DECISION

 

Primestream Corporation v. Domain Administrator / Site Matrix, LLC

Claim Number: FA2005001897151

 

PARTIES

Complainant is Primestream Corporation (“Complainant”), represented by Sarah M. Stemer of Lerner Greenberg Stemer LLP, Florida, USA. Respondent is Domain Administrator / Site Matrix, LLC (“Respondent”), New Mexico, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <primestreamtv.com>, registered with GoDaddy.com, 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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on May 20, 2020; the Forum received payment on May 20, 2020.

 

On May 21, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <primestreamtv.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 26, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 15, 2020 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@primestreamtv.com.  Also on May 26, 2020, 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 22, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

PRELIMINARY ISSUE: CONSENT TO TRANSFER

The Forum was copied on documentation submitted from Respondent’s representative to Complainant, which is identified in this proceeding as “Other Correspondence.”  In this document, Respondent purports to consent to the transfer of the <primestreamtv.com> domain name. The Panel notes that it is under no obligation to acknowledge any such documents. 

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant, Primestream Corporation, is a provider of digital asset management, workflow orchestration, and automation solutions for media and production. Complainant has rights in the PRIMESTREAM mark based upon registration with the United States Patent and Trademark Office

(“USPTO”) (e.g., Reg. No. 3,365,288, registered Jan. 8, 2008). See Amend. Compl. Ex. 5. Respondent’s <primestreamtv.com> domain name is identical or confusingly similar to Complainant’s PRIMESTREAM mark.

 

2.    Respondent does not have rights or legitimate interests in the <primestreamtv.com> domain name. Respondent registered the disputed domain name long after Complainant begin using the PRIMESTREAM mark. Additionally, Respondent uses the disputed domain name to claim association with Complainant and sell competing services.

 

3.    Respondent registered and uses the <primestreamtv.com> domain name in bad faith. Respondent attempts to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.

 

B.   Respondent

1.    Respondent did not submit a response.

 

FINDINGS

1.    Respondent’s <primestreamtv.com> domain name is confusingly similar to Complainant’s PRIMESTREAM mark.

 

2.    Respondent does not have any rights or legitimate interests in the <primestreamtv.com> domain name.

 

3.    Respondent registered or used the <primestreamtv.com> domain name in bad faith.

 

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(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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

 

Identical and/or Confusingly Similar

Complainant asserts rights in the PRIMESTREAM mark based upon registration with the USPTO. Registration of a mark with the USPTO is generally sufficient to establish rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of registration of the PRIMESTREAM mark with the USPTO (e.g., Reg. No. 3,365,288, registered Jan. 8, 2008). See Amend. Compl. Ex. 5.

 

Complainant argues that Respondent’s <primestreamtv.com> domain name is identical or confusingly similar to Complainant’s PRIMESTREAM mark. While not specifically argued by complainant, the Panel notes that the only differences between the disputed domain name and the mark are the additions of the term “tv” and the “.com” generic top-level domain (“gTLD”). Addition of generic and/or descriptive terms and a gTLD to a mark does not negate confusing similarity under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Complainant also claims that the disputed domain name is confusingly similar to Complainant’s <primestream.com> domain name. The Panel agrees with Complainant and finds that the disputed domain name is identical or confusingly similar to the PRIMESTREAM mark under 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

 

Complainant argues that Respondent does not have rights or legitimate interests in the <primestreamtv.com> domain name since Respondent uses the disputed domain name to claim association with Complainant and sell competing services. Use of a disputed domain name to offer competing goods and/or services is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant claims that Respondent identifies itself as being associated with Complainant and purports to sell TV streaming services at the disputed domain. Complainant provides a screenshot of the main page of Respondent’s website. See Amend. Compl. Ex. 6. The Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

 

Registration and Use in Bad Faith

Complainant argues that Respondent registered and uses the <primestreamtv.com> domain name in bad faith since Respondent uses the confusingly similar domain name to attract Internet users to its website for commercial gain. Use of a disputed domain name to offer competing goods and/or services may evidence bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). Complainant provides a screenshot of Respondent’s webpage and notes the prominent use of the PRIMESTREAM mark as well as the purported sale of similar services. See Amend. Compl. Ex. 6. Thus, the Panel agrees with Complainant and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).

 

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

 

 

John J. Upchurch, Panelist

Dated:  July 6, 2020