The Complainant is DISH Network L.L.C., United States of America (“United States”), represented by Adsero IP, United States.
The Respondent is Perfect Privacy, LLC, United States / Jeremy Tang, Australia.
The disputed domain name <dishtvoffer.com> (the “Domain Name”) is registered with NotSoFamousNames.com LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2019. On October 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 13, 2019, the Registrar 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 October 14, 2019, 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 October 16, 2019.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 6, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 8, 2019.
The Center appointed Dawn Osborne as the sole panelist in this matter on November 14, 2019. 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 Complainant is a United States based connectivity company and a Pay-TV provider. The Complainant is the owner of the mark DISH registered, inter alia, as a word mark in the United States under registration no. 3440594, registered on June 3, 2008, for telecommunications goods and services. It also owns the domain name <dish.com>.
The Domain Name was registered on September 5, 2016. The Domain Name resolved to a website offering information on home appliances and using a red colour scheme, red being the colour used by the Complainant for its logo.
The Complainant’s contentions can be summarised as follows:
The Complainant is the owner of the mark DISH registered, inter alia, as a word mark in the United States since 2008 for telecommunications goods and services and used since 1996 in commerce there. It owns <dish.com>.
The Domain Name was used by the Complainant’s authorised retailer, but when it expired was picked up by the Respondent in 2016. The Respondent did not reply to cease and desist letters from the Complainant.
The Domain Name is confusingly similar to the Complainant’s mark including it in its entirety and adding only the generic term “tv offer” which does not distinguish the Domain Name from the Complainant’s mark.
The Respondent has no rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorised by the Complainant. The Domain Name currently resolves to content relating to electronic equipment using the Complainant’s colour scheme red which Internet users may assume are connected with the Complainant.
The Domain Name has been registered and used in bad faith. Only after the Complainant notified the Respondent of its infringement did the Respondent put up the content relating to electronic equipment and he has engaged in passive holding of the Domain Name for over three and a half years holding the Domain Name to profit from the trade mark of another. He used a privacy service and did not answer cease and desist letters from the Complainant.
The Respondent did not reply to the Complainant’s contentions.
The Domain Name combines the Complainant’s DISH word mark (registered, inter alia in the United States for telecommunications goods and services since 2008), the descriptive terms “tv” and “offer” and the generic Top-Level Domain (“gTLD”) “.com”.
The addition of the descriptive terms “tv” and “offer” and the gTLD “.com” to the Complainant’s mark does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s mark, which is still recognisable within the Domain Name.
Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy.
The Complainant has not authorised the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name.
The only use of the Domain Name has been for a page discussing electronic equipment using a red colour scheme which appears to have been attached to the Domain Name a few months after the Complainant sent the first cease and desist to the Complainant. It is a fairly rudimentary few pages which appears undeveloped or unfinished containing a number of typographical errors, but it also appears to have the agenda of influencing which electronic equipment should be bought by the reader. It does not have an obvious noncommercial purpose in relation with the ordinary meaning of the Domain Name <dishtvoffer.com> which by itself is strongly suggestive of a commercial purpose related to the television industry. The Panel is of the view that on the balance of probabilities the page to which the Domain Name resolves to, does not constitute a genuine legitimate noncommercial use without an intention for commercial gain.
As such the Panel finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
The Respondent has not answered this Complaint or explained why it should be allowed to register a domain name containing the Complainant’s mark which is recognised for television related telecommunication services in a domain name that appears to have on its face as its most obvious intended use commercial use within that industry.
The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from or exploit the trade mark of another.
In the light of the evidence of the content attached to the Domain Name, including the choice by the Respondent of a red colour scheme to discuss electronic equipment when the Complainant provides specialist electronic equipment using red trade dress the Panel is of the view that the Domain Name has been registered either for the purpose of disrupting the business of the Complainant by offering alternative content under Policy 4(b)(iii) or to intentionally attempt to attract, for commercial gain, Internet users to a web site by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site under Policy 4 (b)(iv).
As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy.
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 <dishtvoffer.com> be transferred to the Complainant.
Date: November 14, 2019
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