Complainant is Directv, LLC of El Segundo, California, United States of America, represented by Quinn Emanuel Urquhart & Sullivan, LLP, United States of America.
Respondent is Rensike Ramirez, Dishnetwork of Miami, Florida, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2013. On November 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 3, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 23, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on December 24, 2013.
The Center appointed Michael A. Albert as the sole panelist in this matter on December 31, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant is Directv, LLC, a California-based satellite television services provider with more than thirty million customers in the United States of America (“U.S.”).
Complainant is the owner of the trademark registration for: DIRECTV, a character mark, U.S. Reg. No. 2503432, for telecommunications products in class 9 and clothing in class 25, filed on February 15, 1999 and registered on November 6, 2001.
Complainant is also the owner of the service mark registration for: DIRECTV, a character mark, U.S. Reg. No. 2698197 for telecommunications products in class 9, clothing in class 25, satellite broadcasting in class 38, and television programming in class 41, filed on December 4, 1998 and registered on March 18, 2003.
Complainant is also the owner of the service mark registration for: DIRECTV, a character mark, U.S. Reg. No. 3085552, for direct-to-consumer satellite broadcasting in class 38, filed on July 6, 2005 and registered on April 25, 2006.
The disputed domain name was created on July 30, 2013. 5. Parties’ Contentions A. Complainant
In its Complaint, Complainant alleges:
(i) The disputed domain names is identical or confusingly similar to a mark in which Complainant has rights.
(a) Complainant claims ownership of the trademark and service mark registrations for DIRECTV.
(b) Complainant alleges its mark is famous. It claims advertising efforts promoting the mark dating back to 1994, and business practices that have expanded its customer base, bringing its mark greater renown.
(c) Complainant claims the disputed domain name is confusingly similar to Complainant’s mark. Complainant alleges the disputed domain name includes the entire mark, and adds the generic words “special” and “offers.” Complainant argues these additional words may even add to confusion by suggesting the services offered at the site under the disputed domain name are affiliated or endorsed by Complainant.
(ii) Respondent has no rights or legitimate interests in the disputed domain name.
(a) Complainant alleges Respondent has no rights in the disputed domain name because Respondent has not registered DIRECTV or any similar mark in the U.S. Complainant supports this contention with a screenshot showing a Trademark Electronic Search System (TESS) lookup of marks registered to Respondent revealed none.
(b) Complainant alleges Respondent does not conduct business as “directv special offers” or under any similar name. Complainant further disavows any business relationship with Respondent.
(iii) The disputed domain name was registered and is being used in bad faith.
(a) Complainant claims Respondent’s registration of the disputed domain name incorporating Complainant’s registered mark evidences bad faith registration and use.
(b) Complainant claims Respondent could not but know of Complainant’s mark, given its renown.
(c) Complainant claims Respondent uses the disputed domain name to host a site offering services from one of Complainant’s competitors, demonstrating bad faith registration and use. B. Respondent
Respondent did not reply to Complainant’s allegations. 6. Discussion and Findings A. Standard of Review
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 prove each of the following three elements to obtain an order that the disputed domain name should be transferred: (1) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (2) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (3) the disputed domain name has been registered and is being used in bad faith.
Respondent defaulted in its response. Such default does not award victory to Complainant, who must still carry the above burdens using affirmative evidence. See Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan,WIPO Case No. D2004-0383 (“Respondent’s default does not automatically result in judgment for the Complainant and does not constitute an admission of any pleaded matter”). However, Respondent’s default does mean “asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by the Complainant.” Konstantin Graf Lambsdorff v. Eighty Business Names,WIPO Case No. D2012-2039. B. Identical or Confusingly Similar
It is well established that registering a mark with a trademark authority is one way to demonstrate rights in the mark under Policy paragraph 4(a)(i). See Metropolitan Life Insurance Company v. Robert Bonds, NAF Claim No. 0873143. Complainant is owner of the trademark registration for DIRECTV, a character mark, U.S. Reg. No. 2503432, filed on February 15, 1999 and registered on November 6, 2001; and two service mark registrations for DIRECTV, both character marks, U.S. Reg. No. 2698197, filed on December 4, 1998 and registered on March 18, 2003, and U.S. Reg. No. 3085552, filed on July 6, 2005 and registered on April 25, 2006. Annex C to the Complaint. These registrations evidence Complainant’s use of the mark in commerce since the 1990s. Complainant’s use and registration predate creation of the disputed domain name on July 30, 2013. Accordingly, the Panel finds Complainant exhibits its rights in the DIRECTV mark.
