Complainant is DIRECTV, LLC of El Segundo, California, United States of America (“USA”), represented by Quinn Emanuel Urquhart & Sullivan, LLP, USA.
Respondent is Roger Wernsing, Faith Enterprises LLC of West Plains, Missouri, USA. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed on March 27, 2015, with the WIPO Arbitration and Mediation Center (the “Center”). 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 30, 2015, 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 May 4, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 24, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 26, 2015.
The Center appointed Steven L. Snyder as the sole panelist in this matter on June 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 never-ending war between cable television and satellite television providers has exposed millions of North Americans to DIRECTV, Inc., who is also Complainant in this proceeding. Since June 1994, Complainant has been using the DIRECTV mark in connection with its telecommunications services. It has expanded the use of the mark to encompass such promotional products as cardboard floor display units, posters, pens, address books, gift cards and diaries (yes, even diaries). To protect its mark, Complainant has obtained several registrations from the United States Patent & Trademark Office (“USPTO”). See USPTO Registration Nos. 2,503,432 (November 6, 2001) (International Classes 9, 16 and 25); 2,698,197 (March 18, 2003) (International Classes 9, 25, 38 and 41); 3,085,552 (April 25, 2006) (International Class 38).
On March 29, 2014, Respondent in this action, Mr. Roger Wernsing of Faith Enterprises, LLC, registered the disputed domain name, , with the Registrar. By accepting the terms of the Registrar’s Domain Name Registration Agreement, a hefty document that covers more than 50 pages, Respondent agreed that any dispute regarding the ownership of could be resolved pursuant to the Policy and Rules.
In a very short time, Respondent became involved in such a dispute. In April 2014, the month after Respondent registered the disputed domain name, Complainant sent a letter to Respondent in which it demanded that he cease from using the DIRECTV mark and that he transfer the disputed domain name to Complainant.
Respondent did not respond to the letter. For reasons Complainant has not articulated, it waited until March 27, 2015, to file the Complaint that initiated the current proceeding. Respondent had until May 24, 2015, to respond to the Complaint. In conformance with his earlier behavior, he did not respond. 5. Parties’ Contentions A. Complainant
Complainant contends that it provides digital satellite television services to more than 30 million customers in the USA and has “earned its market place esteem” through an extensive advertising, marketing and promotional campaigning that began in 1994. Due to the “quality” of its services, its “fair dealings” with customers, and its promotional efforts, Complainant claims that the DIRECTV mark “has become famous.” The numerous federal registrations of the DIRECTV mark are evidence, Complainant contends, of its rights in the mark.
In Complainant’s opinion, the disputed domain name is confusingly similar to Complainant’s DIRECTV mark because it “incorporates the Mark entirely and merely adds the generic term ‘company.’”
Respondent does not have any rights or legitimate interests in the DIRECTV mark, Complainant contends, as shown by the fact that Respondent is not listed in the USA or Europe as having registered any mark containing the word “DirecTV”. Complainant also represents that it has not authorized Respondent to use the DIRECTV mark or to register the disputed domain name.
The disputed domain name, argues Complainant, was registered and used in bad faith. Complainant argues that Respondent cannot plausibly argue he was unaware of Complainant’s right in the mark before he registered the disputed domain name: “The strong notoriety and world renown of Complainant’s Mark makes it extremely disingenuous for Respondent to claim that he was unaware that the registration of the disputed domain name would violate Complainant’s rights.” Further evidence of bad faith is shown by Respondent’s failure to respond to Complainant’s demand letter and the use of the disputed domain name to point Internet users to a “registrar parking page.”
For these reasons, Complainant maintains it has met its burden under the Policy and Rules and requests that the disputed domain name be transferred to its ownership. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
To prevail in this proceeding, Complainant must show that: (i) the disputed domain name is “identical or confusingly similar to a trademark or service mark in which the complainant has rights”; (2) that Respondent does not have any “rights or legitimate interests” in the disputed domain name; and (3) the disputed domain name was “registered and is being used in bad faith.” See paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
A resident of the USA can hardly watch television for an hour without encountering a commercial that prominently mentions the DIRECTV mark and either praises or lambasts Complainant’s services. The USPTO registrations that Complainant submitted are almost superfluous; there is no question that Complainant has strong rights in the DIRECTV mark.
