The Complainant is Directv, LLC of El Segundo, California, United States of America (“US”), represented by Quinn Emanuel Urquhart & Sullivan, LLP, US.
The Respondent is Igor Petrenko of Saint-Petersburg, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with Domus Enterprises LLC dba DOMUS (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2014. On August 4, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 8, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 15, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed amended Complaints on August 18 and 27, 2014.
The Center verified that the Complaint together with the amended Complaints 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 the Respondent of the Complaint, and the proceedings commenced on August 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 17, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 18, 2014.
The Center appointed James McNeish Innes as the sole panelist in this matter on September 23, 2014. 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
The Complainant is a provider of digital satellite television services to over 50 million customers in the United States. It has expended time, effort and money in advertising, promoting and marketing its products and services since 1994. It has multiple registrations for DIRECTV as its trademark and service mark on the Principal Register of the United States Patent and Trademark Office (e.g., registration no. 2,698,197 of March 18, 2003). The Respondent registered the disputed domain name on October 4, 2012.
The website at the disputed domain name resolves to a pay-per-click page. 5. Parties’ Contentions A. Complainant
(i) The disputed domain name is confusingly similar to the Complainant’s trademark, as it incorporates the mark entirely and merely adds the geographic term “argentina.” Where the disputed domain name contains the identical mark combined with a geographic location, the domain name is confusingly similar to complainant’s trademark because it suggests that the domain name is that of the trademark holder’s operations in that geographic location. Wal-Mart Stores, Inc. v. Lars Stork,WIPO Case No. D2000-0628 (finding confusingly similar to WAL-MART trademark); Inter-IKEA Systems B.V. v. Evezon Co. Ltd.,WIPO Case No. D2000-0437 (finding confusingly similar to IKEA trademark).
(ii) As a consequence, the disputed domain name composed of the DIRECTV mark and the geographic term “argentina” is confusingly similar to the DIRECTV trademark in which the Complainant has rights.
(iii) To the best of the Complainant’s knowledge, the actual registrant Igor Petrenko holds no intellectual property rights over any mark that contains the term “directv.” The Complainant has not authorized any third party to identify itself to the public as DIRECTV or use the DIRECTV trademark in a domain name.
(iv) Finally, to the best of the Complainant’s knowledge, there is no evidence that the actual registrant Igor Petrenko, or any business he is affiliated with, is commonly known by the disputed domain name.
(v) The Complainant has not authorized anyone to register and use the disputed domain name. Accordingly, to the best of the Complainant’s knowledge the actual registrant has no rights or legitimate interests in the disputed domain name.
(vi) The Complainant has invested tremendous time, effort and expense in establishing the DIRECTV trademark and in making it famous. The registration of a domain name confusingly similar to the mark by the actual registrant, an entity with no relationship whatsoever to that mark, is sufficient evidence of bad faith registration and use. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107 (citing Centurion Bank of Punjab Limited v. West Coast Consulting, LLC,WIPO Case No. D2005-1319; Pfizer Inc. v. NA, WIPO Case No. D2005-0072; AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin,WIPO Case No. D2002-0440; America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (use of a name connected with such a well-known product by someone with no connection with the product suggests opportunistic bad faith). The strong notoriety and world renown of the Complainant’s mark makes it extremely disingenuous for the actual registrant to claim that he was unaware that the registration of the disputed domain name would violate the Complainant’s rights.
(vii) The disputed domain name is not being used by the actual registrant for any legitimate purpose. As of August 1, 2014, the disputed domain name redirected to a website incorporating ads and links for the Complainant’s competitors, which is evidence of bad faith use. See Annex D to the Complaint; Health Studies Institute, Inc. v. Texas International Property Associates,WIPO Case No. D2008-1012 (citing Chicago Pneumatic Tool Company LLC v. Texas International Property Associates - NA NA,WIPO Case No. D2008-0144 and ChoicePoint Asset Company LLC v. Texas International Property Associates - NA NA,WIPO Case No. D2008-0395). The website also has a link offering the domain name for sale to the general public, which in combination with the actual registrant’s likely knowledge of the Complainant’s mark, is further evidence of bad faith use. See ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (“In the absence of contrary evidence, awareness of the Complainant’s mark coupled with an offer made to the general public to sell the domain name is evidence of registration and use in bad faith.”). These facts support a finding of bad faith use. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the disputed domain name;
(iii) That the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant contends that the disputed domain name is confusingly similar to its mark for the following reasons:
a) The disputed domain name is confusingly similar to the Complainant’s mark DIRECTV;
b) There is no substantial difference between the Complainant’s mark and the disputed domain name which merely adds the geographical term “argentina”.
The Panel accepts the Complainant’s contentions. The disputed domain name is confusingly similar to the Complainant’s mark. The Panel finds that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that any of the following circumstances, in particular but without limitation, if found by the panel to be proved based upon its evaluation of the evidence presented, shall demonstrate a respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii):
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations 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; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the disputed domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a response and has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests. In the Panel’s view, there is no independent evidence of any plausible circumstance which could have demonstrated any rights or legitimate interests on the part of the Respondent. The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Policy, paragraph 4(a)(ii) has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy contains the following provisions under the heading “Evidence of Registration and Use in Bad Faith”. For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a disputed domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed 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 your documented out-of-pocket costs directly related to the disputed domain name; or
(ii) you have registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding disputed domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
The Respondent has made no response in this connection. The Complainant has made contentions that would lead to situations mentioned in paragraph 4(b)(iv) of the Policy. The Panel notes that the website at the disputed domain name resolves to a pay-per-click page with links to third parties and competitors. The Panel accepts the Complainant’s assertion that the Respondent has attempted to divert users to its website for commercial gain by creating confusion with the Complainant’s mark. The Panel finds that the Policy, paragraph 4(a)(iii) has been satisfied. 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.
James McNeish Innes
Sole Panelist
Date: September 29, 2014
Full & Egal Universal Law Academy