The 4(a)(i) inquiry now turns to whether the disputed domain name is identical or confusingly similar to Complainant’s mark. The disputed domain name incorporates three elements - (1) the word “directv,” (2) the words “special” and “offers,” and (3) the generic top-level domain (“gTLD”) “.com.” The disputed domain name is not identical to Complainant’s mark because it incorporates the additional words “special” and “offers.”
The disputed domain name may still be confusingly similar to Complainant’s mark because it includes the word “directv.” The test for confusing similarity begins with a comparison of the domain name with the mark “[i]n terms of sight and sound.” Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698. This test does not question whether the goods or services offered under the mark are similar or different from those offered at the site to which the domain resolves. See Id. (“The use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark”).
Although Complainant’s DIRECTV mark makes up only one third of the disputed domain name, its inclusion, in its entirety, is enough to render confusing similarity. See SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L.,WIPO Case No. D2008-0792 (“[confusing] similarity is established whenever a mark is incorporated in its entirety, regardless of other terms added to the domain name”). It is well established that adding descriptive or generic words onto a mark still renders a domain name confusingly similar to the mark.1 See Id. (finding confusing similarity between the domain name and the complainant’s MYHOSTING mark, even though the domain name added the word “free”); Philip Morris USA Inc. v. Jesse Beck,WIPO Case No. D2013-1087 (finding confusing similarity between the domain name and the complainant’s MARLBORO mark, even though the domain name added the “generic descriptive” word “team”); Tommy Bahama Group, Inc. v. Private Whois ,WIPO Case No. D2012-0197 (finding confusing similarity between the domain name and the complainant’s TOMMY BAHAMA mark, even though the domain name added the descriptive word “outlet”).
The disputed domain name includes Complainant’s mark in its entirety. The additional words “special offers” are descriptive or generic terms, and fail to detract from confusing similarity between the mark and the disputed domain name. For that foregoing reason, the Panel finds the disputed domain name is confusingly similar to the mark in which Complainant has rights. C. Rights or Legitimate Interests
Complainant must make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy, paragraph 4(a)(ii). The burden of production then shifts to Respondent to show it has rights or legitimate interests in the disputed domain name. See Hanna-Barbera Productions., Inc. v. Entertainment Commentaries, NAF Claim No. 0741828. Complainant’s burden on this element is not high, “[b]ecause it is difficult to produce evidence to support a negative statement.” Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415. Respondent’s failure to file a response creates a presumption that it lacks rights or legitimate interests. See adidas AG and adidas America, Inc. v. Taranga Services Pty Ltd c/o Domain Admin, NAF Claim No. 1329851; American Express Company v. Fang Suhendro a/k/a American Express Indonesia, NAF Claim No. 129120.
Under Policy, paragraph 4(c), Respondent may demonstrate its rights or legitimate interests in the disputed domain name by showing that: (i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; (ii) Respondent has been commonly known by the disputed domain name, even if no trademark or service mark rights have been acquired; or (iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish Complainant’s trademark.
Complainant asserts Respondent is using the disputed domain name to host a site advertising the goods and services of Dish Network, one of Complainant’s primary competitors. Complainant provides a screenshot of the site to which the disputed domain name resolves, at which appear Spanish advertisements for Dish Network television services.
When a respondent links a domain to a site that offers goods and services that compete with the business of a complainant, in general the respondent is not making bona fide offerings through the domain name. See Global Rental Co., Inc. v. Truck Sales, NAF Claim No. 1498509 (finding a domain name advertising the same types of trucks as those of the complainant was not being used to make bona fide offerings); Computerized Security Systems, Inc. d/b/a SAFLOK v. Bennie Hu, NAF Claim No. 0157321 (finding a domain name selling electronic locks similar to those offered by the complainant was not being used to make bona fide offerings). Since the disputed domain name resolves to a site advertising television services similar to Complainant’s, Respondent is not using the site to make bona fide offerings under 4(c)(i).2
Complainant asserts Respondent has never done business under the name “Directv Special Offers.” Complainant also states it never authorized Respondent to use the DIRECTV mark. The WhoIs registration lookup shows the disputed domain name is registered to Respondent, acting for the “DISHNETWORK” organization. Annex A to the Complaint. Nothing in Respondent’s registration suggests any affiliation with any entity bearing the name “Directv.” Complainant also demonstrates Respondent has no intellectual property rights in that name. Annex D to the Complaint. The Panel finds this unchallenged evidence further demonstrates Respondent lacks rights or interests in the disputed domain name under 4(c)(ii).
The record shows the disputed domain name resolves to a site advertising commercial goods and services. Annex E to the Complaint. Therefore, Respondent is not making legitimate noncommercial use of the disputed domain name under 4(c)(iii).
