The Complainant is DIRECTV, LLC of El Segundo, California, United States of America, represented by Quinn Emanuel Urquhart & Sullivan, LLP, United States of America.
The Respondent is Moniker Privacy Services of Fort Lauderdale, Florida, United States of America / Mongol Post of Ulaanbaatar, Mongolia. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 4, 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 5, 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 7, 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 an amended Complaint on August 13, 2014.
The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on August 13, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 2, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 3, 2014.
The Center appointed Yong Li as the sole panelist in this matter on September 10, 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 service to over 30 million customers in the United States, and has expended a great deal of time and money in the advertising, promotion, and marketing of its products and services since 1994. The Complainant uses DIRECTV as its trade name and service mark, and has multiple registrations for DIRECTV on the Principal Register of the United States Patent and Trademark Office, including Reg. No. 2,503,432, registered Nov. 6, 2001, Reg. No. 2,698,197, registered March 18, 2003, and Reg. No. 3,085,552, registered April 25, 2006.
The disputed domain name was created on August 5, 2002. The disputed domain name resolves to a website incorporating advertisements and links for the Complainant's competitors. The website also has a link offering the disputed domain name for sale to the public. 5. Parties' Contentions A. Complainant
The Complainant contends that through extensive advertising and marketing efforts, the DIRECTV trademark has become famous in connection with DIRECTV's superior digital satellite television service, and due to the quality of its services, the relevant consuming public has come to associate the DIRECTV name with quality and dependability.
The Complainant further contends that the disputed domain name is confusingly similar to the Complainant's trademark, as it incorporates the trademark DIRECTV entirely and merely adds the generic term "net".
The Complainant further contends that to the best of the Complainant's knowledge, the Respondent has no intellectual property rights over any mark that contains the term "directtv". The Complainant has not authorized any third-party to identify itself to the public as "directtv" or use the DIRECTV trademark in a domain name. There is no evidence that the Respondent is commonly known by the disputed domain name.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The Complainant has invested tremendous time, effort, and expense in establishing the trademark and in making it famous. The registration of a domain name confusingly similar to the Complainant's trademark by the Respondent who has no relationship to the trademark is sufficient evidence of bad faith registration and use. The disputed domain name directs to a website incorporating ads and links for the Complainant's competitors, which is evidence of bad faith use. The website also has a link offering the disputed domain name for sale to the public, which in combination with the Respondent's knowledge of the Complainant's trademark, is further evidence of bad faith use.
The Complainant requests the Panel to issue a decision that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Complainant asserts that the registrant of the disputed domain name used a privacy service, Moniker Privacy Services, to register the disputed domain name and the Complainant was unable to find the actual registrant of the domain name. Although the Registrar later on provided the name of the registrant and the contact information thereof, the Complainant believes that the registrant's information is false or inaccurate, and therefore asks to list both Moniker Privacy Services and the registrant disclosed by Moniker Privacy Services as the Respondent in this case. The Panel finds that the registrant used Moniker Privacy Services to register the disputed domain name. During this UDRP proceeding, the Center issued an email communication requesting the Registrar to confirm that the Respondent named in the Complainant is the current registrant of the disputed domain name in accordance with section 3.7.7.3. of the ICANN Registrar Accreditation Agreement (the use of privacy registration services may require disclosure of any underlying registrant upon notice of a UDRP dispute). The Registrar then informed the Center of the registrant's name as "Mongol Post" and disclosed the contact information thereof. Based on the Complainant's submissions, the Panel accepts that the registrant's information is false or inaccurate. The address of Mongol Post is false or inaccurate based on Google Maps searches made by the Complainant, and although the phone number in the contact information claims to be a United States number (starting with country code +1), it fails to include enough numbers for a legitimate United States telephone number. Considering the above factors, the Panel accepts that the Respondents in this case are Moniker Privacy Services and Mongol Post.
In accordance with paragraph 4(a) of the Policy, the Complainant's request for the transfer of the disputed domain name must satisfy the following three elements: 1) the Respondent's disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 2) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and 3) the Respondent has registered the disputed domain name and is using it in bad faith. A. Identical or Confusingly Similar
The Complainant is the owner of the registered United States trademark DIRECTV. The disputed domain name incorporates the Complainant's trademark in its entirety. The disputed domain name differs from the Complainant's trademark only by adding a generic term "net" and by an additional generic Top-Level Domain (gTLD) ".com".
