Complainant is Directv, Inc. of California, United States of America represented by FairWinds Partners, LLC, United States of America.
Respondent is Ling Burrus of Anhui, People’s Republic of China. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with 101domain, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2011. On May 5, 2011, the Center transmitted by email to 101domain, Inc. a request for registrar verification in connection with the Domain Name. On May 6, 2011, 101domain, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on May 6, 2011.
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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 1, 2011.
The Center appointed Clive L. Elliott as the sole panelist in this matter on June 7, 2011. 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 Domain Name was registered on April 1, 2011. 5. Parties’ Contentions A. Complainant
Complainant states that it is America’s leading satellite TV service employing more than 16,000 people and offering more than 265 digital channels to over 50 million viewers. It provides access to programmes delivered to homes, hotels, restaurants and hospitals, airports, office buildings, airplanes, automobiles and portable electronics. Complainant advises that as well as offering the content of networks such as CNN, CNBC, Fox, HBO, ABC, CBS, NMC, ESPN, Discovery and Animal Planet, its innovations in creating its own broadcast content have led to six Emmy® Awards. Complainant also advises that it is the exclusive United States rights holder to TV sports packages such as NFL Sunday Ticket, NCAA Mega March Madness and NASCAR Hot Pass.
Complainant states that it is the owner of its DIRECTV trademark and corresponding logo (hereinafter the “Complainant’s Trademark / Marks”) and that from as early as 1994 it commenced use of the Marks in connection with the delivery of high quality digital TV services and the distribution and installation of satellite TV dish receivers, tuning boxes and other products and services related to such TV services. Complainant advises that it has used the Marks in commerce continually since 1994. Complainant also states that it promotes its Marks extensively through print, radio and television advertising and that, as well as being awarded numerous J.D. Power’s awards for residential cable and satellite TV customer satisfaction, it also came in at the top of the list in Michigan’s American Customer Satisfaction Index for many years in a row.
Complainant asserts that as well as generating significant sales revenue as a result of its advertising and marketing it conducts on its “” website, it also provides information to prospective customers in a number of different languages through its domain name, and is able to process the rebate claims of its customers through its domain name. Complainant submits that as a result of its use the Marks serve to identify and indicate the source of its goods and services to the consuming public and have become well-known to, and widely recognised by, consumers. Complainant states that its Marks are aggressively protected through registration and enforcement.
Complainant submits that the Domain Name is identical or confusingly similar to its Marks as Respondent has merely added to Complainant’s DIRECTV trademark the top-level domain indicator “.so”, which is the extension for Somalia. This, Complainant submits, is likely to cause confusion with Internet searchers into believing that there is a connection of source, sponsorship, affiliation or endorsement between Complainant and Respondent by Respondent’s use of the Domain Name.
Complainant asserts that Respondent’s actions are not a bona fide offering of goods or services as through the use of a registrar parking page the Domain Name diverts Complainant’s customers and potential customers to the registrar and its services which are not associated with Complainant. Complainant also asserts that upon information and belief Respondent is not commonly known by the domain name or the name Directv, nor does Respondent operate a business or other organization under such marks or names and does not own any trademark or service mark rights in these names.
Complainant suggests that Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain and instead it is using the Domain Name to confuse and misleadingly divert consumers or to tarnish the Marks of Complainant. Complainant contends that Internet users searching for Complainant’s various goods and services, who found the domain name, would be confused and think they were visiting a site of Complainant’s until they discovered that they were in a directory of links to competitors and other goods and services. Complainant asserts that as a result Respondent’s use has tarnished and diluted the DIRECTV Marks and Respondent has diminished consumers’ capacity to associate the Marks with the quality products offered under the Marks by Complainant. Complainant suggests that Respondent’s use of Domain Name creates a very real risk that Complainant’s trademarks are not only being associated with numerous products and services not related to its branded products, but also to products and services over which Complainant has no quality control.
