DIRECTV, Inc v. Private Whois Service
Claim Number: FA1006001332164
Complainant is DIRECTV,
Inc. (“Complainant”), represented by Steven
M. Levy,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <directvrebates.com>, registered with Internet.bs Corp.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 28, 2010.
On June 28, 2010, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <directvrebates.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 July 14, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 3, 2010 by which Respondent could file a response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@directvrebates.com. Also on July 14, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 9, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
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" through submission of a Written Notice, as defined in Rule 1. 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:
1. Respondent’s <directvrebates.com> domain name is confusingly similar to Complainant’s DIRECTV mark.
2. Respondent does not have any rights or legitimate interests in the <directvrebates.com> domain name.
3. Respondent registered and used the <directvrebates.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, DIRECTV, Inc, provides digital TV services and distributes and installs satellite TV dish receivers, tuning boxes, and other related products and services. Complainant owns multiple trademark registrations for the DIRECTV mark with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 2,503,432 issued Nov. 6, 2001;
Reg. No. 2,628,178 issued Oct. 1, 2002;
Reg. No. 2,698,197 issued Mar. 18, 2003;
Reg. No. 2,820,253 issued Mar. 2, 2004; and
Reg. No. 2,939,061 issued Apr. 12, 2005.
Respondent, Private Whois Service, registered the <directvrebates.com> domain name on September 13, 2009. The disputed domain name resolves to a directory website with a listing of pay-per-click links to third-party websites both in competition with and unrelated to Complainant.
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 the 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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant owns multiple trademark registrations for the DIRECTV mark with the USPTO:
Reg. No. 2,503,432 issued Nov. 6, 2001;
Reg. No. 2,628,178 issued Oct. 1, 2002;
Reg. No. 2,698,197 issued Mar. 18, 2003;
Reg. No. 2,820,253 issued Mar. 2, 2004; and
Reg. No. 2,939,061 issued Apr. 12, 2005.
The Panel finds that such trademark registrations
sufficiently establish Complainant’s rights in the DIRECTV mark pursuant to
Policy ¶ 4(a)(i), regardless of whether Respondent
lives or operates in the same country. See Reebok Int’l Ltd. v.
Complainant contends that Respondent’s <directvrebates.com> domain name is confusingly similar to Complainant’s DIRECTV mark because the disputed domain name incorporates Complainant’s mark in full and adds only the generic term “rebates” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that adding a generic term to Complainant’s mark does not differentiate the disputed domain name according to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel also finds that appending the gTLD “.com” is irrelevant to a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that Respondent’s <directvrebates.com> domain name is confusingly similar to Complainant’s DIRECTV mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i)
has been satisfied.
Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain name. As Complainant has presented the prima facie case required by Policy ¶ 4(a)(ii), Respondent now has the burden of demonstrating rights and legitimate interests in the disputed domain name. Respondent, however, failed to respond to the Complaint and thus has not met the burden of demonstrating rights and legitimate interests. The Panel accordingly finds that Complainant’s allegations are true and that Respondent lacks rights and legitimate interests in the disputed domain name. See Am. Online, Inc. v. AOL Int’l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent’s failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). The Panel elects, however, to analyze the evidence in the record according to the Policy ¶ 4(c) factors to determine whether Respondent has rights and legitimate interests in the disputed domain name.
Complainant alleges that Respondent has no rights and legitimate interests in the <directvrebates.com> domain name since there is no evidence showing that Respondent is commonly known by the disputed domain name or that Respondent operates a business under the disputed domain name. The WHOIS information for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name. The Panel thus finds that the lack of evidence linking Respondent and the disputed domain name supports a conclusion that Respondent lacks rights and legitimate interests according to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
Complainant further asserts that there is no evidence supporting Respondent’s rights and legitimate interests in the disputed domain name because Respondent’s uses the <directvrebates.com> domain name to redirect Internet users to a directory website filled with third-party pay-per-click links to websites both competing with and unrelated to Complainant, such as links for “Satellite TV,” “Cable TV,” “Foreclosures,” and “Free Credit Report.” The Panel finds that such directories of pay-per-click links do not comply with Policy ¶ 4(c)(i) or ¶ 4(c)(iii), which require a bona fide offering of goods or services or a legitimate noncommercial or fair use. ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent uses the <directvrebates.com> domain name to resolve to a website advertising pay-per-click links that resolve to third-party websites, some of which compete with Complainant within the television and cable industry. Such a links directory substantially disrupts Complainant’s business because unsuspecting Internet users are directed away from Complainant’s actual site and may subsequently follow one of the displayed links to arrive at a competitor’s site. The Panel finds that such efforts to disrupt Complainant’s business show bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant contends that Respondent’s operation of a directory website reached via the <directvrebates.com> domain name presumably financially benefits Respondent. By displaying links that are related to Complainant’s television business, there is a greater likelihood that the links will be of interest to Internet users arriving at the site and that the Internet users will subsequently click on one of the links. Each click results in profit to Respondent by way of “click-through” fees. The Panel finds that Respondent’s efforts to increase traffic to its site and consequently profit by attracting Complainant’s intending customers are evidence of bad faith registration and use according to Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <directvrebates.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 11, 2010
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