The Complainant is DISH Network L.L.C. of Englewood, Colorado, United States of America ("U.S." or "United States"), represented by Swanson & Bratschun, LLC, United States.
The Respondent is Lemy Argueta, Media Design & Martketing of Pasadena, California, United States. 2. The Domain Names and Registrar
The disputed domain names , , and are registered with Deluxe Small Business Sales, Inc. d/b/a A (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 13, 2018. On March 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 21, 2018, April 3, 2018, and April 6, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent in the Complaint. The Center sent an email communication to the Complainant on April 11, 2018, providing the registrant information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on April 16, 2018.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 7, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 8, 2018.
The Center appointed William R. Towns as the sole panelist in this matter on May 22, 2018. 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 Panel issued an Administrative Panel Procedural Order on May 30, 2018, inviting the Parties to file with the Center supplemental submissions concerning the Respondent's registration and use of the disputed domain names, any previous retailer agreements between the Parties, and the Complainant's trademarks licensed to the Respondent. The date for the Panel to submit its decision to the Center was extended to June 21, 2018. The Complainant lodged its supplemental submission with the Center on June 7, 2018. The Respondent did not file a supplement submission, although granted leave until June 14, 2018 to do so. 4. Factual Background
The Complainant is a telecommunications company and pay-television ("Pay-TV") provider in the United States. The Complainant has marketed telecommunication services, communication equipment and communications software for satellite receiver systems under the DISH mark since as early as March 1996, and currently provides Pay-TV, audio programming and Internet services to over 13 million subscribers.
The Complainant is the owner of two United States trademark registrations for the DISH mark, U.S. Reg. No. 3,440,594, applied for on March 16, 2005, and registered on June 3, 2008; and U.S. Reg. No. 4,206,082, applied for on March 23, 2012, and registered on September 11, 2012. The Complainant also owns trademark registrations for DISH LATINO, U.S. Reg. No. 3,816,689, registered on July 13, 2010, and DISHLATINO, U.S. Reg. No. 3,852,209, registered on September 28, 2010, for use with the transmission of television broadcasting and satellite communication services.1 The Complainant makes extensive use of its DISH and DISH LATINO marks in the U.S., and maintains websites using the domain names and , initially registered by the Complainant on August 7, 1995, and November 10, 2001, respectively.
The Respondent registered the disputed domain names , , and on January 31, 2008, according to the concerned Registrar's WhoIs records. At the time the Respondent registered the disputed domain names the Complainant and the Respondent had been in discussions since December 2007 regarding the Respondent becoming a retailer of the Complainant's Pay-TV services. Subsequently, the Parties on June 4, 2008, entered into a Retailer Agreement ("2008 Retailer Agreement"), under which the Respondent's company, Tele Para Todos, became a non-exclusive "Authorized Retailer" of the Complainant's Pay-TV services. The Complainant and the Respondent thereafter entered into a second Retailer Agreement in 2009 ("2009 Retailer Agreement"), followed by a third Retailer Agreement in 2010 ("2010 Retailer Agreement"), a fourth Retailer Agreement in 2012 ("2012 Retailer Agreement") and a final Retailer Agreement ("2013 Retailer Agreement") effective January 1, 2013, through December 31, 2014.
The Respondent was granted a non-exclusive license to use the Complainant's trademarks pursuant to Trademark License Agreements ("Trademark License") included with each of the successive Retailer Agreements. The Respondent's registration and use of domain names was specifically addressed in the Trademark Licenses. Pursuant to Section 6 and 7 of the 2008 Trademark License, the Respondent warranted that it had not registered and would not register any domain names consisting of the Complainant's DISH marks or other domain names that might be confusingly similar to the Complainant's DISH marks. The Trademark License required the Respondent to immediately transfer any such domain names to the Complainant, and further provided that the Respondent's failure to do so would constitute a material breach of the Retailer Agreement. It was further provided that the Respondent's obligations under Section 6 would survive the expiration or termination of the Retailer Agreement. The Trademark Licenses were further expanded in connection with the subsequently executed Retailer Agreements to prohibit any confusingly similar use by the Respondent of "Identifying Communications Information", a term defined to include trade names, assumed names, and domain names including or referring to the Complainant's DISH marks or colorable imitations thereof.
