DIRECTV, Inc. v. Toshi Amori
Claim Number: FA1106001394254
Complainant is DIRECTV, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Toshi Amori (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mydirectv.com>, registered with Dynadot, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 18, 2011; the National Arbitration Forum received payment on June 22, 2011.
On June 20, 2011, Dynadot, LLC confirmed by e-mail to the National Arbitration Forum that the <mydirectv.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 23, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 13, 2011 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@mydirectv.com. Also on June 23, 2011, 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 July 15, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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. The Complainant owns the DIRECTV Trademarks and makes extensive use of them such that they have become famous.
(a) Complainant Owns The Marks Complainant is the owner of the distinctive and well known DIRECTV trademark and its corresponding logo (the “Marks”). At least as early as 1994, Complainant 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. Since that time, Complainant has continually used the Marks in commerce.
(b) The Marks Are Extensively Used, Promoted and Protected. Complainant is America's leading satellite TV service and its more than 16,000 employees offer 265+ digital channels to over 50 million viewers. The company provides access to quality programming delivered to homes, airports, hotels, restaurants, hospitals, office buildings, airplanes, automobiles and portable electronics. It offers the content of such famous networks as CNN, CNBC, Fox, HBO, ABC, CBS, NBC, ESPN, Discovery, Animal Planet and others, and its innovations in creating its own broadcast content have led to six Emmy® Awards. Complainant is also the exclusive US rights holder to TV sports packages such as NFL Sunday Ticket, NCAA Mega March Madness, and NASCAR Hot Pass.
Complainant extensively promotes its DIRECTV Marks through print, radio and, especially television advertising. Complainant has also been awarded numerous J.D. Power's awards for residential cable and satellite TV customer satisfaction and came in at the top of the list in Michigan's American Customer Satisfaction Index many years in a row.
Complainant generates significant sales revenue as a result of the advertising and marketing it conducts on its <directv.com> website. Through its <directvinternational.com> domain, Complainant provides information to prospective customers in a number of different languages. Also, through its <directvrebate.com> domain, Complainant processes the rebate claims of its customers. As a result of Complainant’s use, the Marks serve to identify and indicate the source of Complainant’s goods and services to the consuming public and have become well-known to, and widely recognized by consumers. Examples of how the Marks are used on Complainant’s goods and services are provided at Exhibits D 1-6.
Complainant’s DIRECTV marks are aggressively protected through registration and enforcement. Amongst others, Complainant owns United States Federal Trademark Registrations for the Marks as follows:
Mark Reg. No. Reg. Date
DIRECTV 2503432 6-Nov-2001
DIRECTV 2698197 18-Mar-2003
DIRECTV (Logo) 2939061 12-Apr-2005
DIRECTV (Logo) 2820253 2-Mar-2004
DIRECTV (Logo) 2628178 1-Oct-2002
DIRECTV2PC 3598467 31-Mar-2009
2. Respondent’s registration of the <mydirectv.com> violates the Policy.
(a) The <mydirectv.com> domain is identical or confusingly similar to the Marks under Policy ¶4(a)(i). Respondent’s domain <mydirectv.com> is confusingly similar, on its face, to Complainant’s registered DIRECTV trademarks. Searchers will likely be confused 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 <mydirectv.com>.
It has been held, in decisions too numerous to mention, that the mere addition of generic or other short words or letters to a trademark creates a confusingly similar domain name. For example, in DIRECTV, Inc v. Digi Real Estate Foundation, NAF Claim No. FA0702000914942 the Panel found that the <dishdirectv.com> domain name contains Complainant’s mark in its entirety and only adds the generic word ‘dish.’ Prefixing ‘directv’ with the generic word ‘dish’ does not prevent a finding of confusingly similarity under Policy ¶4(a)(i).” The Panel held that the domain is “likely to cause confusion among customers searching for Complainant’s goods and services.” Also, in Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., WIPO Case No. D2001-0075 the Panel found that the domain name <christiesauction.com> is confusingly similar to the complainant's mark since it merely adds the word “auction” used in its generic sense.
Similarly to the above-cited decisions, the Respondent in the present dispute merely adds the word “my” to Complainant’s DIRECTV trademark. The use of this word only enhances consumer confusion since the “my” formative is widely used in other popular online services such as MySpace.com, My Yahoo, MyPay, MyPhone, and the like.
