DirecTV, Inc. v. Jet Stream Enterprises Limited c/o Jet Stream
Claim Number: FA0911001296495
Complainant is DirecTV, Inc. (“Complainant”), represented by Steven
M. Levy,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <driectv.com>, registered with Enom, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 30, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 2, 2009.
On November 30, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <driectv.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On December 7, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 28, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@driectv.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 4, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant uses its DIRECTV
trademark in connection with the marketing of its telecommunications products.
Complainant holds trademark
registrations for the DIRECTV mark with the United States Patent and Trademark
Office (“USPTO”), including Reg. No. 2,503,432, issued November 6, 2001).
Respondent registered the
disputed domain name on June 6, 2002.
The disputed domain name resolves to a pay-per-click website featuring links to third-party websites unrelated to Complainant’s offering of telecommunications products.
Respondent’s <driectv.com> domain name is confusingly similar to Complainant’s DIRECTV mark.
The pertinent WHOIS information for the disputed domain name lists the registrant only as “Jet Stream Enterpises Limited c/o Jet Stream.”
Respondent does not operate a
business or other organization under the disputed domain name and does not own
any trademark or service mark rights in the DIRECTV name.
Employing a practice called “typo-squatting,” Respondent is using a typographical error in the contested domain name to redirect internet users to Respondent’s website.
Respondent profits from this practice through the collection of pay-per-click fees.
Respondent does not have any rights to or legitimate interests in the <driectv.com> domain name.
Respondent registered and uses the <driectv.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent 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.
Complainant has established rights in the DIRECTV trademark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):
As
the [complainant’s] mark is registered with the USPTO, [the] complainant has
met the requirements of Policy ¶ 4(a)(i).
See also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006): “Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”
Respondent’s <driectv.com> domain name is confusingly similar to Complainant’s DIRECTV mark pursuant to Policy ¶ 4(a)(i) because the disputed domain name merely transposes two letters in Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com.” These insubstantial alterations of Complainant’s DIRECTV mark in forming the disputed domain name create confusing similarity between the mark and the domain for purposes of Policy ¶ 4(a)(i). See, for example, Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to a complainant’s GOOGLE mark and noting that:
[t]he
transposition of two letters does not create a distinct mark capable of
overcoming a claim of confusing similarity, as the result reflects a very
probable typographical error.
See also Wyndham IP Corp. v. LaPorte Holdings, Inc., FA 373545 (Nat. Arb. Forum Jan. 17, 2005) (finding the <wynhdam.com> and <wyandham.com> domain names to be confusingly similar to a complainant’s WYNDHAM mark because the domain names merely transposed letters in the mark).
Similarly, we conclude that the addition of a gTLD to a
registered mark is irrelevant in distinguishing a disputed domain name and a
mark. See Trip Network
Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that affixing a gTLD
to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Jerry Damson, Inc. v.
The
mere addition of a generic top-level domain (‘gTLD’) “.com” does not serve to
adequately distinguish the Domain Name from the mark.
Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s DIRECTV mark pursuant to Policy ¶ 4(a)(i).
Complainant contends Respondent lacks rights to or legitimate interests in the disputed domain name. Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it has rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006):
complainant must first
make a prima facie case that
respondent lacks rights and legitimate interests in the disputed domain names
under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it
does have rights or legitimate interests.
See also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum
Aug. 18, 2006) (holding that a complainant must first make out a prima facie
case that a respondent lacks rights to and legitimate interests in a disputed
domain name under Policy ¶ 4(a)(ii) before the burden shifts to that respondent
to show that it does have such rights or interests in a domain name).
Complainant has established a prima facie case in support of its contentions under this head of
the Complaint, while Respondent, for its part, has failed to submit a response
in these proceedings. We are therefore
free to conclude that Respondent has no rights to or interests in the contested
domain name which are cognizable under the Policy. See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum
Respondent’s
failure to respond means that Respondent has not presented any circumstances
that would promote its rights or legitimate interests in the subject domain
name under Policy ¶ 4(a)(ii).
Nevertheless,
we will examine the record before us to determine, by reference to the criteria
set out in Policy ¶ 4(c), whether there is in it any basis for concluding that
Respondent has any rights to or legitimate interests in the disputed domain
name sufficient for purposes of the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that the pertinent WHOIS information for the disputed domain name lists the registrant only as “Jet Stream Enterpises Limited c/o Jet Stream,” and that Respondent does not operate a business or other organization under the disputed domain name and does not own any trademark or service mark rights in the DIRECTV name. No contrary evidence appearing in the record, we are constrained to conclude that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights or legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it is commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent had no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that that respondent was commonly known by the domain name there in issue).
We also observe that there is no dispute as to Complainant’s
allegation to the effect that Respondent’s domain name resolves to a website featuring links to websites unrelated to
Complainant’s telecommunications business.
In the circumstances here presented, we may comfortably presume that
Respondent receives pay-per-click fees from these linked websites. We therefore conclude that Respondent is not
using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) or making a legitimate noncommercial or fair use of the disputed domain
name pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June
11, 2006) (finding that a respondent’s use of a domain name to redirect
Internet users to websites unrelated to a complainant’s mark is not a bona
fide use under Policy ¶ 4(c)(i)); see also Constellation Wines U.S., Inc. v.
Complainant also submits, and Respondent does not deny, that Respondent is using a typographical error in the contested domain name to redirect Internet users to Respondent’s website and is profiting through the collection of pay-per-click fees, as alleged. Respondent is thus engaged in typo-squatting, which is evidence that Respondent has no rights to or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (finding that a respondent’s domain names were confusingly similar to a complainant’s mark where the disputed domain names were common misspellings of the mark involving keys that were adjacent to the common keyboard keys comprising that complainant’s mark); see also Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum July 23, 2002) (finding that the <neimanmacus.com> domain name was a simple misspelling of a complainant’s NEIMAN MARCUS mark and was a classic example of typo-squatting, which demonstrated a lack of rights or interests on the part of that respondent in the domain name there in question).
The Panel thus finds that the proof requirements of Policy ¶ 4(a)(ii) have been satisfied.
We have already concluded that Respondent is using the disputed domain name to collect click-through fees while directing Internet users to websites unrelated to Complainant’s mark and business. Respondent’s use of the disputed domain name to attract Internet users attempting to access Complainant’s goods and services and redirect them to the website resolving from the disputed domain name and thereby to profit from the receipt of pay-per-click fees is evidence of bad faith registration and use of the contested domain pursuant to Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that a respondent registered and used the domain name <myspacebot.com> in bad faith by diverting Internet users seeking a complainant’s website to its own website for commercial gain where that respondent likely profited from this diversion scheme); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith registration and use of the domain under Policy ¶ 4(b)(iv)).
As established previously, Respondent has engaged in the practice of typo-squatting by using a common typographical error in the employment of Complainant’s DIRECTV mark in the contested domain name to misdirect Internet users looking for Complainant. Typo-squatting is itself evidence of Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that a respondent engaged in typo-squatting, which is evidence of bad faith registration and use of a domain name under Policy ¶ 4(a)(iii)); see also Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003):
Respondent’s
registration and use of the disputed domain name demonstrates a practice
commonly referred to as ‘typosquatting.’
This practice diverts Internet users who misspell Complainant’s mark to
a website apparently owned by Respondent for Respondent’s commercial gain. ‘Typosquatting’ has been recognized as
evidencing bad faith registration and use under Policy ¶ 4(b)(iv).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <driectv.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 15, 2010
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