DIRECTV, Inc. v. Deng Zhen
Claim Number: FA0610000811688
Complainant is DIRECTV, Inc. (“Complainant”), represented by Evan Finkel, of Pillsbury Winthrop Shaw Pittman LLP, 725 S. Figueroa St., Suite 2800, Los Angeles, CA 90036. Respondent is Deng Zhen (“Respondent”), Maidi Road Lane 1, Huizhou, Guangdong 516001, China.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <directtv.net>, registered with Stargate Holdings Corp.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 2, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 4, 2006.
On October 4, 2006, Stargate Holdings Corp. confirmed by e-mail to the National Arbitration Forum that the <directtv.net> domain name is registered with Stargate Holdings Corp. and that Respondent is the current registrant of the name. Stargate Holdings Corp. has verified that Respondent is bound by the Stargate Holdings Corp. 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 October 6, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 26, 2006 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@directtv.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 2, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <directtv.net> domain name is confusingly similar to Complainant’s DIRECTV mark.
2. Respondent does not have any rights or legitimate interests in the <directtv.net> domain name.
3. Respondent registered and used the <directtv.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, DIRECTV, Inc., has been providing satellite television services to customers in the United States for over twelve years. Complainant has over fifteen million customers, making it the leading digital television service provider and one of the three largest providers in the multi-channel video programming industry. Complainant promotes its television services at the <directv.com> domain name, which has averaged over 5.2 million visits per month for the past two years.
Complainant holds trademark registrations for the DIRECTV mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,503,432 issued November 6, 2001, filed February 15, 1999; Reg. No. 2,698,197 issued March 18, 2003, filed December 4, 1998).
Respondent’s <directtv.net> domain name, which it registered on March 7, 2000, does not resolve to an active website.
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."
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.”).
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.
Complainant has established rights in the DIRECTV mark
through registration of the mark with the USPTO. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr.
26, 2006) (finding that the complainant had established rights in the PENTIUM,
CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see
also Miller Brewing Co. v. The Miller Family, FA 104177 (Nat. Arb. Forum
Apr. 15, 2002) (finding that the complainant had established rights to the
MILLER TIME mark through its federal trademark registrations).
Respondent’s <directtv.net> domain name
contains Complainant’s entire mark and merely inserts an extra “t,” a common
misspelling of Complainant’s mark. In Compaq Info. Techs. Group, L.P. v.
Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002), the respondent
registered the <compq.com> domain name, and the panel found it to be
confusingly similar to the complainant’s COMPAQ mark because a small change
that resulted in a misspelling of the mark did not diminish the confusing similarity
between the mark and the domain name.
Likewise, the panel in Intelius, Inc. v. Kim Sang Hyn, FA 703175
(Nat. Arb. Forum Jul. 5, 2006) also found that a domain name differing from the
complainant’s mark by one letter was confusingly similar. As a result, the Panel finds that Respondent
has failed to sufficiently distinguish the disputed domain name from
Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant claims that Respondent lacks rights and
legitimate interests in the <directtv.net>
domain name. Complainant must
first make a prima facie case in support of its allegations, and then
the burden shifts to Respondent to show it does have rights or legitimate
interests pursuant to Policy ¶ 4(a)(ii).
See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct.
1, 2002) (“Because Complainant’s Submission constitutes a prima facie case
under the Policy, the burden effectively shifts to Respondent. Respondent’s
failure to respond means that Respondent has not presented any circumstances
that would promote its rights or legitimate interests in the subject domain
name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has
asserted that the respondent has no rights or legitimate interests with respect
to the domain name, it is incumbent on the respondent to come forward with
concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <directtv.net> domain name. See Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where the respondent fails to respond); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June
20, 2000) (“By not submitting a response, Respondent has failed to invoke any
circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any
rights or legitimate interests in the domain name.”). However, the Panel will now examine the
record to determine if Respondent has rights or legitimate interests under
Policy ¶ 4(c).
Respondent has registered the domain name under the name “Deng
Zhen,” and there is no other evidence in the record suggesting that Respondent
is commonly known by the <directtv.net> domain
name. Thus, Respondent has not
established rights or legitimate interests in the <directtv.net>
domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v.
Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that
the respondent does not have rights in a domain name when the respondent is not
known by the mark); see also Wells Fargo & Co.
v. Onlyne Corp. Services11, Inc., FA
198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information
for the disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Furthermore, Respondent’s <directtv.net>
domain name, which is confusingly similar to Complainant’s DIRECTV mark,
does not resolve to any content.
Because Respondent has not used the disputed domain name for any purpose
since registering it six years ago, the Panel finds that Respondent is not
using the disputed domain name in connection with 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).
See Pharmacia & Upjohn
AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or
legitimate interests where the respondent failed to submit a response to the
complaint and had made no use of the domain name in question); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (concluding that
a respondent’s failure to use a domain name does not establish rights or
legitimate interests pursuant to Policy ¶ 4(a)(ii)).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is not
using the <directtv.net> domain name, and has not provided any
demonstrable preparations to use the disputed domain name. Therefore, Respondent’s non-use of the
disputed domain name since the year 2000 constitutes bad faith registration and
use under Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use can constitute use in bad
faith); see also Disney Enterprises Inc. v. Meyers, FA 697818 (Nat. Arb.
Forum June 26, 2006) (holding that the non-use of a disputed domain name for
several years constitutes bad faith registration and use under Policy ¶
4(a)(iii).
Moreover, Respondent has engaged in typosquatting, because Internet users seeking Complainant’s products and services under the DIRECTV mark who mistakenly enter an extra “t” resolve to Respondent’s website. Therefore, Respondent has registered and used the <directtv.net> domain name to take advantage of Internet user’s typographical errors, and such typosquatting constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)); see also K.R. USA, INC. v. SO SO DOMAINS, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the respondent’s registration and use of the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names capitalized on the typographical error of Internet users seeking the complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)).
The Panel concludes that 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 <directtv.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 14, 2006
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