WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TigerDirect, Inc. v. Edward Tapia / Whois Privacy Protection Service Inc.
Case No. DTV2010-0006
1. The Parties
The Complainant is TigerDirect, Inc. of Miami, Florida, United States of America, represented by Systemax Inc., United States of America.
The Respondent is Edward Tapia of Van Nuys, California, United States of America (the “United States” or “USA”).
2. The Domain Name and Registrar
The disputed domain name <tigerdirect.tv> (“the Domain Name”) is registered with eNom.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2010. On June 17, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On June 17, 2010 eNom 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. The Center sent an email communication to the Complainant on June 25, 2010 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 June 25, 2010. 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 July 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2010. Due to the Respondent’s request for extension, in accordance with paragraph 5(d) of the Rules, the due date for the Response was extended to August 2, 2010. The Response was filed with the Center on August 3, 2010. The Respondent submitted four other e-mail communications on August 11, 2010 and a further e-mail communication on August 25, 2010.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on August 25, 2010. 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
The Complainant is a Florida business corporation based in Miami, Florida, United States. It is a subsidiary of Systemax, Inc., a Fortune 1000 company listed on the New York Stock Exchange. The Complainant is a retailer of computers and other electronic devices, as well as related software, accessories, and supplies. Beginning as a mail-order business in 1987, the Complainant registered the domain name <tigerdirect.com> in 1994. As indicated by stored website pages found on the Internet Archive’s Wayback Machine, the Complainant has operated a commercial website associated with that domain name since at least 1996. This website now delivers more than two billion page views per year, to millions of consumers located in the United States and other countries. The Complainant’s website was ranked by (“www.alexa.com”) on March 5, 2010 as number 247 among the most visited websites in the United States. The Complainant also operates a website at “www.tiger.tv”.
The Complainant holds registered trademarks for TIGERDIRECT as a standard character mark, as well as for design marks consisting of stylized versions of that name. These include United States Trademark Registration Nos. 2694989 (standard character mark), and 2694988 (stylized letters). The Complainant also holds the Trademark Registration No. 2694957 (standard character mark) for TIGERDIRECT.COM. All three marks were registered on March 11, 2003.
According to the Registrar’s WhoIs database, the Domain Name was created on December 18, 2003. It is not evident from the record whether the Respondent Edward Tapia registered the Domain Name at that time or acquired it subsequently, but the Internet Archive contains web pages associated with the Domain Name from May 2007 onward that include some of the same content currently found on the website to which the Domain Name resolves. Mr. Tapia registered the Domain Name using the registrar’s domain privacy service, which has asserted no interest in the Domain Name in this proceeding. Hence, in this Decision the term “Respondent” will refer to Mr. Tapia alone.
It is undisputed that the Domain Name redirects to a website operated by the Respondent at “www.entprnr007.com”. The home page of the Respondent’s website is headed “Aol.tv – High Quality Domain Names” and “Infotapia.com ‘Where Quality Counts’”. A banner at the top of the home page reads, “Nicencheap.tv Getting Rich Helping Others Get Rich”. The page also features a large, stylized version of the domain name <moneycentral.tv>. The home page displays an article complaining that the Respondent lost the domain names <aol.tv> and <moneycentral.tv>, apparently in UDRP proceedings, and stating his intent to bring a judicial action for reverse domain name hijacking. The website also displays advertising for Dun & Bradstreet business profiles, AOK ads, and a program for getting rich through online advertising, offered by an unnamed “Google Internet Multimillionaire”. It appears that the Respondent’s online business activities entail pay-per-click (PPC) advertising and domain name resale.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical to its registered TIGERDIRECT mark and that the Respondent has no permission to use that mark and no rights or legitimate interests in the Domain Name.
The Complainant infers that the Domain Name was registered and used in bad faith, noting that two other UDRP panels have transferred domain names from the same Respondent on that ground.
The Respondent’s piecemeal filings are difficult to parse, and they are largely copied verbatim from his responses in prior UDRP proceedings. He evidently does not contest the Complainant’s trademarks or their similarity to the Domain Name. However, he claims a right to register available domain names as an investment for his family.
