Sirius XM Radio Inc. v. PPA Media Services / Ryan G Foo
Claim Number: FA1309001517877
Complainant is Sirius XM Radio Inc. (“Complainant”), represented by Erica D. Klein of Kramer Levin Naftalis & Frankel LLP, New York, USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sriusxm.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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 4, 2013; the National Arbitration Forum received payment on September 5, 2013.
On September 12, 2013, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <sriusxm.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 16, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 7, 2013 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@sriusxm.com. Also on September 16, 2013, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 9, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed
David A. Einhorn 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’s Contentions
A. Policy ¶ 4(a)(i)
1. Complainant, SiriusXM, is a provider of radio, television and data broadcasting services, which are provided nationwide via satellite, Internet, mobile telephone, and other communication networks. Complainant also manufactures and distributes electronic hardware products through which such broadcasting services are received.
2. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”), including registrations for the SIRIUSXM mark (e.g., Reg. No. 4,045,088 registered October 25, 2011), the SIRIUS mark (e.g., Reg. No. 3,071,291 registered March 21, 2006), and the XM mark (e.g., Reg. No. 2,547,677 registered March 12, 2002).
3. Respondent’s <sriusxm.com> domain name is confusingly similar to Complainant’s marks.
B. Policy ¶ 4(a)(ii)
1. Respondent is not commonly known as <sriusxm.com> or SIRIUSXM.
a. Respondent is not a licensee of Complainant and was at no time authorized by Complainant to use or register the disputed domain name, or any other domain name comprising any of Complainant’s marks.
b. Complainant has not found any evidence that Respondent owns trademark registrations including the term SRIUSXM, nor has Complainant found any current or prior use of the term SRIUSXM by Respondent other than in the at-issue domain name.
2. Respondent uses the disputed domain name to resolve to a marketing site that offers visitors the opportunity to take part in a survey in exchange for the opportunity to win prizes. Respondent's linking of the disputed domain name to a website that contains no content other than a link to a survey and promotions that are in no way associated with, affiliated with or endorsed by Complainant, does not represent use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).
3. The font and layout of Respondent’s site mimics Complainant’s own website at <www.siriusxm.com>, so as to make Respondent’s site appear as if it is operated by or is affiliated with Complainant. In particular, the blue, silver and white color scheme, the display of a blue radio antenna symbol, the use of identical fonts, and the overlapping box format are all highly indicative of the look and feel of Complainant's own website.
C. Policy ¶ 4(a)(iii)
1. According to the WHOIS database for the <sriusxm.com> domain name, the domain is currently offered for sale by Respondent.
2. Respondent has registered the disputed domain name primarily for the purpose of reaping a commercial benefit by attempting to attract Complainant’s customers by wrongfully diverting them to Respondent's own website and other third-party websites by creating a likelihood of confusion as to the source, sponsorship or affiliation of Respondent’s website.
a. Respondent profits off of such confusion by operating a website featuring a link to a survey in exchange for potential prizes, for which Respondent receives compensation by presumably selling the survey results and e-mail addresses to third parties.
3. By using a misspelled form of the SIRIUSXM mark, i.e., without the first "i," Respondent has engaged in typosquatting by taking advantage of Internet users who are trying to reach Complainant's official website.
4. Respondent registered the <sriusxm.com> domain name on July 29, 2008, one day after the merger of Sirius Satellite Radio Inc. and XM Satellite Radio Inc., i.e. as soon as it was known Complainant would operate as SiriusXM.
a. Complainant had for years used and registered SIRIUS and XM separately, so it was reasonably anticipated upon the merger of the companies that complainant would use/be known as SiriusXM.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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.
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.”).
Complainant, SiriusXM, claims to provide radio, television and data broadcasting services, which are provided nationwide via satellite, Internet, mobile telephone and other communication networks. Complainant also claims to manufacture and distribute electronic hardware products through which such broadcasting services are received. Complainant shows that it holds numerous trademark registrations for the marks it uses in connection with its business, including USPTO registrations for the SIRIUSXM mark (e.g., Reg. No. 4,045,088 registered October 25, 2011), the SIRIUS mark (e.g., Reg. No. 3,071,291 registered March 21, 2006), and the XM mark (e.g., Reg. No. 2,547,677 registered March 12, 2002). The Panel concludes that Complainant’s USPTO registrations establish Complainant’s rights in the SIRIUSXM, SIRIUS, and XM marks under Policy ¶ 4(a)(i), despite the fact that Respondent seems to reside outside of the United States. See 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.”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant next claims that Respondent’s <sriusxm.com> domain name is confusingly similar to Complainant’s marks. The Panel notes that the disputed domain name represents a combination of Complainant’s SIRIUS and XM marks, without the first “i” in the SIRIUS mark. Previous panels have held that the omission of a single letter from a complainant’s mark is insufficient to distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). Accordingly, the Panel finds that Respondent’s <sriusxm.com> domain name is confusingly similar to Complainant’s SIRIUS and XM marks within the meaning of Policy ¶ 4(a)(i). See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name).
