DIRECTV, Inc. v. Private Private
Claim Number: FA0702000912456
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 <www-direct-tv.com>, registered with Go Daddy Software, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically February 7, 2007; the National Arbitration Forum received a hard copy of the Complaint February 12, 2007.
On February 8, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <www-direct-tv.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 15, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 7, 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@www-direct-tv.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 13, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <www-direct-tv.com>, is confusingly similar to Complainant’s DIRECTV mark.
2. Respondent has no rights to or legitimate interests in the <www-direct-tv.com> domain name.
3. Respondent registered and used the <www-direct-tv.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, DIRECTV, Inc.,
is a leading provider of satellite television, digital television, and
multi-channel video programming distribution.
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).
Respondent, Private Private,
registered the <www-direct-tv.com>
domain name August 4, 2004. When
contacted by Complainant, Respondent stated that he has used the domain name to
promote Complainant’s goods and services.
Respondent then offered to sell the domain name to Complainant for
$5,000. As of February 2007, the <www-direct-tv.com> domain name
redirects users to Complainant’s website, which constitutes “parking” the
domain.
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 will draw such inferences as the Panel 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 Complainant to 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 established using extrinsic evidence in this
proceeding that it has legal rights in the DIRECTV mark pursuant to Policy ¶ 4(a)(i) through its
registration of the mark with the USPTO.
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 Vivendi Universal Games v. XBNetVentures Inc.,
FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark
registrations establish Complainant's rights in the BLIZZARD mark.”).
The disputed domain name that Respondent registered, <www-direct-tv.com>, is confusingly similar to Complainant’s DIRECTV mark. The disputed domain name contains Complainant’s mark in its entirety and merely places “www” and a hyphen at the beginning of the domain name. Use of “www hyphen” is merely a slight alteration of the customary “www dot” prefix that is found on most domain names. The Panel finds that the use of the “www hyphen” prefix does not sufficiently distinguish the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Sony Kabushiki Kaisha v. EOS1/EOS1, Inc., FA 493110 (Nat. Arb. Forum July 15, 2005) (finding the <www-sony.com> domain name to be confusing similar to the SONY mark); see also Amazon.com v. J J Domains, FA 514939 (Nat. Arb. Forum Sept. 2, 2005) (finding that the <www-amazon.com> domain name is confusingly similar to the AMAZON mark).
In addition, the disputed domain name contains Complainant’s mark in its entirety and merely inserts a hyphen and the letter “t,” a common misspelling of Complainant’s mark. The Panel also finds that a common misspelling of Complainant’s mark is insufficient to distinguish the disputed domain name from the Complainant’s mark under Policy ¶ 4(a)(i). See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such “generic” typos do not change respondent’s infringement on a core trademark held by the complainant); see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain names <tdwatergouse.com> and <dwaterhouse.com> are virtually identical to the complainant’s TD WATERHOUSE name and mark).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain name. Complainant alleges here that Respondent has no rights to or legitimate interests in the <www-direct-tv.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Because Respondent failed to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).
Complainant also asserts that Respondent is not authorized to use Complainant’s DIRECTV mark. Furthermore, the documents in the record, including Respondent’s WHOIS information, suggest that Respondent is not commonly known by the <www-direct-tv.com> domain name; and for these reasons, the Panel finds that Respondent is not commonly known by the disputed domain name under 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.”).
In addition, Respondent offered to sell the disputed domain name to Complainant for an amount significantly greater than expected costs of registration. The Panel finds this is further evidence that Respondent lacks rights and legitimate interests in the <www-direct-tv.com> domain name under Policy ¶ 4(a)(ii). See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
The Panel finds that Complainant satisfied Policy ¶
4(a)(ii).
Complainant also alleges that Respondent acted in bad faith
in registering and using a domain name that contains in its entirety
Complainant’s protected mark. Before
Respondent offered to sell the domain name to Complainant for $5,000.,
Respondent stated that he has used the domain name to promote Complainant’s
goods and services. This admission by
Respondent supports an inference that Respondent registered the <www-direct-tv.com> domain name with
full knowledge of Complainant’s rights in the mark and precisely because
goodwill and value attaches to Complainant’s mark. This evidence is sufficient to support
findings that Respondent registered and used Complainant’s protected mark in a
domain name in bad faith, pursuant to Policy ¶ 4(a)(iii). See
The Panel finds that Complainant 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 <www-direct-tv.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 22, 2007.
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