(b) Respondent has no rights or legitimate interest in the <mydirectv.com> Domain Under Policy ¶4(a)(ii). Section 4(c) of the Policy sets out certain circumstances which, if proven by the evidence presented, may demonstrate Respondent’s rights or legitimate interests to the Disputed Domains. None of these circumstances apply to Respondent in the present dispute.
Respondent’s actions are not a bona fide offering of goods or services under Policy ¶4(c)(i). Through the use of a classic pay-per-click website, Respondent’s domain name diverts Complainant’s customers and potential customers to Respondent’s pay-per-click website and then to other websites which are not associated with Complainant. ICANN panels have found that leading consumers who are searching for a particular business, to a site where the same or similar services provided by others are listed, is not a bona fide use. Homer, TLC Inc. v. Kang, NAF Case No. FA573872 (“Respondent’s use of domain name that is identical to Complainant’s mark to divert Internet users to third-party website for Respondent’s own commercial gain does not constitute a bona fide offering ... or a legitimate noncommercial or fair use ....”).
Respondent is not commonly known by the <mydirectv.com> domain or the name DIRECTV and so its actions do not fall within Policy ¶4(c)(ii). Upon information and belief, Respondent is not commonly known by any of Complainant’s Marks, 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. See, Dell Inc. v. George Dell and Dell Net Solutions, WIPO Case No. D2004-0512 (Regarding the domain <dellnetsolutions.com> “there is no evidence that the Respondents’ business has been commonly known by that name. Further, the Respondents added terms to the surname to create the disputed domain name.”)
Respondent is not making a legitimate noncommercial or fair use of the <mydirectv.com> domain without intent for commercial gain, and so its actions do not fall within Policy ¶4(c)(iii). Instead, Respondent is using the <mydirectv.com> domain to confuse and misleadingly divert consumers, or to tarnish the Marks of the Complainant. In Dr. Ing. h.c. F. Porsche AG v. Limex, LLC, WIPO Case No. D2003-0649 the Panel noted that “The 3 domain names in issue use the PORSCHE trademark to attract potential customers to the generic [auto] loan business.” The Panel held that such use, in a domain name, of one manufacturer’s trademark to offer products or services relating to goods sold under that trademark and also other manufacturer’s trademarks did not constitute a legitimate or fair use of the domain. Id.
Further, in Athanasios, supra, the Panel found that respondent’s use “could in no way be characterized as fair, because consumers would think that they were visiting a site of the Complainant until they found that instead they were in a directory which would do the Complainant potential harm”. Here, searchers for Complainant’s various goods and services, who found the <mydirectv.com> domain, would be confused and think they were visiting a site of the Complainant’s until they discovered that they were in a directory of links to competitors and other goods and services. Such use cannot be considered fair. See, Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258 (“While the intention to earn click-through-revenue is not in itself illegitimate, the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use. See for instance L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc. WIPO Case No. D2005-0623.”)
Lastly, Respondent’s use has tarnished and diluted the DIRECTV Marks. Respondent has diminished consumers’ capacity to associate the Marks with the quality products offered under the Marks by the Complainant by using the Marks in association with a directory site which provides links to numerous products and services not associated with or related to the Complainant’s quality branded products. Respondent’s use creates the very real risk that Complainant’s trademarks are not only being associated with numerous products and services not related to Complainant’s branded products, but also to products and services linked to directory sites over which Complainant has no quality control.
(c) Respondent Registered The <mydirectv.com> Domain In Bad Faith Under Policy ¶4(a)(iii). The Policy clearly explains that bad faith can be found where a Respondent, by using a domain name, intentionally attempts to attract, for commercial gain, Internet searchers to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. See Policy ¶4(b)(iv).
Respondent intentionally used the DIRECTV Marks without consent from Complainant. Respondent was put on constructive notice of Complainant’s rights in its Marks through Complainant’s extensive prior use of the Marks as well as its various trademark registrations, most of which predate the date on which Respondent acquired the <mydirectv.com> domain. See, American Funds Distributors, Inc. v. Domain Administration Limited, WIPO Case No. D2007-0950 (“the extensive prior use of that name and the fact that it comprises the dominant part of several U.S. registered trademarks provided constructive knowledge of the Complainant’s trademark rights….”). Therefore, Respondent knowingly and intentionally used the DIRECTV Marks in violation of Complainant’s rights in its Marks. Moreover, the content on Respondent’s website at the <mydirectv.com> domain reveals that Respondent has actual knowledge of the Marks and Complainant’s goods associated with each and is purposefully trading on the Marks.