The Trademark License was terminated upon the Complainant's cancellation of the 2013 Retailer Agreement on or about January 1, 2015. Since then the Complainant has sent multiple cease and desist notifications to the Respondent requesting the transfer of the disputed domain names. The Respondent has maintained possession of the disputed domain names, which currently resolve to a website on which the Respondent advertises the products and services of several of the Complainant's direct competitors in the Pay-TV market. 5. Parties' Contentions A. Complainant (i) Complaint
The Complainant submits that the disputed domain names are confusingly similar to the Complainant's DISH and DISH LATINO marks. The Complainant observes that its DISH and DISH LATINO marks are clearly recognizable in the disputed domain names, differing from the Complainant's marks only by the addition of the descriptive words "para todos". The Complainant relates that the Spanish words "para todos" mean "for everyone" or "for all" in English, and should not preclude a finding of confusing similarity for purposes of the first element of the Policy. The Complainant further maintains it established rights in and was using the DISH and DISH LATINO marks well before the Respondent registered the disputed domain names.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant asserts that the Respondent did not acquire any rights or legitimate interests in the disputed domain names because they were used solely under license from and the permission of the Complainant. According to the Complainant, whatever interest the Respondent might claim to have had in the Complainant's marks ended on January 1, 2015, at which time the Respondent ceased to be a reseller of the Complainant's DISH and DISH LATINO products and services.
The Complainant further asserts that the Respondent has not been commonly known by the disputed domain names, as the Tele Para Todos entity dissolved in April 2015. Additionally, the Complainant contends that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services, and that his current use of the disputed domain names involves only the posting of information regarding the Complainant and the Complainant's competitors.
The Complainant asserts that the Respondent registered and is using the disputed domain names in bad faith. The Complainant observes that the Respondent is not affiliated with or sponsored by the Complainant, and that the Respondent is using the disputed domain names to promote the services of the Complainant's competitors to create a likelihood of confusion with the Complainant's marks as to source, sponsorship, or affiliation. According to the Complainant, the Respondent is using the disputed domain names to falsely suggest that the Respondent is still an authorized licensee of the Complainant.
The Complainant contends that the Respondent registered the disputed domain names in bad faith with knowledge that the disputed domain names incorporated the Complainant's marks, that he had no right to use the disputed domain names, or to retain the disputed domain names upon the Complainant's termination of the Trademark License. Relying on Extreme Networks Limited, Extreme Drinks Limited v. Ex Drinks, LLC,WIPO Case No. D2013-0197, the Complainant urges that bad faith registration may be inferred from the Respondent's subsequent conduct in refusing to abide by the Trademark License. The Complainant further asserts that bad faith registration and use may be found under the "unified concept" articulated in City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE,WIPO Case No. D2009-0643, and Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions,WIPO Case No. D2009-0786. (ii)Complainant's Supplemental Submission
The Complainant relates that the Complainant and the Respondent were in negotiations regarding the 2008 Retailer Agreement as early as December 26, 2007, and that the Respondent registered the disputed domain names on January 31, 2008. According to the Complainant, the 2008 Retailer Agreement was executed by the Parties on June 4, 2008. The Complainant submits that the Respondent warranted he had not previously registered and would not in the future register any domain names incorporating the Complainant's trademarks, and that if such domain names had been previously registered the Respondent would notify the Complainant and if requested transfer the domain name to the Complainant. Accordingly, the Complainant asserts that the Respondent's registration of the disputed domain names prior to entering into the 2008 Retailer Agreement clearly was in bad faith.
The Complainant reiterates that the Respondent entered into a series of successive Retailer Agreements beginning on June 4, 2008, and continuing through December 31, 2014. The Complainant observes that each of the accompanying Retailer Agreements included a Trademark License Agreement proscribing any confusingly similar use of domain names incorporating the Complainant's DISH and DISH LATINO marks. The Complainant submits that the Respondent's registration and use of the disputed domain names breached the Trademark License Agreements and violated the Complainant's Business Rules that the Respondent had agreed to adhere to. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting". Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term "cybersquatting" is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name 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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name are deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain names , , and are confusingly similar to the Complainant's DISH and DISH LATINO marks, in which the Complainant has established rights through registration and use in commerce. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.2 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant's trademark and the disputed domain name.
In this case, the Complainant's DISH and DISH LATINO marks are clearly recognizable in the disputed domain names.3 The inclusion of the descriptive Spanish words "para todos" ("for all" in English) does not dispel the confusing similarity of the disputed domain names to the Complainant's mark. Top-Level Domains ("TLDs") generally are disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.4
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed in the record that the Trademark Licenses granted to the Respondent in connection with the Complainant's DISH and DISH LATINO marks did not include the Respondent's use of the Complainant's marks in confusingly similar domain names. Further, it is undisputed that upon the termination of the 2013 Retailer Agreement the Respondent's Trademark License was revoked. Notwithstanding, the Respondent has ignored the Complainant's repeated requests for transfer of the disputed domain names, which the Respondent instead is using with a website advertising the services of direct competitors of the Complainant.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent's registration and use of the disputed domain names within any of the "safe harbors" of paragraph 4(c) of the Policy.
