that the domain name was registered and
is being used in bad faith. Complainant points out that
Respondent was clearly aware of Complainant’s famous mark, and
registered and then used the domain name to mislead customers seeking to do
business with Complainant and to redirect them to a competitor’s website.
Complainant also asserts that Respondent offered to sell the domain name to
Complainant, constituting further evidence of bad faith.
B. Respondent
Respondent has submitted a one-page Response which does not
specifically address any of the three issues. Rather, Respondent contends
generally that he has owned the domain name for two years and that Complainant
is his direct competitor. Respondent asserts that transferring the name to
Complainant would give Complainant a competitive advantage. Respondent claims
that Complainant failed to register the domain name when it had the
opportunity, i.e., before Respondent
did, and that it belongs to Respondent. Respondent claims that the only domain
name Complainant should be entitled to is
“<directv.com>.”
FINDINGS
The Panel determines that:
1)
the
domain name is identical to or confusingly similar to Complainant’s mark;
2)
Respondent
has no legitimate rights or interest in the mark; and
3)
The
domain name was registered and is being used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
The Panel accepts that Complainant’s mark is
very famous, and was properly trademarked. The domain name is identical to or
confusingly similar to the Complainant’s mark in that it wholly incorporates
the mark. Adding a generic word or term such as “order” does not eliminate the
confusion. See Arthur Guinness Son &
Co. (
Respondent has not attempted to demonstrate
that it is commonly known by the name or that it is engaged in bona fide
offering of goods and services using the name. Indeed, Respondent describes
itself as a competitor of Complainant. Respondent also does not deny that its
website is being used to direct visitors to purchase satellite TV services from
Dish Network, Complainant’s competitor. (No evidence has been presented that
Dish Network is involved, or even aware, of Respondent’s activity in this
regard.) Respondent also does not dispute Complainant’s assertion that
Respondent is not a licensee of Complainant. Because Respondent is not commonly
known by the domain name, is not a licensee of Complainant, and is using the
name to redirect business from Complainant to a competitor, the Panel
determines that Respondent has no rights or legitimate interests in the domain
name. See Computerized Sec. Sys. Inc. v. Hu, FA 157321 (Nat. Arb.
Forum June 23, 2003) (a respondent’s appropriation of complainant’s mark in
order to market products that compete with complainant’s products does not
constitute a bona fide offering of goods and services); see also Fanuc Ltd. v. Machine Control Services, FA 93667 (Nat.
Arb. Forum March 13, 2000) (holding that when respondent does not own a mark,
is not affiliated with complainant, and
has no permission from the complainant to use the mark then respondent has no
rights or legitimate interest in the mark).
Respondent does not dispute that it was aware
of Complainant’s mark when it registered the domain name, that it has used the
domain name to redirect customers to Complainant’s competitors, and that it has
offered to sell the domain name to Complainant. Under these circumstances, the
Panel finds that the domain name was registered and is being used in bad faith.
Respondent’s activity in redirecting visitors to a competitor’s website so that
they may purchase a competing product clearly constitutes a bad faith use of
the domain name. See Surface
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 <orderdirectv.com> domain name be TRANSFERRED
from Respondent to Complainant.
Joel M. Grossman, Panelist
Dated: January 14, 2008
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum