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 Steve Binion, Bakers of Houston, Texas, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 11, 2015. On May 12, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 13, 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 proceeding commenced on May 19, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 8, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 9, 2015.
The Center appointed Andrew Mansfield as the sole panelist in this matter on June 12, 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 uses the term "directv" as the name of its business, and the name under which it has registered for recognition as a limited liability company. The Complainant also 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 Registration No. 2,698,197, registered on March 18, 2003, Registration No. 3,085,552, registered on April 25, 2006, and Registration No. 2,503,432, registered on Nov. 6, 2001 (hereinafter "the Mark"). 5. Parties' Contentions A. Complainant
As indicated above, the Complainant has multiple United States trademark registrations for the Mark. The Complainant asserts that a valid United States Patent and Trademark Office 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 Int'l Inc. v. Norton,WIPO Case No. D2008-0703.
The Complainant further alleges, in summary format, that:
1. The disputed domain name is identical or confusing similar to its trademark and servicemark DIRECTV;
2. The Respondent has no rights or legitimate interests in respect to the disputed domain name; and
3. The disputed domain name was registered and is being used in bad faith.
For these reasons, the Complainant requests that the disputed domain name be transferred to it. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
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 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
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 without question 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 is confusingly similar to the Complainant's trademark. The Panel recognizes that it incorporates the Mark entirely and merely adds the term "us". Where the domain name in dispute contains the identical mark combined with a generic word or term, the addition of the generic word or term, generally, does not make the mark dissimilar nor does it limit the dilution of the mark. The Panel finds that the confusion is not avoided by the addition of "us" to the Mark based on a long line of UDRP panel decisions. See Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493; Lilly Icos LLC, v. Abadia Distribution,WIPO Case No. D2005-0449; The Price Company v. Price Club,WIPO Case No. D2000-0664.
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. The addition of the word "us" implies that the services may be provided in the United States or that the disputed domain name is regional and specific to the United States.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests
Without more, the registration of a domain name does not necessarily give rise to rights or legitimate interests in a domain name. See, e.g., Gold Medal Travel Group Plc v. Damir Kruzicevic,WIPO Case No. D2007-1902. Paragraph 4(c) of the Policy provides some circumstances in which a respondent may demonstrate 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 paragraph 4(c) of the Policy, the practical burden of adducing evidence of rights or legitimate interests in the disputed domain name shifts to the Respondent.
Paragraph 4(c)(i) of the Policy reflects rights or legitimate interests where there is a bona fide offering of goods or services, while paragraph 4(c)(iii) of the Policy records that the Respondent has rights or legitimate interests if it uses the disputed domain name noncommercially or fairly without intention for commercial gain. In this matter, the disputed domain does not resolve to any website.
The Complainant alleges that it did not authorize 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 paragraph 4(c)(ii) of the Policy.
The Panel accepts the evidence that the Complainant searched the United States Patent and Trademark Office Trademark database and the trademark database for the Office for Harmonization in the Internal Market 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. There is no evidence that the Respondent, or any business he is affiliated with, is commonly known by the disputed domain name.
The Complainant alleges and the Panel accepts that the Complainant has neither authorized the Respondent to use its famous Mark, nor authorized the Respondent to register and use the disputed domain name, and the Complainant does not have any type of business relationship with the Respondent.
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(b) of the Policy contains the following provisions under the heading "Evidence of Registration and Use in Bad Faith". For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a disputed domain name in bad faith:
"(i) circumstances indicating that you have registered or you have acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the disputed domain name; or
(ii) you have registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding disputed domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
The disputed domain name is not being used by the Respondent for any legitimate purpose. The Respondent registered the disputed domain name in November 2014. As of May 2015, the disputed domain name does not point to any operating website or server. These facts support a finding of bad faith use under the concept of "passive holding". See Recordati S.P.A. v. Domain Name Clearing Company,WIPO Case No. D2000-0194 (passive holding of domain name without use in commerce can support finding of bad faith use); Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (finding bad faith use where the respondent had no actual or contemplated good faith use of the domain name and provided false contact details).
Given the widespread and common knowledge of the DIRECTV Mark, the Panel concludes that the Respondent knew of the Mark when it registered the disputed domain name.
The Respondent has made no Response in this connection. The Complainant has made contentions that fulfill bad faith as provided for in paragraph 4(b) of the Policy. The Panel finds that the Policy, paragraph 4(a)(iii) has been satisfied. 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.
Andrew Mansfield
Sole Panelist
Date: July 2, 2015
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