Westmore · UDRP DecisionCablevsdirectv.com, Directvvscable.com
The Panel ordered transfer of both disputed domain names. It found them confusingly similar to the Complainant's registered DIRECTV mark because each incorporated the mark in full with the terms “cable” and “vs.” The Respondent failed to rebut the Complainant's prima facie showing that he lacked rights or legitimate interests. Bad faith was supported by the mark's fame and prior registration, the Respondent's offers to sell the domain names, and the reported initial redirection to a direct competitor's website.
The timeline behind cablevsdirectv.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind cablevsdirectv.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
How each disputed name was decided in this proceeding.
This decision illustrates a cumulative bad-faith pattern involving a well-known mark: full incorporation of the mark in industry-related comparison domains, registration long after trademark rights arose, redirection to a competitor, and sale proposals directed to the trademark owner. It also shows that “vs” or comparison-style wording does not by itself avoid confusing similarity or establish a legitimate interest where the record contains no substantive comparative use or defense.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION DIRECTV, LLC v. Mike Dannevik Case No. D2015-0524 1. The Parties The Complainant is DIRECTV, LLC of El Segundo, California, United States of America (the “United States”), represented by Quinn Emanuel Urquhart & Sullivan, LLP, United States. The Respondent is Mike Dannevik of Scribner, Nebraska, United States. 2. The Domain Names and Registrar The disputed domain names <cablevsdirectv.com> and <directvvscable.com> (the “Disputed Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2015. On March 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On March 26, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 14, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 4, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 7, 2015. The Center appointed Lynda Braun as the sole panelist in this matter on May 22, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. The language of the proceeding is English. 4. Factual Background The Complainant is a provider of digital satellite television service to over 30 million customers in the United States. It has expended a great deal of time, effort and money in advertising, promoting and marketing its products and services since 1994. The Complainant uses the name of its business and the name under which it was incorporated as its trade name and trademark. The Complainant has multiple registrations for DIRECTV (the “DIRECTV Mark”) on the Principal Register of the United States Patent and Trademark Office. These include U.S. Reg. No. 2,698,197, registered on March 18, 2003, U.S. Reg. No. 3,085,552, registered on April 25, 2006, and U.S. Reg. No. 2,503,432, registered on Nov. 6, 2001. Thus, the DIRECTV Mark has become famous in connection with the Complainant’s digital satellite television service. The Respondent registered the Disputed Domain Names on February 5, 2015. In March 2015, counsel for the Complainant sent a cease and desist letter to the Respondent, demanding that the Respondent cease using the Complainant’s DIRECTV Mark and transfer the Disputed Domain Names to the Complainant. In response to the cease and desist letter, the Respondent offered to sell the Disputed Domain Names to the Complainant for USD 2,000 each and redirected the Disputed Domain Names to “www.directv.com”, Complainant’s official website. 1 5. Parties’ Contentions A. Complainant The following are the Complainant’s contentions: - The Disputed Domain Names are confusingly similar to the Complainant’s trademark. - The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. - The Disputed Domain Names were registered and are being used in bad faith. - The Complainant seeks the transfer of the Disputed Domain Names from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions by the May 4, 2015 due date for the Response. However, on May 7, 2015, the Respondent submitted an email to the Center, stating that the Respondent would accept $800 (presumably USD) for the Disputed Domain Names. As this submission was made after the due date for the Response, the Panel has the discretion to accept or reject this supplementary filing. The Panel finds that the supplementary filing has no bearing on the decision in this case. 6. Discussion and Findings In order for the Complainant to prevail and have the Disputed Domain Names transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)): (i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) The Disputed Domain Names were registered and are being used in bad faith. A. Identical or Confusingly Similar This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, are the Disputed Domain Names identical or confusingly similar to that trademark. It is uncontroverted that the Complainant has established rights in the DIRECTV Mark based on longstanding use as well as its United States trademark registrations for the DIRECTV Mark. The Disputed Domain Names consist of the DIRECTV Mark in its entirety along with the terms “cable” and “vs”, followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive or generic word. Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo , WIPO Case No. D2011-0795 . See also Hoffmann-La Roche, Inc. v. Wei-Chun Hsia , WIPO Case No. D2008-0923 (the addition of a descriptive or generic word to a trademark will not avoid a determination that the domain name at issue is confusingly similar); Nintendo of America, Inc. v. Fernando Sascha Gutierrez , WIPO Case No. D2009-0434 (same); Weight Watchers International Inc. v. Kevin Anthony , WIPO Case No. D2011-2067 (same). This is especially true where, as here, the descriptive or generic word is associated with the Complainant and its services. See, e.g. , Gateway Inc. v. Domaincar , WIPO Case No. D2006-0604 (finding the domain name <gatewaycomputers.com> confusing similar to the trademark GATEWAY because the domain name contained “the central element of the Complainant’s GATEWAY marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business”). Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether domain names are identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva , WIPO Case No. D2012-0182 . Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview 2.0”), paragraph 2.1 . In this case, the Panel finds that the Complainant has made out a prima fa c ie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its DIRECTV Mark. The name of the Respondent has no apparent connection to the Disputed Domain Names that would suggest that they are related to a trademark or trade name in which the Respondent has rights. Finally, the Complainant does not have any type of business relationship with the Respondent. Accordingly, the second element of paragraph 4(a) has been met by the Complainant. C. Registered and Used in Bad Faith The Policy identifies the following circumstances that, if found, are evidence of registration and use of the Disputed Domain Names in bad faith: (i) circumstances indicating that Respondent has registered or has acquired the Disputed Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Names; or (ii) Respondent has registered the Disputed Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or (iii) Respondent has registered the Disputed Domain Names primarily for the purpose of disrupting the business of a competitor; or (iv) by using the Disputed Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product on Respondent’s website or location. First, bad faith may be found where the Respondent knew or should have known of the registration and use of the DIRECTV Mark prior to registering the Disputed Domain Names. Façonnable SAS v. Names4sale , WIPO Case No. D2001-1365 . Such is true in the present case in which the Respondent registered the Disputed Domain Names after the Complainant obtained its trademark registrations for the DIRECTV Mark in the United States. The fame of the DIRECTV Mark makes it extremely disingenuous for the Respondent to claim that he was unaware that the registration of the Disputed Domain Names would violate the Complainant’s rights. See Expedia, Inc. v. European Travel Network , WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant’s trademarks). Second, the Respondent’s registration of the Disputed Domain Names that are confusingly similar to the Complainant’s well-known trademark is sufficient evidence of bad faith registration and use. See Ebay Inc. v. Wangming , WIPO Case No. D2006-1107 ; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co ., WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith). Third, it appears that the Respondent registered the Disputed Domain Names for the purpose of selling them to the Complainant for valuable consideration far in excess of the out-of-pocket costs directly related to the Disputed Domain Names. Such conduct supports a finding of bad faith. See Eastman Sporto Group LLC v. Jim and Kenn y, WIPO Case No. D2009-1688 (finding bad faith when the Respondent offered to sell the disputed domain name for an amount far in excess of its costs of registration). Finally, the Complainant first directed the Disputed Domain Names to a website that is a direct competitor of the Complainant. This also supports a finding of bad faith. Accordingly, the third element of paragraph 4(a) has been met by the Complainant. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names <cablevsdirectv.com> and <directvvscable.com> be transferred to the Complainant. Lynda M. Braun Sole Panelist Date: May 26, 2015 1 According to the Complaint, when the Complainant discovered the Disputed Domain Names in March 2015, both Disputed Domain Names resolved to “www.cox.com,” the website of one of the Complainant’s direct competitors.
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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