The Complainant is DIRECTV, LLC of El Segundo, California, United States of America (“United States”), represented by Quinn Emanuel Urquhart & Sullivan, LLP, United States.
The Respondent is Net Manager, Xwings Domains of Sydney, New South Wales, Australia. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with NameScout Corp. (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, with reminders on April 9, 13, and 15, 2015. On April 17, 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 22, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 12, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 13, 2015.
The Center appointed Isabel Davies as the sole panelist in this matter on May 26, 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 has trademark registrations for DIRECTV filed from 1998 onwards.
The Domain Name was registered on November 1, 2005. 5. Parties’ Contentions A. Complainant The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(1))
The Complainant states that it is a provider of digital satellite television service to over 30 million customers in the United States. It has earned its marketplace esteem by expending a great deal of time, effort, and money in the advertising, promotion, and marketing of its products and services since 1994. Through extensive advertising and marketing efforts, the DIRECTV trademark has become famous in connection with the Complainant’s digital satellite television service. Due to the quality of its services, its fair dealings with its customers, and its efforts to promote and protect its marks, the relevant consuming public has come to associate the DIRECTV name with quality and dependability.
The Complainant states that it uses the name of its business and the name under which it was incorporated 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 (“USPTO”) (the “Mark”). The Complainant states that a valid USPTO registration for a mark “establish[es] that the Complainant has sufficient rights in that mark for the purpose of paragraph 4(a)(i) of the Policy.”
The Complainant states that the Domain Name is confusingly similar to the Complainant’s trademark, as it incorporates the Mark entirely and merely adds the term “careers.” The Complainant states that where the Domain Name contains the identical mark combined with a generic word or term, the addition of the generic word or term neither renders the Domain Name dissimilar from the Complainant’s Mark nor removes or dilutes the likely confusion that arises from the Domain Name.
As a consequence, the Complainant contends that the Domain Name composed of the DIRECTV mark and the generic term “careers” is confusingly similar to the trademarks in which the Complainant has rights. The Respondent has no rights or legitimate interests in respect of the Domain Name;
(Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2))
The Complainant states that it searched the USPTO database and the trademark database for the Office for Harmonization in the Internal Market (“OHIM”) for the European Union for possible trademark registrations by the Respondent and found no trademarks including the word “directv”, or any variations thereof, registered by the Respondent in the United States or any of the European countries and exhibits its search results in the Complaint. The Complainant states that, to the best of its knowledge, the Respondent holds no intellectual property rights over any mark that contains the term “directv”.
The Complainant states that there is no evidence that the Respondent, or any business it is affiliated with, is commonly known by the Domain Name.
The Complainant states that it has neither authorized the Respondent to use its famous Mark, nor authorized the Respondent to register and use the Domain Name, and the Complainant does not have any type of business relationship with the Respondent. The Complainant therefore contends that the Respondent has no rights or legitimate interests in the Domain Name. The Domain Name was registered and is being used in bad faith.
(Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3))
The Complainant reiterates that it has invested tremendous time, effort, and expense in establishing the Mark, and in making it famous. It contends that the registration of the Domain Name, which is confusingly similar to the Mark, by the Respondent, an entity with no relationship whatsoever to the Mark, is sufficient evidence of bad faith registration and use.
The Complainant submits that the strong notoriety and world renown of the Complainant’s Mark makes it extremely disingenuous for the Respondent to claim that it was unaware that the registration of the Domain Name would violate the Complainant’s rights.
The Complainant contends that the Domain Name is not being used by the Respondent for any legitimate purpose. It states that in November 2014, its employees discovered the Domain Name and asked for a transfer of ownership, and offered to pay the USD85 basic acquisition fee. The Respondent rejected the offer, explaining that it had “future development plans for the site,” but that it “would consider serious offers.” This, the Complainant submits, supports a finding of bad faith use. Furthermore, on November 25, 2014, counsel for the Complainant sent a letter to the Respondent, demanding that it cease using the Complainant’s protected Mark and transfer the Domain Name to the Complainant. The Respondent never responded to the correspondence. In fact, the Respondent renewed its registration for the Domain Name on the same day. In the months since, the Respondent has failed to abandon the Domain Name or to cancel its registration of the Domain Name. This, the Complainant submits, further supports a finding of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Policy establishes three elements, specified in paragraph 4(a) that must be established by the Complainant to obtain relief. These elements are:
(i) The Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name;
(iii) The Domain Name has been registered and is being used in bad faith.