The Respondent argues that his good-faith intentions are to add value to “.tv” domain names underused by “Big Companies” so that he can earn money (presumably advertising revenues) to support his family and build churches, while at the same time helping others learn how to make money online. He questions whether consumers would confuse his website with the Complainant’s and denies any intent to damage the Complainant’s reputation.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules:
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Late and Supplemental Filings
The Policy envisions an inexpensive and expeditious resolution of domain name disputes. Only two remedies are available – transfer or cancellation of the disputed domain name – and those remedies are suspended if the Respondent brings a judicial action within a specified time following a decision in the Complainant’s favor. Consequently, UDRP panels are reluctant to delay the administrative proceeding absent extraordinary circumstances.
The Respondent in this proceeding was granted an extension of time to file the Response and missed that deadline by one day. The Panel accepts the Response but not the additional material that the Respondent submitted on five subsequent occasions. Some of this material merely repeats what is on the Respondent’s website, which the Panel has examined. Other items represent correspondence with the Complainant and with Microsoft, which the Panel does not find material in any event. Accordingly, the Panel accepts only the Response as a part of the record in this proceeding.
B. Identical or Confusingly Similar
The Complainant indisputably owns the registered trademark TIGERDIRECT, which is identical to the relevant portion of the Domain Name. (The country code top-level domain name “.tv” is not distinctive or relevant for Policy purposes.)
The Panel finds that the first element of the Complaint has been established.
C. Rights or Legitimate Interests
It is undisputed that the Complainant has not authorized the Respondent to make use of the TIGERDIRECT mark in the Domain Name or otherwise. The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which the Respondent could nevertheless demonstrate rights or legitimate interests in the Domain Name:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent asserts fair use of the Domain Name simply because it was available to register. He does publish comments and opinions on the website linked to the Domain Name, but that website is predominantly commercial in nature, and his express purpose is to monetize this and other domain names. There is no evidence that the Respondent or an associated business have been known by a name corresponding to the Domain Name. The Domain Name is not generic or descriptive, and the Respondent does not use it for a relevant generic purpose. The Respondent’s trademark is distinctive, well-known, and long-established, and the Respondent has offered no reason for selecting an identical Domain Name. The Respondent has failed to rebut the logical presumption that the Domain Name was chosen for its trademark value, which cannot be considered a bona fide commercial use.
The Panel concludes that the second element of the Complaint has been established.
D. Registered and Used in Bad Faith
The Policy, paragraph 4(b), sets out a non-exhaustive list of circumstances evidencing bad faith in the registration and use of a domain name, including the following on which the Complainant implicitly relies:
“(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 web site or location.”
The Complainant argues that this must have been the case, since its TIGERDIRECT mark is widely known and there is no evident reason for selecting a Domain Name identical to that distinctive mark. The Panel agrees. The mark is an arbitrary or fanciful combination of English words that has become a highly successful brand in online retailing. The Respondent does not deny familiarity with the mark or offer an alternative explanation for his choice of the Domain Name. His practice on other occasions similarly has been to register domain names based on the trademarks of others in the “.tv” top-level domain. See Microsoft Corporation v. Edward Tapia, WIPO Case No. DTV2005-0002 (transfer ordered); America Online, Inc. v. Edward Tapia, NAF Claim No. FA 0328159 (transfer ordered).
The Respondent expresses his belief that it is legitimate to register an available domain name so long as he intends to put it to good use. The Respondent cites former ICANN director Karl Auerbach for the proposition that the “First Law of the Internet” should be that “every person shall be free to use the Internet in any way that is privately beneficial without being publicly detrimental.” That principle could apply equally well offline, of course, and it is more or less inherent in the constitutions of modern democracies. Those same democracies, including the United States,where both the Complainant and the Respondent reside, have enacted trademark laws embodying a consensus that such laws promote public benefits by encouraging fair trade, reducing fraud and confusion in the marketplace, and giving incentives to businesses to earn a good reputation in commerce. ICANN, the Internet governance body of which Mr. Auerbach was a director, adopted the UDRP, which reflects that assessment of public benefits by establishing an efficient mechanism for asserting trademark rights in domain names. The UDRP was subsequently adopted as well by the “.tv” registration authority and so controls in this administrative proceeding. The Respondent’s conduct in using another’s well-known trademark to attract visitors to his commercial website entails a recognized public detriment, and the Complaint meets the UDRP standards for granting a transfer of the Domain Name.
The Panel concludes that the Domain Name was registered and used in bad faith within the meaning of the Policy.
E. Reverse Domain Name Hijacking
Given the Panel’s conclusion that the Complaint is well-founded, the Respondent’s request for a finding of reverse domain name hijacking is denied.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <tigerdirect.tv> be transferred to the Complainant.
W. Scott Blackmer
Dated: September 14, 2010