DIRECTV, Inc. v. Terrawire
Claim Number: FA0612000876283
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 <directvtitanium.com>, registered with Go Daddy Software, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 22, 2006; the National Arbitration Forum received a hard copy of the Complaint on December 27, 2006.
On December 27, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <directvtitanium.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 January 3, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 23, 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@directvtitanium.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 30, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <directvtitanium.com> domain name is confusingly similar to Complainant’s DIRECTTV and TITANIUM PACKAGE marks.
2. Respondent does not have any rights or legitimate interests in the <directvtitanium.com> domain name.
3. Respondent registered and used the <directvtitanium.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, DirecTV, Inc., is a leading satellite television provider, digital television service provider and multi-channel video program distributor. Complainant holds registrations with the United States Patent and Trademark Office (“USPTO”) for the DIRECTV mark (Reg. No. 2,503,432 issued November 6, 2001; Reg. No. 2,698,197 issued March 18, 2003). Complainant began using the TITANIUM PACKAGE mark in connection with its business in June 2006 and has applied to the USPTO for registration of the mark (App. No. 78/958,441 filed February 23, 2006). Complainant’s use of the TITANIUM PACKAGE mark is illustrated in online articles, magazine articles, and other advertising.
Respondent registered the <directvtitanium.com> domain name on May 22, 2006. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website featuring links to third-party websites. Some of the links redirect Internet users to direct competitors of Complainant, DISH Network, for example, while others redirect Internet users to websites unrelated to Complainant, such as eBay.
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.
The Panel finds that Complainant has established rights in the DIRECTV mark pursuant to Policy ¶ 4(a)(i) based on Complainant’s USPTO registration of the mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”). Regarding the TITANIUM PACKAGE mark, the Panel is aware that registration of a mark is not necessary to establish rights in the mark pursuant to the Policy. Common law rights may also satisfy the requirements of Policy ¶ 4(a)(i). See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks.”). The Panel finds that Complainant has established common law rights in the TITANIUM PACKAGE mark through continuous and extensive use of the mark and through the establishment of secondary meaning in the mark, as demonstrated by the articles submitted by Complainant. Thus, the Panel finds that Complainant has rights in the TITANIUM PACKAGE mark under Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark).
Respondent’s <directvtitanium.com>
domain name is confusingly similar to Complainant’s DIRECTV and TITANIUM
PACKAGE marks. The disputed domain name
includes Complainant’s DIRECTV mark in its entirety. The disputed domain name also includes the
word “titanium,” which is a significant part of Complainant’s TITANIUM PACKAGE
mark. Further, as the word “titanium” is
used by Complainant in its TITANIUM PACKAGE mark to describe a service provided
by Complainant, the disputed domain name is potentially confusing to Internet
users as it appears to provide information about a particular service offered
by Complainant. The Panel finds that the
disputed domain name is confusingly similar to Complainant’s marks. See Oki Data Ams., Inc. v. ASD, Inc.,
D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly
incorporates a Complainant’s registered mark is sufficient to establish
identity [sic] or confusing similarity for purposes of the Policy despite the
addition of other words to such marks.”); see also Nintendo of Am. Inc. v.
Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity
where respondent combined the complainant’s POKEMON and PIKACHU marks to form
the <pokemonpikachu.com> domain name).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant’s assertion establishes a prima facie case for purposes of the Policy and shifts the burden to Respondent to demonstrate that it does have rights or legitimate interest in the disputed domain name as contemplated by Policy ¶ 4(a)(ii). Respondent did not submit a Response in this proceeding, thus failing to avail itself of the opportunity to present the Panel with evidence and argument in support of its rights or legitimate interests. Despite the Panel’s inclination to view Respondent’s failure to submit a response as evidence that Respondent lacks rights or legitimate interests in the disputed domain name, the Panel will evaluate the available evidence to determine whether Respondent does have rights or legitimate interests as outlined in Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue.”); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
Respondent is using the disputed domain name to redirect Internet users to Respondent’s website which features links to third-party websites. Respondent is presumably receiving pay-per-click referral fees from these posted links. The Panel finds that such use is neither a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use as outlined by Policy ¶ 4(c)(iii). See Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
There is no available evidence that
Respondent is commonly known by the <directvtitanium.com>
domain name. Respondent’s WHOIS
information identifies Respondent as “Terrawire,” a name with no obvious
relationship to the disputed domain name.
The Panel finds that Respondent is not commonly known by the disputed
domain name as contemplated by Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee
Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am.
W. Airlines, Inc. v. Paik, FA 206396 (Nat.
Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name
under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration
information, Respondent is not commonly known by the [<awvacations.com>]
domain name.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the disputed domain name to redirect Internet users to its website composed of links to third-party websites. Many of the links on Respondent’s website are to direct competitors of Complainant, including DISH Network. Internet users seeking genuine information about Complainant’s goods and services may find themselves redirected to Respondent’s website through the disputed domain name and once there, may follow the third-party links and do business with Complainant’s competitors. The Panel finds that such use disrupts Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent’s <directvtitanium.com>
domain name is confusingly similar to Complainant’s DIRECTV and TITANIUM
PACKAGE marks. Internet users seeking
Complainant online may instead find themselves redirected to Respondent’s
website. Because of Respondent’s use of
Complainant’s marks in its domain name, Internet users may mistakenly believe
that Complainant sponsors Respondent’s website.
Respondent is presumably profiting from this confusion by collecting
pay-per-click fees from the third-party links on its website. The Panel finds that such use is evidence of
bad faith registration and use pursuant to Policy ¶ 4(iv). See Associated
Newspapers Ltd. v. Domain Manager, FA
201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”); 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).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <directvtitanium.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 9, 2007
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