DIRECTV, LLC v. michal restl c/o Dynadot
Claim Number: FA1805001788826
Complainant is DIRECTV, LLC (“Complainant”), represented by Rob LeBlanc of Haynes and Boone, LLP, Texas, USA. Respondent is michal restl c/o Dynadot (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <directvgo.com>, registered with Dynadot, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 25, 2018; the Forum received payment on May 25, 2018.
On May 30, 2018, Dynadot, LLC confirmed by e-mail to the Forum that the <directvgo.com> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 30, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 19, 2018 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@directvgo.com. Also on May 30, 2018, 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 Forum transmitted to the parties a Notification of Respondent Default.
On June 25, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
1. Complainant, Directv, LLC., is a leading provider of digital television entertainment services. Complainant uses the DIRECTV mark to provide and market its services. Complainant has rights in the mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,503,432, registered Nov. 6, 2001).
2. Respondent’s <directvgo.com>[i] is confusingly similar to Complainant’s DIRECTV mark as it incorporates the mark in its entirety, merely adding the generic term “go”, and the non-distinctive generic top-level domain (“gTLD”) “.com.”
3. Respondent does not have rights or legitimate interests <directvgo.com> domain name. Respondent is not permitted or licensed to use Complainant’s DIRECTV mark and is not commonly known by the domain name.
4. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the <directvgo.com> domain name to host advertising links to commercial websites unrelated to Complainant or that links connect back to Complainant’s website.
5. Respondent has registered and is using the domain name in bad faith. Respondent is offering the <directvgo.com> domain name for sale. In addition, Respondent has engaged in a pattern of bad faith registration and use, evidenced by its participation in eleven previous UDRP proceedings.
6. Further, Respondent attempts to attract users to the domain name for commercial gain by using the <directvgo.com> domain name to host third party advertisements. Such use disrupts Complainant’s business.
7. Finally, Respondent must have had actual knowledge of Complainant’s rights in the DIRECTV mark prior to registering the <directvgo.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the DIRECTV mark. Respondent’s domain name is confusingly similar to Complainant’s DIRECTV mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <directvgo.com> domain name and that Respondent registered and uses the domain name in bad faith.
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(f), 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 (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.”).
Complainant has rights in the DIRECTV mark based upon its registration with the USPTO (e.g., Reg. No. 2,503,432, registered Nov. 6, 2001). Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015). Therefore, the Panel holds that Complainant has rights in the DIRECTV mark per Policy ¶ 4(a)(i).
Complainant asserts that the <directvgo.com> domain name is confusingly similar to the DIRECTV mark as it contains the mark in its entirety, adding the generic term “go”, as well as the gTLD “.com.” Slight differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark, do not distinguish the domain name from the mark incorporated therein. See Traditional Medicinals, Inc. v. Flippa Chick, FA1006001328702 (Forum July 15, 2010) (“The Panel finds that the addition of descriptive terms creates a confusing similarity between the disputed domain name and Complainant’s mark.”). Similarly, the addition of a gTLD is irrelevant in determining whether the disputed domain name is confusingly similar. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel agrees with Complainant and finds that the <directvgo.com> domain name does not contain changes that would sufficiently distinguish it from the DIRECTV mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <directvgo.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in <directvgo.com> as Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the DIRECTV mark in any way. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). Additionally, a lack of evidence in the record to indicate a respondent is authorized to use a complainant’s mark may support a finding that Respondent does not have rights or legitimate interests in the domain name per Policy ¶ 4(c)(ii). See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record identifies Respondent as “michal restl c/o Dynadot s” The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the <directvgo.com> domain name.
Complainant further argues Respondent fails to use the <directvgo.com> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Complainant has provided evidence that Respondent uses the domain name in conjunction with a website that contains advertising links to commercial websites unrelated to Complainant, or that redirects users back to Complainant’s own website. Such use is further evidence that the Respondent lacks rights and legitimate interests under Policy ¶¶ 4(c)(i) & (iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”); see also Better Existence with HIV v. AAA, FA 1363660 (Forum Jan. 25, 2011) (finding that “even though the disputed domain name still resolves to Complainant’s own website, Respondent’s registration of the disputed domain name in its own name fails to create any rights or legitimate interests in Respondent associated with the disputed domain name under Policy ¶ 4(a)(ii)”). Therefore, the Panel agrees that Respondent fails to use <directvgo.com> in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has registered and uses the <directvgo.com> domain name in bad faith because Respondent uses it to solicit offers to sell the domain name. This is evidence of bad faith per Policy ¶ 4(b)(i). See Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”). The <directvgo.com> domain name redirects users to a third party website, it first states, via a link, that the <directvgo.com> domain name may be for sale. If the link is clicked, users are redirected to a page that states, “The owner of Directvgo.com has chosen to receive offer inquiries regarding this domain name.” Therefore, the Panel holds that Respondent registered and uses the domain name in bad faith per Policy ¶ 4(b)(i).
Next, Complainant contends that Respondent has a pattern of bad faith registration and use. Evidence of a respondent’s previous UDRP decisions may support a finding of bad faith registration and use per Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (a pattern of bad faith registration and use of domain names is evidence of bad faith registration and use of domain names under Policy ¶ 4(b)(ii)). The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).
Finally, Complainant argues that Respondent registered the <directvgo.com> domain name with actual knowledge of Complainant’s mark. Actual knowledge of a complainant’s rights in a mark may be proven through a totality of circumstances surrounding the registration of the domain name. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”). Given the global reach of the Internet, and the fact that Complainant and its mark are widely known, Respondent must have been aware of Complainant when it registered the domain name. Thus, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the DIRECTV mark when it registered the <directvgo.com> domain name, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <directvgo.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 5, 2018
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