Having regard to all of the relevant circumstances in this case, and in the absence of any explanation by the Respondent, the Panel concludes that the Respondent would have been aware of the Complainant's DISH and DISH LATINO mark when registering the disputed domain names. The Parties had already been in discussions regarding the Respondent becoming a non-exclusive retailer for the Complainant at the time the Respondent registered the disputed domain names. In all likelihood the Respondent at that time knew or had good reason to expect he would not be permitted to use of the Complainant's marks in confusingly similar domain names. Regardless, any claim by the Respondent not to have been aware of the provisions of Sections 6 and 7 of the Trademark License Agreement at the time the Respondent entered into the 2008 Retailer's Agreement and Trademark License strains credulity.
To the extent that the Respondent could be characterized as a reseller or distributor of the Complainant's Pay-TV products and services, the Panel considers whether the Respondent could assert to be making a nominative or fair use of the disputed domain names. UDRP panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant's trademark in connection with sales of or repairs to the complainant's goods or services may in appropriate circumstances assert a legitimate interest in the domain name based on a bona fide offering of such goods or services. See WIPO Overview 3.0, section 2.8.1 and cases cited therein.
The most often cited UDRP decision evaluating domain names of resellers and distributors is Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (hereinafter "Oki Data"). In Oki Data,the respondent was a reseller of the complainant's OKIDATA-branded products, and registered the domain name . The panel in Oki Data concluded that the use of a manufacturer's trademark as a domain name by a reseller could be deemed a "bona fide offering of goods or services" within the meaning of the Policy only if the following conditions are satisfied: (1) the respondent must actually be offering the goods or services at issue; (2) the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods); (3) the site itself must accurately disclose the respondent's relationship with the trademark owner; and (4) the respondent must not try to "corner the market" in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
The record in the instant case does not reflect the Respondent's observance of the Oki Data criteria. The Respondent does not accurately disclose its relationship with the Complainant on the website to which the disputed domain names resolve. Further, the Respondent does not use the site to offer only the Complainant's trademarked products and services. See also BlackRock Institutional Trust Company, N.A. v. Investors FastTrack,WIPO Case No. D2010-1038 (respondent's use of a domain name incorporating the complainant's mark to attract Internet visitors to site also providing information about competing products has "bait and switch" feel to it); See National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin' Connection, Inc.,WIPO Case No. D2007-1524. Moreover, the Oki Data test does not apply where a prior agreement between the parties, express or otherwise, expressly prohibits the registration or use of a domain name incorporating the complainant's trademark. See WIPO Overview 3.0, section 2.8.1.
Accordingly, the Panel concludes that the Respondent has not used or demonstrated preparations to use the disputed domain names in connection with a bona fide offering of goods or services. Further, there is no evidence in the record that the Respondent has made a legitimate noncommercial or fair use of the disputed domain names, and no indication that the Respondent has been commonly known by any of the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a finding of the Respondent's rights or legitimate interests in the disputed domain names.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent's conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent was aware and had the Complainant's DISH and DISH LATINO marks firmly in mind when registering the disputed domain names. The Respondent did so notwithstanding that the Parties' agreements expressly proscribed the Respondent's registration and use of the disputed domain names without the Complainant's consent. The Respondent has retained the disputed domain names despite provisions in the Parties' agreements clearly requiring that the disputed domain names be transferred to the Complainant.
In the absence of any explanation from the Respondent, the Panel concludes from the totality of circumstances in this case that the Respondent registered the disputed domain names based on the attractiveness of the Complainant's marks, in order to drive traffic to the Respondent's website, where the Respondent has offered Pay-TV products and services of competitors of the Complainant. In the attendant circumstances of this case, the Panel considers it more likely than not that the Respondent's primary motive in relation to the registration and use of the disputed domain names was to capitalize on, or otherwise take advantage of, the Complainant's trademark rights, for commercial gain. The Respondent registered and is using of the disputed domain names in bad faith.
While not necessary given the Panel's findings above, the Panel recalls the Complainant's arguments pursuant to the "unified concept", and notes this is not generally followed. See WIPO Overview 3.0, section 3.2.1.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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 names, , , and be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: June 19, 2018
1 The Complainant's DISH LATINO and DISHLATINO marks hereinafter are referred to collectively as the "DISH LATINO marks". Each of the Complainant's trademarks asserted herein was registered by the United States Patent and Trademark Office ("USPTO") pursuant to Section 2(f) of the United States Trademark Act, 15 U.S.C. §1052(f), as having acquired distinctiveness or secondary meaning through substantially continuous and exclusive use.
2 See WIPO Overview 3.0, section 1.7.
3 Id. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy.
4 See WIPO Overview 3.0, section 1.11.2 and cases cited therein.
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