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 Feng He of Foshan, Guangdong, China. 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 March 27, 2015. On March 30, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 31, 2015, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on April 9, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 29, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 30, 2015.
The Center appointed David Williams as the sole panelist in this matter on May 8, 2015. 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 an American direct broadcast satellite service provider. The Complainant’s trademark and service mark is DIRECTV. The Complainant has multiple registrations for its trademark, DIRECTV, dating from March 18, 2003, April 25, 2006, and November 6, 2001.
On April 1, 2014, the Respondent registered the disputed domain name, which incorporated the Complainant’s trademark. The disputed domain name resolves to a pay-per-click (“PPC”) page that redirects Internet users to websites incorporating advertisements and links for the Complainant’s competitors.
The Complainant sent a cease and desist letter to the Respondent in April 2014. The Complainant has received no response in relation to the cease and desist letter. The Respondent has not made contact with the Complainant. The Respondent takes no part in these proceedings. 5. Parties’ Contentions A. Complainant
The Complaint’s contentions are summarized at section [11.] of the Complaint:
(a) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant submits that it provides digital satellite television to over 30 million customers within the United States. DIRECTV is its trademark and service mark. The Complainant has multiple registrations for DIRECTV. The Complainant alleges that the disputed domain name is confusingly similar because it incorporates “the Mark entirely and merely adds the generic term ‘com’”. It argues that the addition of “com” creates similarities between the Complainant’s trademark and the disputed domain name in that it “[neither] removes [nor] dilutes the likely confusion that arises from the domain name.”
(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. First, the Respondent has no registered trademark including the word “directv” in the United States or Europe. Secondly, there is no evidence that the Respondent is commonly known by the disputed domain name. Thirdly, the Complainant has not authorized the Respondent to use its trademark, or to register and use the disputed domain name. Finally, the Complainant and the Respondent do not have a business relationship.
(c) The disputed domain name was registered and is being used in bad faith.
The Complainant submits that registration of a disputed domain name that is confusingly similar to its trademark is “sufficient evidence” of bad faith when the Respondent has no relationship to the Complainant. In addition, the well-known nature of the Complainant’s product, coupled with the particular way in which the Respondent has used the trademark, amounts to bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must show three elements to succeed in its claim:
i. The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
ii. The Respondent has no rights or legitimate interests in respect of the domain name; and
iii. The domain name has been registered and is being used by the Respondent in bad faith. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy contains two elements. First, the Complainant must have rights to the relevant trademark or service mark. Secondly, the disputed domain name must be “identical or confusingly similar” to the trademark or the service mark in which the Complainant has rights.
The first consideration is whether the Complainant has rights to the trademark DIRECTV. The Complainant has multiple registrations for DIRECTV on the Principal Register of the United States Patent and Trademark Office: Reg. No. 2,698,197 (March 18, 2003); Reg. No. 3,085,552 (April 25, 2006); and Reg. No. 2,503,432 (November 6, 2001). The Panel is satisfied that the Complainant has rights to the trademark DIRECTV.
The disputed domain name uses the Complainant’s trademark, followed by the suffix “com”. The Complainant’s trademark and the suffix are separated by a hyphen, with the addition of the generic Top-Level Domain (“gTLD”) “.com”, to create ““.
The suffixing of a gTLD signifier can be ignored when determining whether the disputed domain name is “identical or confusingly similar” to the trademark for the purposes of paragraph 4(a)(i) (Universal City Studios Inc. v. G.A.B Enterprises, WIPO Case No. D2000-0416). For example, in Trade Me Limited v. Vertical Axis Inc., WIPOCase No. D2009-0093, the disputed domain name incorporated the suffix “.”. The consequence was that the Complainant’s trademark (TRADEME) and the domain name () were treated as identical. However, in the present case, the disputed domain name adds the generic term “com” and a hyphen to create . The Complainant’s trademark and the disputed domain name are not identical.
Nevertheless, the disputed domain name and the Complainant’s trademark are “confusingly similar”. In Gateway Inc. v. Bellgr Inc.,WIPO Case No. D2000-0129, the Panel articulated the test for “confusing similarity” as including “similarity of a nature that would be likely to cause those familiar with the trademark to assume that there is a connection of some sort between the trademark owner and the domain name.” “Confusing similarity” will often result where the domain name reproduces a principal component of the complaint’s trademark (see Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty Ltd, WIPO Case No. D2001-0110; Revlon Consumer Products Corporation v. Laurent D. Morel, WIPO Case No. D2002-0215). The inclusion of the generic term “com” and a hyphen does nothing to distinguish the disputed domain name from the Complainant’s trademark. They are virtually identical. The addition of “com” and a hyphen is easily overlooked upon a cursory reading of the webpage address. Therefore, it is likely to confuse Internet users (Lilly Icos, LLC v. Abadia Distribution, WIPO Case No. D2005-0449). In addition, the disputed domain name is dominated by the word “directv”. It incorporates the Complainant’s trademark in its entirety. On that basis, those who are familiar with the Complainant’s trademark might assume that there is an affiliation between the Respondent and the Complainant (see Microsoft Corporation v. J. Holiday Co, WIPO Case No. D2000-1493).