Complainant submits that Respondent has registered the Domain Name in bad faith and that this submission is supported by the unsolicited email it received on April 18, 2011 from Respondent, or someone acting on behalf of Respondent, offering to sell the Domain Name. Complainant advises that this email was forwarded to its own outside domain name consultant who engaged in a dialog with the sender of the email, Ms. Chen. The dialogue ended in Ms. Chen advising that they would “wait for the right TV campaign to sell this domain”. Complainant submits that this is evidence of Respondent’s bad faith.
Complainant contends that further evidence of Respondent’s use of the Domain Name in bad faith can be seen by Respondent intentionally attempting to attract, for commercial gain, Internet searchers to its website by creating a likelihood of confusion with Complainant’s Marks. Complainant states that Respondent knowingly and intentionally used the DIRECTV Marks in violation of Complainant’s rights in its Marks and that the content on Respondent’s website reveals that it had actual knowledge of Complainant’s Marks and goods associated with them.
Complainant suggests that Respondent, or its registrar, is likely obtaining commercial gain from its use of the Domain Name as it is a registrar parking page providing advertising and links to the registrar’s services and as such the registrar gets free advertising and attracts customers and revenue via the web content which appears when users navigate to the domain name. Complainant asserts that Respondent’s registrar’s provision of advertising and generation of revenue from customers it attracts through the Domain Name alone constitutes commercial gain and whether or not Respondent itself is compensated by the registrar is irrelevant as Respondent is entirely and solely responsible for the content of its website. This, Complainant submits, is further evidence of bad faith registration by Respondent. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant has since in or about 1994 used the trademark DIRECTV. Such use has been on or in relation to a range of services connected to the delivery of high quality digital TV; and other products and services related to such TV services.
The Domain Name comprises the DIRECTV trademark (a contraction of “Direct” and “TV”), accompanied by the top-level domain indicator “.so”, the extension for Somalia. The Domain Name, in so far as the operative part is concerned, is identical and even with the “.so” extension is clearly confusingly similar to Complainant’s Trademark. Moreover, it incorporates Complainant’s distinctive DIRECTV trademark in its entirety.
This, Complainant submits, is likely to cause confusion with Internet searchers into believing that there is a connection of source, sponsorship, affiliation or endorsement between Complainant and Respondent, by Respondent’s use of the Domain Name. There is merit in this submission as the Domain Name must convey the same overall impression as Complainant’s Trademark and it is at the very least confusingly similar to Complainant’s Trademark.
Accordingly, the ground is made out by Complainant. B. Rights or Legitimate Interests
Complainant contends that Respondent is using the Domain Name on a registrar parking page and that the Domain Name diverts Complainant’s customers and potential customers to the registrar and its services which are not associated with Complainant. Complainant further contends that Internet users searching for Complainant’s various goods and services, who instead find the Domain Name, would be confused and think they are visiting a site of Complainant until they discover that they are in a directory of links to competitors and other goods and services. Neither of these contentions are disputed and they are accepted by the Panel as valid.
Respondent is using the Domain Name for demonstrably commercial purposes. It is well established that rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless it was seeking to create a mistaken impression of identification or association with the complainant. The Panel is of the clear view that the mere addition of the country code “.so” to Complainant’s DIRECTV Trademark does not create a new or different name or mark in which Respondent has rights or legitimate interests.
Complainant makes out this ground. C. Registered and Used in Bad Faith
Given the prominence and unusual spelling of Complainant’s DIRECTV Trademark, it is found that Respondent registered the Domain Name in bad faith, with knowledge (actual or imputed) that including the DIRECTV Trademark as part of the Domain Name would be likely to cause an Internet user visiting Respondent’s web site (or through other means) to incorrectly assume that the Domain Name is somehow sponsored by or affiliated with Complainant.
Respondent’s registration and use of the Domain Name, which as previously noted incorporates Complainant’s entire DIRECTV Trademark, supports a finding of bad faith. Respondent’s failure to answer any of these allegations or provide any form of explanation supports the conclusion that the Domain Name was registered and is being used in bad faith and that Complainant is entitled to relief pursuant to the Policy. 7. Decision
For all 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.
Clive L. Elliott
Sole Panelist
Dated: June 21, 2011
Full & Egal Universal Law Academy