Complainant argues that the disputed domain name is confusingly similar to its mark because the disputed domain name “incorporates the Mark entirely and merely adds the generic term ‘company.’” The Panel does not disagree with the conclusion but does quibble with Complainant’s reasoning.
Respondent did not really add any “generic term” to Complainant’s mark. Respondent simply took that mark and registered it in the “.company” Top-Level Domain (“TLD”). Numerous UDRP panels have held that the TLD should be ignored when considering whether there is any meaningful difference between a trademark and a domain name. For example, in Credit Industriel et Commercial S.A. v. XUBO,WIPO Case No. D2006-1268, the panel considered whether was confusingly similar to the CIC BANQUES mark. The panel sensibly held that the addition of the TLD “does not affect the domain name being recognized as identical with the trademark CICBANQUES.”
When this Panel ignores the “.company” TLD in this dispute, it becomes evident that Respondent did not add anything to Complainant’s mark, generic or otherwise. He simply took the mark and, without making any changes, registered the mark as a domain name in the “.company” TLD.
Complainant has established that the disputed domain name is identical to a mark in which it has rights. B. Rights or Legitimate Interests
Under the Policy, a complainant has the burden of proof in establishing that a respondent lacks any rights or legitimate interests in the disputed domain name. Seeparagraph 4(a)(ii) of the Policy. (“In the administrative proceeding, the complainant must prove that each of these three elements are present.”). At the same time, panels have recognized that it is often difficult to prove a negative and a complainant rarely knows anything about the respondent and there is no opportunity in a UDRP proceeding to conduct discovery. That is why many panels have held that a complainant need only establish a prima facie case. If the respondent fails to offer any evidence, the complainant is deemed to have met its burden of proof. SeeDanfoss A/S v. d7r9e1a1m/淄博丹佛斯测控仪表有限公司,WIPO Case No. D2007-0934 (“once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests to a disputed domain name, the burden of proof shifts to the respondent to rebut the complainant’s contentions”).
Complainant has proved that it owns a famous mark and it has done its best to prove that Respondent is not known as “DirecTV” and has no rights in that mark. By pointing to the website to which the disputed domain name is linked – a mere “parking page” – Complainant attempts to prove that Respondent is not using the disputed domain name in connection with any legitimate noncommercial or fair use or with any bona fide offering of goods or services.
In the absence of any contradictory evidence from Respondent, Complainant’s proof suffices to establish that Respondent lacks any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Complainant argues that Respondent registered the disputed domain name in bad faith because he certainly knew that the DIRECTV mark belonged to Complainant due to its “strong notoriety and world renown.” Complainant’s word choice is peculiar; “notoriety” typically carries a negative connotation. If Complainant was speaking of cable television, it would be expected to talk about “notoriety,” but it is talking about its own mark for which it undoubtedly has affection. Also, Complainant has not offered any proof that its DIRECTV mark is used outside the USA and has “world renown.” Nevertheless, the underlying argument is persuasive: Respondent, a resident of the USA, certainly knew of the DIRECTV mark due to the innumerable and inescapable commercials. It is improbable in this Panel’s view that Respondent innocently incorporated the mark into the disputed domain name. After all, DIRECTV is not a generic term that might naturally find its way into a domain name.
The second part of Complainant’s argument is that Respondent has used the disputed domain name in bad faith because the disputed domain name is pointing to the Registrar’s parking page, which basically is just an advertisement for the Registrar’s various services.
The Policy lists many examples of bad faith registration and use. See paragraph 4(b) of the Policy. As the Policy makes clear, this list is not an exclusive catalog of how bad faith may be demonstrated. Id. Many panels have looked beyond the list and found bad faith usage when a well-known trademark is incorporated into a domain name and then yoked to a parking page. See, e.g., Manufacture Jaeger-LeCoultre S.A v. Whois Privacy Services Pty Ltd. / Quantec, LLC/Novo Point, LLC, Damon Nelson,WIPO Case No. D2014-0642; Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273.
Given Respondent’s failure to respond to Complainant’s demand letter and to the Complaint filed in this proceeding, this Panel has no reason to reject’s Complainant’s argument and agrees that Respondent has demonstrated bad faith in the registration and use of the disputed domain name. 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 Complainant.
Steven L. Snyder
Sole Panelist
Date: June 18, 2015
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