DIRECTV, Inc. v. SEO KINGPIN
Claim Number: FA0704000956507
Complainant is DIRECTV, Inc. (“Complainant”), represented by Evan
Finkel, of Pillsbury Winthrop Shaw Pittman LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <direct-tv-x.com> and <direct-tv-com.com>, registered with Gandi.
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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 9, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 11, 2007.
On April 11, 2007, Gandi confirmed by e-mail to the National Arbitration Forum that the <direct-tv-x.com> and <direct-tv-com.com> domain names are registered with Gandi and that Respondent is the current registrant of the names. Gandi has verified that Respondent is bound by the Gandi 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 April 25, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 15, 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@direct-tv-x.com and postmaster@direct-tv-com.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 21, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <direct-tv-x.com> and <direct-tv-com.com> domain names are confusingly similar to Complainant’s DIRECTV mark.
2. Respondent does not have any rights or legitimate interests in the <direct-tv-x.com> and <direct-tv-com.com> domain names.
3. Respondent registered and used the <direct-tv-x.com> and <direct-tv-com.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, DIRECTV, Inc., holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the DIRECTV mark (i.e., Reg. No. 2,503,432 issued November 6, 2001 and Reg. No. 2,698,197 issued March 18, 2003). Complainant has used the DIRECTV mark in connection with the sale and distribution of its satellite television goods and services. Complainant has provided all-digital, high-power, multi-channel TV programming via satellite dishes under the DIRECTV mark for at least twelve years and currently has over fifteen million customers. Complainant has registered the <directv.com> domain name which it uses in connection with the sale of its satellite television goods and services.
Respondent registered the <direct-tv-x.com> domain name on November 20, 2004 and the <direct-tv-com.com> domain name on November 1, 2004. Respondent has failed to use the disputed domain names. Respondent’s disputed domain names direct Internet users to a blank webpage.
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 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.”).
Respondent’s <direct-tv-x.com> and <direct-tv-com.com> domain
names are confusingly similar to Complainant’s DIRECTV mark as both the
disputed domain names add two hyphens to Complainant’s mark. The Panel finds that the addition of a hyphen
does not alter the mark sufficiently to negate the confusingly similar aspects
of the domain names to the mark under Policy ¶ 4(a)(i). See Sports Auth. Mich.
Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The
addition of a hyphen to Complainant's mark does not create a distinct
characteristic capable of overcoming a Policy ¶ 4(a)(i)
confusingly similar analysis.”); see also Easyjet Airline Co. Ltd. v.
Harding, D2000-0398 (WIPO June 22, 2000) (finding it obvious that the
domain name <easy-jet.net> was virtually identical to the
complainant's EASYJET mark and therefore that they are confusingly similar).
In addition, Respondent’s <direct-tv-x.com> and <direct-tv-com.com> domain names both add the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. Panels have held that the addition of a gTLD is irrelevant in determining if a domain name is confusingly similar to a trademark under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Respondent’s <direct-tv-x.com> and <direct-tv-com.com> domain
names are also confusingly similar as they misspell Complainant’s DIRECTV mark
by adding a “t” to the mark in both domain names and also an “x” to the mark in
the <direct-tv-x.com> domain name.
The Panel finds that the addition of a letter or two letters does not
distinguish Respondent’s domain names sufficiently from Complainant’s mark to
negate a finding of confusing similarity under Policy ¶ 4(a)(i). See Victoria’s Secret v.
Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that,
by misspelling words and adding letters to words, a respondent does not create
a distinct mark but nevertheless renders the domain name confusingly similar to
the complainant’s marks); see also Am. Online, Inc. v. Avrasya Yayincilik
Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding that
the respondent’s domain name, <americanonline.com>, is confusingly
similar to the complainant’s famous
Finally, Respondent’s <direct-tv-com.com> domain name is also confusingly similar to Complainant’s DIRECTV mark because the addition of the generic word “com” does not distinguish the disputed domain from the mark sufficiently to avoid a finding of confusing similarity under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to the complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to the complainant’s mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <direct-tv-x.com> and <direct-tv-com.com> domain names. Respondent’s submission establishes a prima facie case which shifts the burden to Respondent to prove that Respondent has rights or legitimate interests in the mark. 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 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).”).
The Panel assumes Respondent has no rights or legitimate interests here because Respondent has failed to respond to the Complaint. See 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); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). However, the Panel will consider all available evidence to determine whether Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).
Respondent offers no evidence and no evidence exists in the record to indicate that Respondent has made any use of either domain name beyond registering the domain names in November of 2004. In the case of America Online, Inc. v. Kloszewski, the panel found that the respondent had no rights or legitimate interests in the disputed domain name because the respondent had failed to develop and use the website for more than six months after registration. FA 204148 (Nat. Arb. Forum Dec. 4, 2003). The Panel finds that Respondent’s non-use of the domain names for over two years fails to establish 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). See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“Merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.”); see also Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where the respondent made no use of the domain name).
Additionally, the record does not indicate nor has Respondent offered any evidence to show that Respondent is commonly known by the <direct-tv-x.com> and <direct-tv-com.com> domain names. Respondent’s WHOIS information identifies Respondent as “Seo Kingpin.” Therefore, Respondent has failed to establish rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii). See 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.”); see also 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).
Finally, Respondent’s <direct-tv-x.com> and <direct-tv-com.com> domain names add a “t” to Complainant’s DIRECTV mark, a common misspelling of the mark, which constitutes typosquatting. The Panel finds that Respondent’s use of the disputed domain names constitutes typosquatting which is evidence itself that Respondent lacks rights or legitimate interests in the domain names. See Encyclopaedia Britannica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the domain names are misspellings of the complainant's mark); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent has registered the <direct-tv-x.com> and <direct-tv-com.com> domain names but the evidence indicates that Respondent has failed to use the domain names since registration over two years ago. A panel held in Mondich v. Brown that a respondent’s registration of a mark and consequent failure to develop a webpage for two years is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). D2000-0004 (WIPO Feb. 16, 2000). Therefore, the Panel finds that Respondent’s failure to use for over two years the domain names incorporating Complainant’s mark constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that failure to use a domain name permits an inference of registration and use in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s failure to use the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Finally, Respondent’s registration of the <direct-tv-x.com> and <direct-tv-com.com> domain names with a common misspelling of Complainant’s DIRECTV mark constitutes typosquatting which is itself evidence of registration and use in bad faith. See Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith).
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 <direct-tv-x.com> and <direct-tv-com.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: May 29, 2007
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