Each of these elements will be addressed below.
The Complainant must establish these elements even if the Respondent does not reply (see The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of or requirement under the Rules, including the Respondent’s failure to file a Response.
In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009)).
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. As the proceeding is an administrative one, the Complainant bears the onus of proving its case on the balance of probabilities. The Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the Domain Name. A. Identical or Confusingly Similar
The Panel accepts that the Complainant is a well-known provider of digital satellite television service to over 30 million customers in the United States and that it uses the name of its business and the name under which it was incorporated as its trade name and service mark, and has multiple registrations for DIRECTV on the Principal Register of the USPTO.
The Panel accepts that a valid USPTO registration for a mark “establish[es] that the Complainant has sufficient rights in that mark for the purpose of paragraph 4(a)(i) of the Policy.” MasterCard International Incorporated v. Bob Norton,WIPO Case No. D2008-0703.
The Panel accepts that the Domain Name is confusingly similar to the Complainant’s trademark, as it incorporates the Mark entirely and merely adds the term “careers”, and that where the Domain Name contains the identical mark combined with a generic word or term, the addition of the generic word or term neither renders the Domain Name dissimilar from the Complainant’s Mark nor removes or avoids the likely confusion that arises from the Domain Name. “As stated in Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493, ‘Generally, a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.’” Lilly ICOS LLC, v. Abadia Distribution,WIPO Case No. D2005-0449 (finding to be confusingly similar to the complainant’s CIALIS mark) (citing Microsoft Corp,WIPO Case No. D2000-1493); The Price Company v. Price Club, also known as Tsung-Pei Chang,WIPO Case No. D2000-0664 (finding to be confusingly similar to the complainant’s PRICE CLUB mark).
The Panel finds that the Domain Name composed of the DIRECTV mark and the generic term “careers” is confusingly similar to the trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
The Panel accepts that the Respondent holds no intellectual property rights over any mark that contains the term “directv”.
The Panel accepts that there is no evidence that the Respondent, or any business it is affiliated with, is commonly known by the Domain Name and that the Complainant has neither authorized the Respondent to use its Mark, nor authorized the Respondent to register and use the Domain Name, and the Complainant does not have any type of business relationship with the Respondent.
The Panel finds that the Respondent therefore has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
The Panel accepts that the registration of a domain name confusingly similar to the Mark by the Respondent, 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; and 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 Panel accepts that it would be disingenuous for the Respondent to claim that it was unaware that the registration of the Domain Name would violate the Complainant’s rights.
The Panel accepts that the Domain Name is not being used by the Respondent for any legitimate purpose and that in November 2014, the Complainant’s employees discovered the Domain Name, asked for a transfer of ownership, and offered to pay the USD85 basic acquisition fee. The Panel also accepts that the Respondent rejected the offer, explaining that it had “future development plans for the site,” but that it “would consider serious offers” and that this supports a finding of bad faith use. See Eastman Sporto Group LLC v. Jim and Kenny,WIPO Case No. D2009-1688 (finding bad faith when the Respondent offered to sell the disputed domain name for an amount far in excess of its costs of registration).
The Panel also accepts that on November 25, 2014, counsel for the Complainant sent a letter to the Respondent, demanding that it cease using the Complainant’s protected marks and transfer the Domain Name to the Complainant, that the Respondent never responded to the correspondence and renewed its registration for the Domain Name.
The Panel notes that the Domain Name appears to be passively held. The Panel agrees with the panel in Recordati S.P.A. v. Domain Name Clearing Company,WIPO Case No. D2000-0194, which stated that passive holding of domain name without use in commerce can support finding of bad faith use.
The Panel finds that the Domain Name was registered and is being used 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 Domain Name, be transferred to the Complainant.
Isabel Davies
Sole Panelist
Date: June 9, 2015
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