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 Samuel Lewis, of Rahway, New Jersey, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2015. On April 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 3, 2015, 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 April 14, 2015 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 April 18, 2015.
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 Amended Complaint, and the proceedings commenced on April 23, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 13, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 14, 2015.
The Center appointed Lynda M. Braun as the sole panelist in this matter on May 20, 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.
The language of the proceeding is English. 4. Factual Background
The Complainant is a provider of digital satellite television service to over 30 million customers in the United States. It has expended a great deal of time, effort and money in advertising, promoting and marketing its products and services since 1994. The Complainant uses the name of its business and the name under which it was incorporated as its trade name and trademark. The Complainant has multiple registrations for DIRECTV (the “DIRECTV Mark”) on the Principal Register of the United States Patent and Trademark Office. These include U.S. Registration No. 2,698,197, registered on March 18, 2003, U.S. Registration No. 3,085,552, registered on April 25, 2006, and U.S. Registration No. 2,503,432, registered on November 6, 2001. Thus, the DIRECTV Mark has become famous in connection with the Complainant’s digital satellite television service.
The Respondent registered the Disputed Domain Name on March 26, 2014. The Disputed Domain Name is passively held.
In April 2014, the Complainant’s attorney sent a cease and desist letter to the Respondent, informing the Respondent of the Complainant’s rights in the Mark and requesting that the Respondent transfer the Disputed Domain Name to the Complainant. The Respondent did not respond to the letter. 5. Parties’ Contentions A. Complainant
The following are the Complainant’s contentions:
- The Disputed Domain Name is confusingly similar to the Complainant’s trademark.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Disputed Domain Name was registered and is being used in bad faith.
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the DIRECTV Mark based on both longstanding use as well as its United States trademark registrations for the DIRECTV Mark. The Disputed Domain Name consists of the DIRECTV Mark preceded by the descriptive word “digital”, and followed by the generic Top-Level Domain (“gTLD”) “.net”. “The fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy.” Six Continent Hotels, Inc. v. The Omnicorp,WIPO Case No. D2005-1249 (quoting Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903).
Numerous UDRP panel decisions have reiterated that the addition of a descriptive or generic word to a trademark is generally insufficient to avoid confusing similarity. Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795. See also Hoffmann-La Roche, Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923 (The addition of a descriptive or generic word to a trademark will not avoid a determination that the domain name at issue is confusingly similar); Nintendo of America, Inc. v. Fernando Sascha Gutierrez,WIPO Case No. D2009-0434 (same); Weight Watchers International Inc. v. Kevin Anthony,WIPO Case No. D2011-2067 (same).
This is especially true where, as here, the descriptive or generic word is associated with the Complainant and its services. See, e.g., Gateway Inc. v. Domaincar,WIPO Case No. D2006-0604 (finding the domain name confusingly similar to the trademark GATEWAY because the domain name contained “the central element of the Complainant’s GATEWAY marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business”).
In addition, the Disputed Domain Name has an extra “t” that is not present in the DIRECTV Mark. However, the Disputed Domain Name is deemed confusingly similar to the DIRECTV Mark with the addition of a letter, when the Disputed Domain Name sounds the same as and looks similar to the Complainant’s trademark. Ebay Inc. v. Wangming,WIPO Case No. D2006-1107 (finding to be confusingly similar to the complainant’s EBAY mark).
Finally, the addition of a gTLD such as “.net” after a domain name is technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) has been met by the Complainant. B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case.
Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its DIRECTV Mark. There is no evidence that the Respondent, or any business with which he is affiliated, is commonly known by the Disputed Domain Name, nor does the Complainant have any type of business relationship with the Respondent.
Accordingly, the second element of paragraph 4(a) has been met by the Complainant. C. Registered and Used in Bad Faith
The Policy identifies the following circumstances that, if found, are evidence of registration and use of the Disputed Domain Name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) Respondent has registered the Disputed Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product on Respondent’s website or location.
First, bad faith may be found where the Respondent knew or should have known of the registration and use of the DIRECTV Mark prior to registering the Disputed Domain Name. Façonnable SAS v. Names4sale,WIPO Case No. D2001-1365. Such is true in the present case in which the Respondent registered the Disputed Domain Name after the Complainant obtained its registrations for the DIRECTV Mark in the United States. The fame of the DIRECTV Mark makes it extremely disingenuous for the Respondent to claim that he was unaware that the registration of the Disputed Domain Name would violate the Complainant’s rights. See Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant’s trademarks).
Second, the Respondent’s registration of the Disputed Domain Name that is confusingly similar to the Complainant’s trademark is sufficient evidence of bad faith registration and use. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; 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 service and product by someone with no connection to the service and product suggests opportunistic bad faith).
Finally, the Respondent’s bad faith can also be inferred from its lack of reply to the cease and desist letter sent by the Complainant’s attorney prior to commencing this proceeding. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications,WIPO Case No. D2001-0210.
In all the above circumstances, that the Disputed Domain Name is passively held does not prevent a finding of bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Accordingly, the third element of paragraph 4(a) has been met by the Complainant. 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.
Lynda M. Braun
Sole Panelist
Date: May 26, 2015
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