Respondent is obtaining commercial gain from its use of the website at the <mydirectv.com> domain. This is a directory or “pay-per-click” website providing a listing of hyperlinks, some of which lead to Complainant’s websites and some to the websites of Complainant’s competitors. Upon information and belief, each time a searcher clicks on one of these search links, Respondent receives compensation from the various website owners who are linked through the website of the <mydirectv.com> domain. Most likely, Respondent receives compensation based upon the number of hits the website owners get from being linked to the directory site. See AllianceBernstein LP v. Texas International Property Associates - NA NA, WIPO Case No. D2008-1230, and Brownells, D2007-1211 (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain).
In, AllianceBernstein the respondent registered the domain name <allaincebernstein.com>, which was indisputably identical to the complainant’s ALLIANCEBERNSTEIN mark. The domain name led to a search directory website with links to third party vendors, including competitors of complainant. Id. The Panel inferred that the respondent received click-through fees by directing users to various commercial website via these links and found that the respondent’s use was for commercial gain and was in bad faith under Policy ¶4(b)(iv). Id.
In Brownells, the respondent registered the domain name <brwonells.com>, which the panel found to be nearly identical to the complainant’s mark, with two of the letters in the mark reversed. Brownells, D2007-1211. The respondent’s website offered links to hunting equipment and related items. Id. The panel found that such listing of links were provided purely for respondent’s commercial gain. Id.
Here, Respondent’s generation of click-through fees from its operation of a pay-per-click site under the <mydirectv.com> domain alone constitutes commercial gain. See AllianceBernstein, D2008-1230. Moreover, similar to the facts in Brownells and AllianceBernstein, Respondent’s use of the domain name and website results in a commercial gain for others by placing links to competitors of Complainant and other individuals, groups or entities on its website. Just as commercial gain was sought for the respondents in the abovementioned cases, commercial gain was sought by Respondent here for itself and the various website owners who were linked to the web pages of the <mydirectv.com> domain. Respondent’s use of this domain name is commercial because the various companies linked to the directory sites of the <mydirectv.com> domain benefit from the subsequent interest and purchases of those searches. ICANN Panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. See, Focus Do It All Group v. Athanasios Sermbizis, WIPO Case No. D2000-0923 (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial).
Of course, as the owner of the <mydirectv.com> domain, Respondent is entirely and solely responsible for the content of its website. See, Disney Enterprises, Inc. v. ll, NAF Claim No. FA1007001336979 (2010) (Respondent acted in bad faith, despite its claimed lack of control over the content on its parked, pay-per-click website); MasterCard International Incorporated v. Banu Asum Kilich, WIPO Case No. D2009-1525 (Panel agreed with complainant’s assertion that “as the owner of the disputed domain name, [respondent] is responsible for the contents of the website, regardless of whether a third party profits from the links placed on the website.”
Finally, as more fully set forth above, Respondent’s bad faith is demonstrated by its intentional use of the DIRECTV Marks in its domain name to attract Internet searchers by creating a likelihood of confusion with Complainant’s Marks. See, e.g., DIRECTV, Inc v. Digi Real Estate Foundation. Thus, all of the factors under Policy ¶4(b)(iv) strongly demonstrate that Respondent has registered and used the <mydirectv.com> domain in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant DIRECTV, Inc. owns the DIRECTV mark, which it uses in connection with the delivery of digital television services and the distribution and installation of related products and services. Complainant has multiple registrations for its DIRECTV mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,503,432 filed February 15, 1999; issued November 6, 2001).
Respondent Toshi Amori purchased the disputed domain name on or about July 7, 2010, even though the domain name was originally registered on December 5, 2000. The <mydirectv.com> domain name resolves to a page which displays links to third-party websites which compete with Complainant’s business.
