Complainant is Hughes Network Systems LLC of Germantown, Maryland of United States of America, represented by Global IP Counselors, United States of America.
Respondent is Registration Private - ID CR122781679, Domains by Proxy, LLC, DomainsByP of Scottsdale, Arizona, United States of America; “a-sat”, John Pearce dba A-SAT of United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2017. On September 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 14, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent on page 2 of the Complaint and contact information in the Complaint. The Center sent an email communication to Complainant on September 21, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on September 21, 2017.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on September 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2017. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 19, 2017.
The Center appointed Robert A. Badgley as the sole panelist in this matter on November 1, 2017. 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
Complainant is a major telecommunications provider. Since 2006, Complainant has used the HUGHESNET mark in commerce. Complainant holds several registered trademarks, including United States Patent and Trademark Registration No. 3277871 registered August 7, 2007, for HUGHESNET in connection with telecommunications and related services.
Respondent A-SAT has been a reseller of Complainant’s services since November 2010, when it (through its principal, John Pearce) entered into a Direct Sales Agency Agreement with Complainant. That contract states, in relevant part, that Respondent would submit to Complainant “for prior approval” all of its “advertising material.” The contract further states that Respondent “shall not acquire any right to any goodwill, Mark, copyright, or other form of intellectual or commercial property of Hughes, except for the limited use rights expressly granted.” The contract also provides that, absent approval from Complainant, Respondent shall not use the mark HUGHESNET in any “URL or website address.”
Respondent registered the Domain Name on August 30, 2012. For a time (the Complaint and Annexes do not make it clear), it appears that the Domain Name resolved to a website at which Respondent seemingly offered satellite communications services as an “Authorized Retailer” of Complainant. An employee of Complainant became aware of Respondent’s registration and use of the Domain Name in 2016, and made contact with Respondent. According to the Complaint and an affidavit sworn by that employee, Respondent refused to surrender the Domain Name and offered to sell it for USD 10,000.
Subsequent to this exchange, Respondent directed the Domain Name to a website featuring “Bob Hughes Fishing,” an allegedly fictitious character shown holding up large fish and promising to post upcoming videos on YouTube. According to Complainant, this website is designed to embarrass Complainant and tarnish its mark. 5. Parties’ Contentions A. Complainant
Complainant contends that it has satisfied all three of the elements required under the Policy for a transfer of the Domain Name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the mark HUGHESNET through registration and substantial use. The Domain Name is identical to Complainant’s mark.
Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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 Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent clearly violated the terms of the agreement it signed with Complainant in 2010 by registering a Domain Name identical to the HUGHESNET mark. Breaching a clear contractual duty toward Complainant cannot give rise to a legitimate interest in the Domain Name, and nothing else in the record suggests any legitimacy Respondent may have had vis-à-vis the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line 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 or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and is using the Domain Name in bad faith. There is no doubt that Respondent was well aware of Complainant’s HUGHESNET mark when Respondent signed the dealer agreement in 2010, and Respondent clearly maintained such knowledge when it registered the Domain Name in 2012. As stated above, the contract between Respondent and Complainant specifically stated that Respondent shall not use the names HUGHESNET in any “URL or website address” (section 2.3 of the contract).
As respects bad faith use of the Domain Name, the Panel finds bad faith under Policy paragraph 4(b)(i), quoted above. After violating its contract by registering a Domain Name identical to the HUGHESNET mark, Respondent’s first reaction upon being confronted by Complainant was to offer it for sale for USD 10,000. Moreover, Respondent’s bad faith is underscored by the fact that, as a previous authorized reseller of Complainant’s services, Respondent has now used the Domain Name to host a silly fishing website.
Complainant has established Policy paragraph 4(a)(iii). 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 Complainant.
Robert A. Badgley
Sole Panelist
Date: November 7, 2017
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