Many UDRP panels have also held that using domains in ways that compete with a complainant is neither bona fide use, nor fair use. See Getty Images (US), Inc. and its subsidiary Istockphoto LP v. A Domain Privacy, NAF Claim No. 1489476; H-D Michigan Inc. v. Kathleen Buell d/b/a Pre-owned Harleys a/k/a N/A:1ksnq1qs, NAF Claim No. 1106640; Expedia, Inc. v. Compaid, NAF Claim No. 0520654. Respondent is using the disputed domain to television goods and services that compete with Complainant’s business; such activity fails to qualify as legitimate fair use under 4(c)(iii).
For the foregoing reasons, the Panel finds Respondent does not have rights or legitimate interests in the disputed domain name. D. Registered and Used in Bad Faith
Whether a domain name was registered and used in bad faith may be determined by evaluating four (non-exhaustive) circumstances set forth in paragraph 4(b) of the Policy: (i) circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.
Regarding the requirements of 4(b)(i), there is no evidence that Respondent made commercial offerings of the disputed domain name to Complainant or to any third parties. As such, the Panel holds the evidence insufficient to find bad faith use or registration under this category.
Regarding the requirements of 4(b)(ii), Complainant does not offer evidence that Respondent engaged in a pattern of abusive domain registrations. As such, the Panel holds the evidence insufficient to find bad faith use or registration under this category. Regarding the requirements of 4(b)(iii), a domain name incorporating a mark which is famous and “obviously connected” to a complainant demonstrates opportunistic bad faith use and registration by a respondent. Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse,WIPO Case No. D2000-1221; see also Iconix Brand Group, Inc. v. Staple Design c/o Jeff Ng, NAF Claim No. 1446843 (finding opportunistic bad faith registration and use of the domain because it incorporated the STARTER mark, which was “obviously” connected to the complainant). Complainant has strong rights in the DIRECTV mark by virtue of its U.S. federal trademark registrations, its long use of the mark in commerce, and its large customer base. Its connection to the mark is therefore obvious. Respondent’s registration and use of the disputed domain name incorporating the DIRECTV mark consequently proves bad faith under 4(b)(iii).3
Respondent’s use of the disputed domain name to advertise goods and services that compete with those of Complainant shows bad faith registration and use under 4(b)(iii), as well. See Disney Enterprises, Inc. v. Nicolas Noel, NAF Claim No. 0198805 (finding it proper to infer registration and use of a site for the bad faith purpose of harming a complainant’s business where the domain linked to the site of one of the complainant’s competitors). Accordingly, the Panel finds Complainant demonstrates Respondent registered and is using the disputed domain name in bad faith under 4(b)(iii).
Complainant also proves Respondent registered and is using the disputed domain name in bad faith under 4(b)(iv) by showing the site under the disputed domain name advertises goods and services that compete with those offered by Complainant. See Jardine Motors Group Holdings Limited v. Zung Fu Kuen,WIPO Case No. D2004-0168 (finding a domain name incorporating the complainant’s mark, but which redirected to the URL of a competitor, evidenced bad faith under 4(b)(iv)); State Farm Mutual Automobile Insurance Company v. Douglas LaFaive, NAF Claim No. 0095407 (“[d]iverting Internet users, for commercial gain, to another web site by creating a likelihood of confusion with the [c]omplainant’s mark is evidence of registration and use in bad faith”); Luck's Music Library v. Stellar Artist Management., NAF Claim No. 0095650 (finding bad faith where the respondent used a domain name to advertise music services similar to those offered by the complainant).
For the foregoing reasons, the Panel finds Respondent registered and is using the disputed domain name in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Michael A. Albert
Sole Panelist
Date: January 15, 2014
1 The addition of the gTLD “.com” generally has no bearing on analyzing confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 (finding the domain name confusingly similar to the TAMIFLU mark, despite the addition of a gTLD and descriptive words).
2 Since Respondent failed to respond, Complainant’s affirmative evidence that the disputed domain name is used to advertise Dish Network’s services is taken as true. Whether the site actually links to Dish Network is not determinative. See Jerry Damson, Inc. v. Tex. International Property Associates, NAF Claim No. 0916991 (finding a site with hyperlinks to various third-party websites, some of which “might” have competed with the complainant’s business, was not making bona fide offerings or legitimate non-commercial or fair use of the domain).
3 Complainant’s mark is famous enough to infer Respondent had constructive knowledge of its existence, especially in light of Respondent’s failure to contest such knowledge. See American Funds Distributors, Inc. v. Domain Administration Limited,WIPO Case No. D2007-0950 (“If the original registrant did not have actual knowledge of the Complainant’s AMERICAN FUNDS trademark, then the extensive prior use of that name and the fact that it comprises the dominant part of several U.S. registered trademarks provided constructive knowledge of the Complainant’s trademark rights in AMERICAN FUNDS”).
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