DIRECTV, Inc v. Digi Real Estate Foundation
Claim Number: FA0702000914942
Complainant is DIRECTV, Inc (“Complainant”), represented by Evan
Finkel, of Pillsbury Winthrop Shaw Pittman LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <dirtectv.com>, registered with 4Domains, Inc; <durectv.com>, registered with Namecroc.com LLC; <dorecttv.com> and <dishdirectv.com>, registered with Enom, Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On
On
On February 16, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 8, 2007 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@dirtectv.com, postmaster@durectv.com, postmaster@dorecttv.com, and postmaster@dishdirectv.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <dirtectv.com>, <durectv.com>, <dorecttv.com>, and <dishdirectv.com> domain names are confusingly similar to Complainant’s DIRECTV mark.
2. Respondent does not have any rights or legitimate interests in the <dirtectv.com>, <durectv.com>, <dorecttv.com>, and <dishdirectv.com> domain names.
3. Respondent registered and used the <dirtectv.com>, <durectv.com>, <dorecttv.com>, and <dishdirectv.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, DIRECTV, Inc, holds several trademark registrations for the DIRECTV mark with the United States Trademark Office (“USPTO”) (i.e., Reg. 2,503,432 issued November 6, 2001), which it uses in connection with telecommunication products and services in its role as a satellite television provider. Complainant is a leading provider of satellite television, providing access to programming to over 15 million customers. Complainant has been promoting its goods and services at the <directv.com> domain name for over ten years, which averages 5.2 million visits per month.
Respondent, Digi Real Estate Foundation, registered the <dirtectv.com> and <durectv.com> domain names on November 1, 2006, the <dorecttv.com> domain name on July 14, 2005, and the <dishdirectv.com> domain name on April 30, 2005. Respondent’s disputed domain names each resolve to a holding page with sponsored links to third-party web sites, including Complainant’s competitors.
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 has established rights in the DIRECTV mark
pursuant to Policy ¶ 4(a)(i) through its registration of the mark with the
USPTO. Complainant’s registration of its
DIRECTV mark preceded Respondent’s registrations of the <dirtectv.com>, <durectv.com>, <dorecttv.com>,
and <dishdirectv.com> domain names. Under the Policy, registration of a mark with
an appropriate governmental authority confers rights in that mark to
Complainant. Thus, the Panel finds that
Complainant has established rights in the DIRECTV mark pursuant to Policy ¶
4(a)(i). See Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc.,
FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark
registrations establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s <dirtectv.com>, <durectv.com>, <dorecttv.com>,
and <dishdirectv.com> domain names are all confusingly
similar to Complainant’s DIRECTV mark pursuant to Policy ¶ 4(a)(i), because
Respondent’s domain names each contain Complainant’s mark in its entirety or are
simply a misspelled variation of the DIRECTV mark. Respondent’s <dirtectv.com> domain name contains
one additional “t,” the <dorecttv.com> domain name changes the “i”
in Complainant’s mark to an “o” and adds an extra “t” to the mark, and the <durectv.com>
domain name differs from Complainant’s marking by substituting the letter “u”
in place of the letter “i.” Thus,
Respondent is taking advantage of common typographical errors, which is
insufficient to avoid a finding of confusing similarity under Policy ¶
4(a)(i). Additionally, Respondent’s <dishdirectv.com>
domain name contains Complainant’s mark in its entirety and 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). Furthermore, the
addition of a generic top-level domain is not sufficient to distinguish the
disputed domain names from Complainant’s mark.
Thus, the Panel finds that the disputed domain names are confusingly
similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Reuters
Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding
that a domain name which differs by only one letter from a trademark has a
greater tendency to be confusingly similar to the trademark where the trademark
is highly distinctive); see also Victoria’s
Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding
that, by misspelling words and adding letters to words, a respondent does not
create a distinct mark but nevertheless renders the domain name confusingly
similar to the complainant’s marks); see
also Arthur Guinness Son & Co. (
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have rights or legitimate interests in the <dirtectv.com>, <durectv.com>, <dorecttv.com>, and <dishdirectv.com> domain names. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Because of Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain names. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. 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).”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
The Panel finds no evidence in the record suggesting that Respondent is commonly known by the <dirtectv.com>, <durectv.com>, <dorecttv.com>, or <dishdirectv.com> domain names. The WHOIS information identifies Respondent as “Digi Real Estate Foundation,” and Complainant has alleged that Respondent has no rights or legitimate interests in the DIRECTV mark. The Panel cannot find any other evidence in the record suggesting that Respondent is commonly known by the domain names. Therefore, the Panel concludes that Respondent is not commonly known by the <dirtectv.com>, <durectv.com>, <dorecttv.com>, and <dishdirectv.com> domain names pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also 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).
Respondent is using the <dirtectv.com>, <durectv.com>, <dorecttv.com>, and <dishdirectv.com> domain names to redirect Internet users to its websites, which promote links to third-party sites, including the sites of Complainant’s competitors. Presumably, Respondent receives referral fees for each redirected Internent user. Thus, Respondent’s diversion of Complainant’s customers and potential customers does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommerical or fair use under Policy ¶ 4(c)(iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services)
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i); see also Coryn
Group, Inc. v. Media Insight, FA 198959
(Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the
domain names for a bona fide offering of goods or services nor a
legitimate noncommercial or fair use because the respondent used the names to
divert Internet users to a website that offered services that competed with
those offered by the complainant under its marks).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has registered and is using the <dirtectv.com>, <durectv.com>, <dorecttv.com>, and <dishdirectv.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iii), because it is divering Internet users seeking information on Complainant’s satellite television services to links of third-parties, including competitors of Complainant. This use of the disputed doman names is likely to disrupt Complainant’s business by diverting business away from Complainant. Therefore, the Panel finds that Respondent’s registration and use of the <dirtectv.com>, <durectv.com>, <dorecttv.com>, and <dishdirectv.com> domain names constitutes bad faith pursuant to Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
Respondent’s use of the <dirtectv.com>, <durectv.com>, <dorecttv.com>, and <dishdirectv.com> domain names, which are confusingly similar to Complainant’s DIRECTV mark, is likely to cause confusion among customers searching for Complainant’s goods and services. Furthermore, Respondent presumably profits from this confusion by receiving referral fees for each Internet user it redirects to other websites. The Panel finds that such registration and use of the disputed domain name constitutes bad faith purusant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
Furthermore, Respondent’s misspelling of Complainant’s
DIRECTV mark in the <dirtectv.com>, <durectv.com>
and <dorecttv.com> domain names indicates that Respondent is
typosquatting, which is a further indication of bad faith registration and use
pursuant to Policy ¶ 4(b)(iii). See Dermalogica, Inc. v. Domains to Develop, FA 175201
(Nat. Arb. Forum Sept. 22, 2003) (finding that the
<dermatalogica.com> domain name was a “simple misspelling” of the
complainant's DERMALOGICA mark which indicated typosquatting and
bad faith pursuant to Policy 4 ¶ (a)(iii)); see
also Zone Labs, Inc.
v. Zuccarini, FA 190613 (Nat. Arb.
Forum Oct. 15, 2003) (“Respondent’s registration and use of [the
<zonelarm.com> domain name] that capitalizes on the typographical error
of an Internet user is considered typosquatting. Typosquatting, itself is
evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii).”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dirtectv.com>, <durectv.com>, <dorecttv.com>, and <dishdirectv.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 21, 2007
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