WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DIRECTV, Inc. v. Venkateshwara Distributor Private Limited
Case No. D2011-1346
1. The Parties
The Complainant is DIRECTV, Inc. of El Segundo, California, United States of America represented by FairWinds Partners, LLC, United States of America.
The Respondent is Venkateshwara Distributor Private Limited of Mumbai, India.
2. The Domain Name and Registrar
The disputed domain name <directvenespanol.com> is registered with Web Werks India Pvt. Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2011. On August 8, 2011, the Center transmitted by email to Web Werks India Pvt. Ltd. a request for registrar verification in connection with the disputed domain name. On August 9, 2011, Web Werks India Pvt. Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint (as well as indicating that the Registration Agreement was in English). The Center sent an email communication to the Complainant on August 9, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 9, 2011.
The Center verified that the Complaint together with the amended 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 August 12, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 1, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 2, 2011.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on September 9, 2011. 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.
4. Factual Background
According to the Complainant, it is in the business of high quality digital television (TV) services, the distribution and installation of satellite TV dish receivers, and related goods and services. The Complainant is America’s leading satellite TV service, has more than 16,000 employees, and offers over 265 channels to over 50 million viewers in homes, airports, hotels, restaurants, hospitals, office buildings and other places. The Complainant’s products are supplied in a number of different languages.
The Complainant has used its trademarks since 1994. Its trademark or service mark (hereafter collectively trademark) registrations on the principal register of the United States Patent and Trademark Office (USPTO) include the following:
DIRECTV, registration number 2503432, registered November 6, 2001, international classes 9, 16, 25;
DIRECTV, registration number 2698197, registered March 18, 2003, international classes 9, 25, 38, 41;
DIRECTV stylised and logo, registration number 2939061, registered April 12, 2005, international class 9;
DIRECTV stylised and logo, registration number 2820253, registered May 2, 2004, international class 42;
DIRECTV stylised and logo, registration number 2628178, registered October 1, 2002, international class 25;
DIRECTV2PC, registration number 3598467, registered March 31, 2009, international class 9.
The Complainant has a website at “www.directv.com” and other domain names embodying the trademark DIRECTV.
No information is available from the Respondent except for that accompanying the registration details of the disputed domain name, which appears to have been registered on October 8, 2005.
5. Parties’ Contentions
The Complainant contends that since the registrar, Web Werks India Pvt. Ltd., designates 16 different languages including English and several Indian languages, this proceeding should be conducted in English. The Complainant submits, among other reasons, that:
the Registrar’s website appears only in the English language and contains no options for selecting another language;
the Customer Registration Agreement for the Registrar contains a clause stating that all notices, designations, and specifications made under the Agreement shall be made in the English Language only;
the Respondent’s website, to which the disputed domain name resolves, appears entirely in the English language;
the Complainant’s business is headquartered in the USA and many of its most prominent websites operate in English. The Respondent clearly had the ability to understand the Complainant’s websites when it created the disputed domain name;
in Lernco, Inc. v. Venkateshwara Distributor Private Limited, WIPO Case No. D2009-1012, being a prior UDRP decision against the Respondent, it was stated that the Respondent used a registrar named Directi Internet Solutions and that the language of that registration agreement was English. Many past UDRP cases against the Respondent have been conducted in English;
the Complainant would be put to additional expense and its ability to pursue this dispute would be hampered if it were forced to do so in a language other than English.
The Complainant cites previous UDRP decisions in support of its position as to the language of the proceeding.
The Complainant has produced copies of USPTO documentation in support of its claim to have ownership of and rights in the trademarks listed in section 3 above.
The Complainant contends that the disputed domain name is identical or confusingly similar to its trademarks. It is generally found in disputes under the UDRP that the mere addition of generic or other short words or letters to a trademark creates a confusingly similar domain name. The Respondent has merely added the words “en Espanol” to the Complainant’s trademark. There is further confusion because the Complainant does offer services in Spanish.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. With reference to paragraph 4(c) of the Policy it is contended that the Respondent’s operation of a pay per click website is not a bona fide offering of goods or services; the Respondent is not commonly known by a name corresponding to the disputed domain name; and the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain.
The Complainant further contends that the Respondent has registered the disputed domain name in bad faith. It is contended, with reference to paragraph 4(b)(iv) of the Policy, that the Respondent’s website corresponding to the disputed domain name is a directory or pay per click website that provides links to the Complainant’s websites and to the websites of the Complainant’s competitors. Upon information and belief, each time a user of the Respondent’s website clicks on one of these search links, the Respondent receives revenue in return for the referral. Thus the Respondent intentionally attempts to attract, for commercial gain, Internet users through confusion with the Complainant’s trademarks.
The Complainant says that the Respondent had constructive notice of the Complainant’s rights in its trademarks and that the content of the Respondent’s website at the disputed domain name reveals that the Respondent has actual knowledge of the Complainant and its trademarks.