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 Complainant to 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 contends it has rights in the DIRECTV mark. The registration of a mark with a federal trademark authority is sufficient for a complainant to establish rights in a mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶4(a)(i) through registration of the mark with the USPTO); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶4(a)(i)). When conducting a Policy ¶4(a)(i) analysis, the rights in a mark go back at least to the date when a trademark registration was filed. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”); see also Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶4(a)(i) dates back to Complainant’s filing date.”). Additionally, the registration need not be in the respondent’s jurisdiction to maintain rights against the respondent in a UDRP proceeding. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Complainant registered the DIRECTV mark with the USPTO (e.g., Reg. No. 2,503,432 filed February 15, 1999, issued November 6, 2001). As such, the Panel finds Complainant has established rights in the DIRECTV mark under Policy ¶4(a)(i).
Complainant contends the <mydirectv.com> domain name is confusingly similar to its mark. The Panel finds Respondent’s addition of a generic top-level domain (“gTLD”) is irrelevant in differentiating the domain name from Complainant’s mark. 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); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Since domain names must contain either a gTLD or a ccTLD by definition, to hold otherwise would eviscerate the UDRP. Furthermore, the Panel concludes Respondent’s addition of the generic term “my” to the fully-incorporated DIRECTV mark in the domain name failed to distinguish the domain name from the mark. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). Without more substantial changes made to Complainant’s mark in the disputed domain name, the Panel finds the <mydirectv.com> domain name is confusingly similar to Complainant’s DIRECTV mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
When a complainant made allegations against a respondent, it is incumbent upon the complainant to make a prima facie case before the burden shifts to the respondent to prove the allegations are false. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶4(c)). The Panel finds Complainant has made a prima facie case in support of its claim Respondent lacks rights and legitimate interests in the disputed domain name. Respondent failed to submit a response to the Complaint, and therefore the Panel may assume Respondent does not have rights or legitimate interests in the <mydirectv.com> domain name. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Out of an abundance of caution, the Panel will review the record to determine if there is any evidence which suggests Respondent has rights or legitimate interests in the <mydirectv.com> domain name under Policy ¶4(c).
Respondent has been accused of lacking rights and legitimate interests in the disputed domain name. This may be potentially overcome if Respondent is commonly known by the disputed domain name. The Panel will review the information available, including the WHOIS information for the <mydirectv.com> domain name to determine if Respondent is commonly known by the disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name). Respondent is not affiliated with Complainant or Complainant’s mark. Respondent has not been using the DIRECTV mark under the authorization of Complainant. Additionally, the WHOIS information for the disputed domain name lists “Toshi Amori” as the domain name registrant. The Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii).
Complainant contends Respondent is using the disputed domain name for neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Panels have found that using a disputed domain name to display links to third-party websites which compete with a complainant demonstrates a lack of rights or legitimate interests in a disputed domain name on the part of a respondent. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶4(c)(i), or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names). Respondent’s sole use of the disputed domain name is to display links to third-party websites. Some of these sites provide goods and services which compete with those which Complainant provides. Therefore, the Panel finds Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant contends Respondent is disrupting its business having registered and used the disputed domain name. Previous panels have found websites are disruptive when they are registered and used in order to display links to third-party websites in competition with Complainant. 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’s business is disrupted when its consumer base is undermined by the diversion of Internet users to the Complainant’s competitors’ websites. The Panel finds Respondent’s use of the <mydirectv.com> domain name to display links to Complainant’s competitors diverts Internet users away from Complainant’s website thus disrupting its business pursuant to Policy ¶4(b)(iii).
The operative date is the date when Respondent acquired the disputed domain name (assuming the Respondent is not a successor in interest to the previous domain name owner). In this case, Respondent acquired the domain name on or about July 7, 2010.
Complainant asserts the registration and use of the disputed domain name demonstrates bad faith because it was done for the purpose of attracting confused Internet users for commercial gain. Panels have found respondents who receive compensation for their registration and use of disputed domain names due to the display of links to third-party websites have demonstrated bad faith. See 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).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant). Complainant has alleged Respondent receives monetary awards for each Internet user which clicks through the links displayed on the disputed domain name. Given Respondent’s failure to respond to the Complainant, the Panel takes this to be true. The Panel finds Respondent’s registration and use of the disputed domain name on July 7, 2010 was done for commercial gain under Policy ¶4(b)(iv).
The Panel finds Policy ¶4(a)(iii) 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 <mydirectv.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: July 28, 2011
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