It is well-established by previous UDRP panels that a domain name wholly incorporates a complainant's registered trademark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such trademarks. See Oki Data Americas, Inc. v. ASD Inc.,WIPO Case No. D2001-0903; CSC Holdings, Inc. v. Elbridge Gagne,WIPO Case No. D2003-0273 and EAuto, L.L.C. v. EAuto Parts,WIPO Case No. D2000-0096. This Panel finds that the disputed domain name is confusingly similar to the DIRECTV trademark, since the distinctive portion of the disputed domain name is "directv", in which the Complainant has established rights, and the additional generic term "net" does not serve to distinguish the disputed domain name from the Complainant's trademark. Also it is well-established by previous UDRP panels that the addition of the gTLD ".com" to a domain name does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights. As a result, the Complainant has met the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. See Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. The Panel finds that the Complainant has established a prima facie case in this regard. The Respondent has not provided evidence of circumstances of the type specified in the Policy, paragraph 4(c), or other circumstances, to prove that the Respondent has rights or legitimate interests in respect of the disputed domain name. The Complainant's evidence shows that the website of the disputed domain name has advertisements and links of the Complainant's competitors, and has a link offering the disputed domain name for sale to the public. The Panel finds that such actions do not represent a use of the disputed domain name in connection with a bona fide offering of goods and services.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. As a result, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that the Complainant's trademark DIRECTV is famous in the area of digital satellite television services as a result of the Complainant's long-time efforts in advertising, promotion and marketing of its products and services since 1994. By reviewing the evidence submitted by the Complainant, particularly the evidence showing that the content of the website of the disputed domain name includes links to "DIRECTV Internet", "DIRECTV Satellite TV", "Cable TV Service Providers", "Satellite TV Companies" and "Cable TV packages", etc., the Panel finds that the Respondent had actual knowledge of the fame of the Complainant's trademark when acquiring the disputed domain name.
Previous UDRP panels have established that registration of a domain name that is confusingly similar to a famous trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use. See e.g. EBay Inc. v. Wangming,WIPO Case No. D2006-1107. The Panel shares the views of the above-mentioned panels. In this case, the Respondent has no relationship to the Complainant's famous trademark DIRECTV, but registered the disputed domain name, which is confusingly similar to the trademark DIRECTV, with actual knowledge of the fame of the trademark. This constitutes evidence of bad faith registration and use.
Privacy service usage can in certain circumstances constitute a factor indicating bad faith. These circumstances include a registrant's usage of a privacy service in combination with provision of incomplete contact information to such service or a continued concealment of the true or underlying registrant upon the institution of a UDRP proceeding. See Paragraph 3.9 of the WIPO Overview 2.0. In this case, the registrant uses the privacy service, Moniker Privacy Services, which prevents the public from learning the actual registrant of the registered domain name. During this UDRP proceeding, the Center issued an email communication requesting the Registrar to confirm that the Respondent named in the Complainant is the current registrant of the disputed domain name in accordance with section 3.7.7.3. of the ICANN Registrar Accreditation Agreement (the use of privacy registration services may require disclosure of any underlying registrant upon notice of a UDRP dispute). The Registrar then informed the Center of the registrant's name as Mongol Post and disclosed the contact information thereof. Based on the Complainant's submissions, the Panel finds that the registrant's information is false or inaccurate. The address of Mongol Post is false or inaccurate based on Google Maps searches made by the Complainant, and although the phone number in the contact information claims to be a United States number (starting with the country code +1), it fails to include enough numbers for a legitimate United States telephone number. The above circumstances constitute a factor indicating bad faith.
According to the Complainant's submissions, the website of the disputed domain name has a link offering the domain name for sale to the public. The Panel finds that this factor in combination with the Respondent's knowledge of the Complainant's trademark 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 us in bad faith").
Accordingly, having regard to all the circumstances mentioned above, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy. 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.
Yong Li
Sole Panelist
Date: September 18, 2014
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