Complainant contends that Respondent is not commonly known as <sriusxm.com> or SIRIUSXM within the meaning of the UDRP. Complainant claims that it has not found any evidence that Respondent owns trademark registrations including the term SRIUSXM, nor has Complainant found any current or prior use of the term SRIUSXM by Respondent other than in the at-issue domain name. Moreover, Complainant claims that Respondent is not a licensee of Complainant and was at no time authorized by Complainant to use or register the disputed domain name, or any other domain name comprising any of Complainant’s marks. In view of Respondent’s failure to submit any evidence to the contrary, the Panel determines that Respondent is not commonly known by the <sriusxm.com> domain name within the meaning of Policy ¶ 4(c)(ii). See 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 that it is commonly known by the domain name).
Complainant argues that Respondent’s use of the disputed domain name does not represent use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Complainant claims that Respondent uses the disputed domain name to resolve to a marketing site that offers visitors the opportunity to take part in a survey in exchange for the opportunity to win prizes. Complainant infers that Respondent profits from this scheme by presumably selling the survey results and e-mail addresses to third parties. The panel in Homer TLC, Inc. v. Wang, FA 1336037 (Nat. Arb. Forum Aug. 23, 2010), found a respondent to have used the disputed domain name in connection with neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) where the disputed domain name resolved to a website that purported to offer Internet users a gift card as compensation for filling out surveys. The instant Panel agrees that Respondent's linking of the <sriusxm.com> domain name to a website that contains no content other than a link to a survey and promotions does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant also argues that the font and layout of Respondent’s website mimics Complainant’s own website at <www.siriusxm.com>, so as to make Respondent’s site appear as if it is operated by or is affiliated with Complainant. In particular, Complainant notes the blue, silver and white color scheme the display of a blue radio antenna symbol, the use of identical fonts, and the overlapping box format found on Respondent’s site, all of which are indicative of the look and feel of Complainant's own website. The Panel finds that Respondent has deliberately attempted to pass itself off as Complainant through its use of the disputed domain name, and determines that Respondent lacks rights and legitimate interests in the <sriusxm.com> domain name on this basis as well. See Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacked rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).
Complainant has therefore also satisfied Policy ¶ 4(a)(ii)).
Complainant asserts that Respondent registered the <sriusxm.com> domain name primarily for the purpose of reaping a commercial benefit by attempting to attract Complainant’s customers to Respondent's own website and other third-party websites by creating a likelihood of confusion as to the source, sponsorship or affiliation of Respondent’s website. Complainant argues that Respondent’s registration of a confusingly similar domain name, coupled with visual similarity between Complainant and Respondent’s websites, creates substantial confusion. Complainant claims that Respondent profits off of such confusion by operating a website featuring a link to a survey in exchange for potential prizes, from which Respondent receives compensation by presumably selling the survey results and e-mail addresses to third parties. In Homer TLC, Inc. v. Wang, FA 1336037 (Nat. Arb. Forum Aug. 23, 2010), the panel found that where a disputed domain name offers incentives for the completion of surveys, Internet users are likely to believe that such activities are sponsored by or affiliated with the complainant, which constititutes evidence of the respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). In light of Respondent’s registration of the confusingly similar <sriusxm.com> domain name and use of the corresponding website, the Panel holds that Respondent has demonstrated registration and use of the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant next alleges that Respondent has engaged in typosquatting by registering a domain name that represents a misspelled form of Complainant’s SIRIUSXM mark- i.e., without the first "i." Complainant argues that such activity illustrates Respondent’s desire to take advantage of Internet users who are trying to reach Complainant's official website. The Panel notes that while Respondent’s registration of the <sriusxm.com> domain name predates Complainant’s rights in the SIRIUSXM mark, Respondent’s <sriusxm.com> also represents a combination of Complainant’s long-held SIRIUS and XM marks. The Panel therefore notes that Respondent’s registration of a domain name, comprised solely of two of Complainant’s marks, one of which is misspelled, constitutes typosquatting, and finds bad faith under Policy ¶ 4(a)(iii) on this basis as well. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of a 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).”).
Lastly, Complainant argues that Respondent registered the <sriusxm.com> domain name on July 29, 2008, one day after the merger of Sirius Satellite Radio Inc. and XM Satellite Radio Inc. Complainant maintains that it had registered and used the SIRIUS and XM marks separately for years, as the SIRIUS mark was used only by Sirius Satellite Radio Inc. and the XM mark was used only by XM Satellite Radio Inc. Complainant urges that Respondent’s registration of a domain name containing both marks as soon as it was known that Complainant would operate as SiriusXM suggests Respondent’s bad faith in registering the disputed domain name. The Panel agrees, finding that the timing of Respondent’s registration of the <sriusxm.com> domain name demonstrates opportunistic bad faith pursuant to Policy ¶ 4(a)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that [r]espondent has to refute and which he has failed to do. The panel finds a negative inference from this.”).
Thus, Complainant has also satisfied 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 <sriusxm.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: October 17, 2013
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