DIRECTV, Inc. v. Jeff Lander
Claim Number: FA1203001434832
Complainant is DIRECTV, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Jeff Lander (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <directtvrebates.com>, registered with Fabulous.com Pty Ltd.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Luz Helena Villamil Jimenez as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 15, 2012; the National Arbitration Forum received payment on March 19, 2012.
On March 18, 2012, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <directtvrebates.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 March 21, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 10, 2012 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@directtvrebates.com. Also on March 21, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
A timely Response was received and determined to be complete on March 22, 2012.
Complainant submitted an Additional Submission on March 22, 2012 that was deemed to be in compliance with Supplemental Rule 7.
On March 30, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Luz Helena Villamil Jimenez 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
This Complaint is based upon the ownership and extensive use of the trademark DIRECTV registered by the Complainant in the United States of America. Complainant also relies on the fact that the trademark DIRECTV is well known and widely promoted, and has been in use as early as 1994. Complainant claims to be America's leading satellite TV service, providing access to quality programming delivered to homes, airports, hotels, restaurants, hospitals, office buildings, airplanes, automobiles and portable electronics, offering the content of famous networks as CNN, CNBC, Fox, HBO, ABC, CBS, NBC, ESPN, Discovery, and Animal Planet, among others. Moreover, through its <directvinternational.com> domain, Complainant provides information to prospective customers in a number of different languages.
Based on the foregoing, Complainant’s main contentions are as follows:
1. Respondent, Jeff Lander, registered the <directtvrebates.com> domain name on May 28, 2007.
2. The domain name <directtvrebates.com> is confusingly similar to Complainant’s registered and well known trademark DIRECTV. Thus, Respondent infringes upon and violates the Complainant’s rights under ICANN Policy 4(a)(i).
3. Respondent has a story of past infringing activity; there are several previous UDRP decisions in which it was ordered to transfer the respective domain names to the complainants.
4. Respondent’s registration of the <directtvrebates.com> domain name violates the Policy because:
a) The domain <directtvrebates.com> is identical or confusingly similar to the Marks under Policy ¶4(a)(i). The Respondent in the present dispute merely adds a “t” and the word “rebates” to a minor misspelling of Complainant’s DIRECTV trademark. The use of this word only enhances consumer confusion since many businesses offer rebates to their customers.
b) Respondent has no rights or legitimate interest in the domain <directtvrebates.com> under Policy ¶ 4(a)(ii). Respondent is using the <directtvrebates.com> domain to confuse and misleadingly divert consumers, or to tarnish the Marks of the Complainant.
c) Respondent registered the <directtvrebates.com> domain in bad faith under Policy ¶ 4(a)(iii). 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.
B. Respondent
The main arguments of the response given by the Respondent are:
1. The domain <directtvrebates.com> is generic.
2. The business of the Complainant is shown on its website as “Direc tv” or “Direct v”.
3. The domain name registered by the Respondent is “Direct TV”.
4. The domain <directtvrebates.com> has nothing to do with the Claimant’s business.
5. Should the Claimant wish to own the domain <directtvrebates.com>, it should go through the proper procedures to register it.
C. Additional Submissions
In light of the statements made in the Response given by the Respondent, Complainant submitted an Additional Written Statement pursuant to Rule 7(a) of the National Arbitration Forum Supplemental Rules to ICANN’s Uniform Domain Name Dispute Resolution Policy (“the Supplemental Rules).
In the Additional Written Statement the Claimant contends as follows:
1. As to the claim that the domain <directtvrebates.com> is a generic domain, the Claimant argues that the domain <directtvrebates.com> is likely to be viewed as incorporating the DIRECTV trademark by visitors to Respondent’s website and not as a generic or even a merely descriptive term. The Claimant adds that by pointing out the very minor differences between the phrase “Direct TV” and the DIRECTV trademark, Respondent seeks to apply only an “identical” standard of confusion rather than the proper “identical or confusingly similar” standard of UDRP. In sum, Complainant establishes that apart from the generic word “rebates” the first part of the <directtvrebates.com> domain looks and sounds virtually identical to the DIRECTV mark and has an identical meaning.
2. As to the lack of legitimate interest and Respondent’s bad faith in the registration and use of the domain name <directtvrebates.com>, Complainant disagrees with the Respondent’s statement according to which it did not act in bad faith by registering and using the domain because the phrase “Direct TV” is generic. Complainant deems these are unsupported contentions, while it has been demonstrated that Complainant’s registration, widespread promotion, advertising and use of its trademark DIRECTV evidence that the terms “DIRECT” and “TV” are widely recognized as referring exclusively to Complainant.
Complainant is the owner of the trademark DIRECTV and its corresponding logo, as it is evidenced with the several trademark registrations submitted with the Complaint. The Panel therefore finds that with such registrations Complainant has established rights in the mark DIRECTV under Policy ¶ 4(a)(i) regardless of the location of Respondent. 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).”).
The Panel also finds that the addition of the letter “t” to the domain <directtvrebates.com> together with the generic word “rebates” does not contribute to establish a difference between said domain and the trademark DIRECTV, registered and well known. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”).
Respondent contends that the <directtvrebates.com> domain name is comprised of common and generic terms and as such cannot be found to be identical and/or confusingly similar to Complainant’s mark. The Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)).
Complainant argues that Respondent is not commonly known by the disputed domain name or any of Complainant’s marks. The Panel notes that the disputed domain name registrant information identifies “Jeff Lander” as the registrant. Based upon this information, the Panel finds that indeed, Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further contends that Respondent is using the disputed domain name to resolve to a website featuring third-party links to Complainant and its competitors in the television and satellite television industries. The Panel notes that such links are contained under headings such as “DIRECTV® Official Site,” “DISH® – Official Site,” “XFINITY® Internet,” and “Verizon FiOS TV.” Complainant alleges that Respondent receives commercial compensation in relation to its directory website. The Panel finds that Respondent’s 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 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 that 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 Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did 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)).