The Complainant says that the operator of a website is responsible for advertising content placed on that site by a third party.
Letters sent by the Complainant to the Respondent at the email address of record, on July 19, 2011 and July 26, 2011, were ignored.
The Complainant has submitted a number of previous decisions under the UDRP that the Panel is invited to consider as possible precedent. Some of the decisions have related to the present Respondent who, it is asserted, has had at least 20 prior UDRP decisions against it.
The Complainant requests the transfer to it of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
“…to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
Identity of the Respondent
In the Complaint as initially submitted the Respondent was named as “MyPrivacyProtect.org / Domain Admin”, being a privacy service that does not publicly divulge the contact details it has on record of the true registrant. Such a service may be used legitimately, or it may on occasions be used in an attempt to avoid the service upon a Respondent of a proceeding under the UDRP.
After the registrar had fulfilled its obligation to disclose to the Center the registrant details of record, the Complainant opted to substitute for the previous Complaint an Amended Complaint against solely the newly disclosed Respondent.
The Complaint was notified to the Respondent by sending emails to its disclosed email address, also to
“firstname.lastname@example.org”, and to PrivacyProtect.org. The Complaint could not be delivered by courier owing to an incomplete address having been provided by the registrant. An attempt to contact the Respondent at the fax number provided was unsuccessful. The Panel is satisfied that the Center has fulfilled its obligations to attempt to contact the Respondent in the terms of paragraph 2 of the Rules.
Language of Proceedings
The Respondent has not contested that the proper language for this proceeding is English. The Panel directs that the language of the proceeding shall be English for reasons including particularly, but not exclusively, that the Registrar’s website appears only in English; that the Customer Registration Agreement with the Registrar contains a clause stating that all notices, designations, and specifications made under the Agreement shall be in English; and that the Respondent’s website, to which the disputed domain name resolves, is in English.
A. Identical or Confusingly Similar
The disputed domain name is <directvenespanol.com>. The Panel is satisfied that the Complainant, since before the date of registration of the disputed domain name, has held rights in the trademark DIRECTV. The disputed domain name may easily be read as “DIRECTV en Espanol”. The Panel finds the trademark DIRECTV to be clearly and prominently displayed in the disputed domain name and does not find that the qualifier “en Espanol” diminishes confusing similarity with the Complainant’s trademark. The Panel finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Since a Respondent’s possible rights or legitimate interests in a disputed domain name may not be evident to a Complainant, it is conventional for the Complaint to state a prima facie case to the effect that, upon enquiry, the Respondent does not appear to have any such rights or legitimate interests. Paragraph 4(c) of the Policy provides for the Respondent to refute the Complainant’s prima facie case.
The Complainant has addressed the clauses of paragraph 4(c) of the Policy. According to the evidence including screen capture of the Respondent’s website to which the disputed domain name resolves, its use is not bona fide in the terms of paragraph 4(c)(i) of the Policy since there is no genuine offering of goods or services independently of the use of the website for the generation of pay per click revenue. There is no evidence to suggest that the Respondent is known personally or as a business by a name corresponding to the disputed domain name in the terms of paragraph 4(c)(ii) of the Policy. The screen capture indicates that the use of the disputed domain name is not noncommercial or fair within the meaning of paragraph 4(c)(iii) of the Policy. The Panel cannot envisage any other grounds on which the Respondent could claim rights or legitimate interests in the disputed domain name and the Respondent has not offered any. The Panel finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith, namely:
“(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith registration and use may be found otherwise.
Paragraph 4(b)(iv) of the Policy is particularly applicable to the present case. The Complainant has produced screen captures of the Respondent’s website to which the disputed domain name resolves. These show a website with what are evidently links grouped into categories including direct and satellite TV, travel, finance and home. Further search categories are provided near the top. The style of the Respondent’s website is clearly recognisable as a pay per click or click-through operation, whereby Internet visitors are offered a variety of headings or links in the expectation that some visitors will be sufficiently interested to be led to an external website.
It may reasonably be concluded that the Respondent has gone to the trouble and expense of setting up this operation in order to derive revenue through the well-known business model whereby external websites pay commission for the referral of visitors to them. The pay per click model may be operated as an entirely legitimate business and is often a means of subsidising a public information website. The Respondent in the present case, however, must attract Internet visitors, and does so by trading on the well-known trademark of the Complainant. In the terms of paragraph 4(b)(iv) of the Policy the disputed domain name is found to be in use to attract Internet users for the Respondent’s commercial gain, through confusion with the Complainant’s trademark as to the Complainant’s possible sponsorship or endorsement of the Respondent’s website, and to have been registered for that purpose. The Panel finds bad faith registration and use proven within the meaning of paragraph 4(a)(iii) of the Policy.
The Respondent’s failure to reply to the Complainant’s letters of July 19, 2011 and July 26, 2011, is found to be a compounding factor in bad faith (Ebay Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632).
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 name <directvenespanol.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Dated: September 22, 2011