The Panel finds that the disputed domain name is confusingly similar to the DIRECTV trademark. The first criterion has been met. B. Rights or Legitimate Interests
Without more, the registration of a domain name does not give rise to rights or legitimate interests in a domain name (see Gold Medal Travel Group Plc v. Damir Kruzicevic, WIPO Case No. D2007-1902). Paragraph 4(c) of the Policy clarifies some circumstances in which a Respondent may create rights or legitimate interests in a domain name. The Complainant bears the burden of proof in relation to the three elements of paragraph 4(a) of the Policy. However, once the Complainant has shown a prima facie case under 4(c) of the Policy, the practical burden of adducing evidence of rights or legitimate interests in a domain name shifts to the Respondent (see Trade Me Limited v. Vertical Axis Inc., supra).
Paragraph 4(c)(i) of the Policy creates rights or legitimate interests where there is a bona fide offering of goods or services, while paragraph 4(c)(iii) of the Policy allows that the Respondent has rights or legitimate interests if it uses the trademark noncommercially or fairly without intention for commercial gain. In Express Scripts, Inc v. Windgather Investments Ltd/ Mr. Cartwright, WIPO Case No. D2007-0267, the Respondent parked the domain name until it could be sold. Advertisements were generated by a parking company. The Panel concluded that the use of the domain name was not a bona fide offering of goods and services under 4(c)(i), or a noncommercial and fair use under 4(c)(iii). The present situation is similar. There is no evidence that a parking company is involved. However, the disputed domain name resolves to a PPC page that redirects the Internet user to websites incorporating advertisements and links for the Complainant’s competitors. The Complainant’s trademark is a famous and popular trademark. The implication is twofold: the Respondent’s use of the Complainant’s trademark is both an attempt to capitalise on trademark value and to divert business from the Complainant. As a result, the Respondent is not bona fide offering goods and services, or using the Complainant’s trademark in a noncommercial or fair manner (Gold Medal Travel Group plc v. Damir Kruzicevic,WIPO Case No. D2007-1902).
The Complainant alleges that it did not authorise the use and registration of the disputed domain name. In addition, the Respondent was not in a business relationship with the Complainant. Therefore, there is no evidence suggesting that the Respondent was commonly known by the disputed domain name for the purpose of 4(c)(ii) of the Policy.
If the Respondent fails to submit a response, the Panel can accept the Complainant’s allegations as true (see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009; paragraph 14(b) of the Rules). The Respondent has not challenged the Complainant’s assertions. As a result, the Complainant has shown a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The second criterion is met. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy is framed in both present and past tense. Therefore, there are two elements to 4(a)(iii): the registration of the disputed domain name must have been undertaken in bad faith and the Respondent must have continued to use the disputed domain name in bad faith (Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003).
Paragraph 4(b) of the Policy delineates situations where the registration and use of a domain name will involve bad faith. Paragraph 4(b)(iv) is relevant for present purposes:
by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The first consideration is whether the Respondent registered the disputed domain name in bad faith. The Complainant contends that the famous nature of its trademark prevents the Respondent from claiming that it was unaware of the Complainant’s rights. In Jupiters Limits v. Aaron Hall,WIPO Case No. D2000-0574, the well-known nature of the Complainant’s name, coupled with the fact that the Respondent was located in the same mailing address as the Complainant’s business, meant that it was “inevitable that the Respondent registered the disputed domain name in full knowledge of the Complainant’s rights and interests”. The present case has the distinguishing factor that the Respondent is located in China, while the Complainant’s business is primarily conducted in the United States. However, the Complainant has been marketing and promoting its business for twenty-one years. The Complainant first registered the DIRECTV trademark fourteen years ago. The Complainant provides a service to a large consumer base. In contrast, the Respondent only registered the disputed domain name in 2014. As a result, the Respondent is likely to have knowledge of the Complainant’s trademark at the time of registration. This finding, coupled with the Respondent’s lack of rights or legitimate interests in the disputed domain name, leads the Panel to conclude that the disputed domain name has been registered in bad faith (see Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003; Centurion v Bank of Punjab Limited v. West Coast Consulting, LLC, WIPO Case No. D2005-1319).
The second consideration is whether the Respondent has continued to use the disputed domain name in bad faith. The Respondent does not have a connection with the Complainant’s products or services. Since March 2015, the website associated with the disputed domain name has been diverting consumers to other websites incorporating advertisements and links for the Complainant’s competitors. As a result, the Respondent’s conduct has the potential to disrupt the Complainant’s business by causing loss of sales, loss of ability to transact with consumers, and commercial detriment. In addition, the PPC links attract Internet users to another “on-line location” by creating a likelihood of confusion between the Complainant’s trademark and the disputed domain name for the purposes of paragraph 4(b)(iv) of the Policy. In such circumstances, “opportunistic bad faith” arises (see Veuve Clicquot Ponsardin, Maison Fondee en 1772 v. the Polygenix Group Co, WIPO Case No. D2000-0163; Ebay Inc. v. Wangming, WIPO Case No. D2002-1107).
In Educational Tertiary Service v. TOEFL, WIPO Case No. D2000-0044, the Panel noted that if the Respondent fails to provide a justification for its use of the trademark, the Panel “may reasonably infer that the Respondent neither intended to make nor has made any legitimate use of Complainant’s trademark”. The Respondent has not offered an explanation as to why the disputed domain name was chosen. There is no apparent legitimate reason for the use of the disputed domain name. As a result, the inference may be drawn that the Respondent has used the disputed domain name for the purpose of capitalizing on the reputation of the Complainant.
The cumulative circumstances of the case lead the Panel to the conclusion that the Respondent has registered and used the disputed domain name in bad faith. The third criterion is met. 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.
David A.R. Williams, QC
Sole Panelist
Date: May 22, 2015
Full & Egal Universal Law Academy