Complainant asserts that Respondent has been the respondent in prior UDRP proceedings where it was ordered to transfer domain names at issue to the respective complainants. See Bath & Body Works Brand Mgmt., Inc. v. Landers, FA 1414376 (Nat. Arb. Forum Dec. 16, 2011); see also Areva v. Lander, D2011-0603 (WIPO May 16, 2011); see also Globe Union (Bermuda) Trading Ltd. v. Lander, FA 1357169 (Nat. Arb. Forum Dec. 7, 2010). The Panel finds that such prior UDRP proceedings evidence Respondent’s bad faith registration and use of the disputed domain name in the instant proceedings under Policy ¶ 4(b)(ii).
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."
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.
The first requirement of the Policy in Paragraph 4(a)(i) for the Complainant to meet is to demonstrate its rights over a trademark identical or confusingly similar to a domain name registered by the Respondent.
In the present case, Complainant demonstrated with the trademark registration copies submitted with the Complaint that it is the exclusive owner of the trademark DIRECTV and its design. Moreover, it was demonstrated that the trademark DIRECTV is widely used and promoted to an extent that it is not possible for anyone to argue that it did not know the existence of said mark.
The similarities between the trademark DIRECTV and the domain <directtvrebates.com> are undeniable. The sole pronunciation of the terms DIRECTV and DIRECT TV turn out to be almost identical, and the additional “t” included in the domain does not contribute to establish a difference between the terms. In fact, such letter “t” gives the appearance of having been be placed in the domain together with the generic word “rebates” just as an attempt to pre-manufacture an argument as to the difference of the terms and the generic condition of the domain. However, in practice it is evident for the Panel that indeed the domain is likely to be viewed as incorporating the DIRECTV trademark by visitors to Respondent’s website, a circumstance that no doubt may lead consumers to erroneously believe either that the website <directtvrebates.com> belongs to the Claimant, or that there is a business association between the Claimant and the Respondent.
In light of the foregoing, there is no doubt for the Panel that the Policy requirement in Paragraph 4(a)(i) is met as to the fact that the disputed domain name <directtvrebates.com> is confusingly similar to the trademark DIRECTV owned by the Claimant.
As mentioned before, the fact that Respondent is using the disputed domain name to resolve to a website featuring third-party links to Complainant and its competitors in the television and satellite television industries, links contained under headings such as “DIRECTV® Official Site,” “DISH® – Official Site,” “XFINITY® Internet,” and “Verizon FiOS TV” clearly indicates that Respondent’s 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).
It is clear for the Panel, after a thorough review of the documentation and evidence submitted to the case, that the Claimant is the type of entity who due to the well known condition of its trademarks, the efforts it makes to position and promote them and the recognition it gains in the market, frequently suffers the type of unfair competition that is made by third parties through the registration of domain names that are “designed” just to let registrants share the sales revenues obtained by the legitimate owners of the trademarks.
In light of the foregoing, the Panel establishes that the Policy requirement in Paragraph 4(a)(ii) is met inasmuch as the Respondent has no rights or legitimate interests in respect of the domain name <directtvrebates.com>.
According to Paragraph 4 (b) of the Policy, when certain circumstances are present in a given case they shall be evidence of the registration and use of a domain name in bad faith. Among such circumstances the Policy mentions in Paragraph 4(b)(iv): using the domain name to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant 's mark as to the source, sponsorship, affiliation, or endorsement of you’re the Respondent’s site or location or of a product or service on the Respondent’s web site or location.
In the present case, the extreme similarity of the disputed domain name with the registered trademark DIRECTV clearly indicates that there is a prima facie intention of the Respondent to attract Internet users for commercial gain. This is evidenced, again, with the links contained in the Respondent’s web site under headings containing precisely the word “DIRECTV® Official Site”. The Panel concurs with the Complainant in the fact that searchers for Complainant’s various goods and services who found the <directtvrebates.com> domain could be confused and think they were visiting Complainant’s web site or one of a business partner of the Complainant. This fact demonstrates that it is not true the Respondent statement that the domain <directtvrebates.com> has nothing to do with the Claimant’s business.
In this point it is necessary to make a reference again to the fact that Respondent has been the respondent in prior UDRP proceedings where it was ordered to transfer the domain names in question to the respective complainants. This fact makes it imperative to conclude that such prior UDRP proceedings evidence Respondent’s bad faith registration and use of the disputed domain name in the case at hand under Policy ¶ 4(b)(ii).
One last remark deemed necessary in the present case is regarding the statement by Respondent that should the Claimant wish to own the domain <directtvrebates.com>, it should go through the proper procedures to register it. This type of response cannot be accepted since the bottom line is that a Complaint based on an identical or a confusingly similar trademark is not brought to obtain a new domain name to add it to the collection, but to obtain the protection of such trademark and to strongly take measures against its dilution, which would be unavoidable if trademark owners allowed third parties incorporating their trademarks or similar ones to their domain names. In other words, it is not a matter of compelling trademark owners register the infinite number of domain names that could be coined with a given trademark to prevent third parties from illicitly using their trademarks to make domain names that in the end have the clear intention of benefiting from other’s efforts and property.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <directtvrebates.com> domain name be TRANSFERRED from Respondent to Complainant.
Luz Helena Villamil Jimenez, Panelist
Dated: April 13, 2012
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