WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DISH Network L.L.C. v. Whois Agent c/o Domain Protection Services, Inc. / Vasilios Lentis
Case No. D2019-2434
1. The Parties
Complainant is DISH Network L.L.C., United States of America (“United States”), represented by Adsero IP, United States.
Respondent is Whois Agent c/o Domain Protection Services, Inc., United States / Vasilios Lentis, United States.
2. The Domain Name and Registrar
The disputed domain name <the-dishnetwork.net> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2019. On October 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 9, 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 Complainant on October 11, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 15, 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 Respondent of the Complaint, and the proceedings commenced on October 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 15, 2019.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on November 18, 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.
4. Factual Background
Complainant is one of the largest providers of pay-television in the United States. In addition to pay-television, Complainant provides audio programming and Internet access services to its over twelve million residential and commercial subscribers. Complainant has provided its services under the marks DISH and DISHNETWORK since 1995. Complainant owns trademark registrations for these marks including United States Registration No. 3264300 (registered July 17, 2007) for DISH NETWORK; and United States Registration No. 4206082 (registered September 11, 2012) for DISH.
Complainant owns registrations for various domain names that incorporate its DISH and DISH NETWORK marks. These include, among others, <dish.com> (registered August 7, 1995) and <dishnetwork.com>. Complainant uses these domain names to connect to websites that provide information about its products and services.
The date of registration of the disputed domain name, <the-dishnetwork.net>, while unconfirmed by the Registrar, is listed as September 7, 2016. Respondent has no affiliation with Complainant. Respondent has used the URL associated with the disputed domain name to link to a website purporting to offer a program affiliated with Complainant. At the time of the submission of the amended Complaint the disputed domain name resolved to a parking page with pay-per-click links, some of which seemed to be related to Complainant. Complainant has not authorized any activities by Respondent, nor any use of its trademarks thereby.
5. Parties’ Contentions
A. Complainant
Complainant contends that (i) the disputed domain name <the-dishnetwork.net> is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
In particular, Complainant contends that its DISH and DISH NETWORK marks are “famous” and that they are “recognized in markets around the world.” Complainant further contends Respondent has no rights or legitimate interest in the domain name registration or use of the disputed domain name. Rather, Complainant contends that Respondent has acted in bad faith, using the disputed domain name to link to a website that purports to offer a program affiliated with Complainant.
B. Respondent
Respondent did not file a reply to Complainant’s contentions in this proceeding.
6. Discussion and Findings
A. Identical or Confusingly Similar
This Panel must first determine whether the disputed domain name <the-dishnetwork.net> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainant’s registered trademark DISH NETWORK, and merely adds the article “the.” The Panel thus finds that the added term would be perceived by Internet users as descriptive of a website where they could find information about, or get access to, “the” official website for products and services offered by Complainant under this mark.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with added words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, Inter Ikea Systems B.V. v. Polanski,WIPO Case No. D2000-1614; General Electric Company v. Recruiters,
WIPO Case No. D2007-0584; Microsoft Corporation v. Step-Web,
WIPO Case No. D2000-1500; CBS Broadcasting, Inc. v. Y2K Concepts Corp.,
WIPO Case No. D2000-1065.
The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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”.
Respondent did not submit a reply to the Complaint. However, rather, as mentioned in Section 4 of this Panel’s decision, Respondent has used the disputed domain name to link to a website that purports to be affiliated with Complainant and later on for a PPC website. Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interest in the disputed domain name, which Respondent has not rebutted.
C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] 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 [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, Respondent has used the disputed domain name to link to a website that purports to be affiliated with Complainant, and later for a PPC website, presumably for Respondent’s own commercial gain. Given the nature of the content, the Panel finds that Respondent registered and used the disputed domain name with knowledge of Complainant’s prior rights, and to take advantage of it thereby evidencing bad faith.
Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.
7. Decision
For all 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 <the-dishnetwork.net> be transferred to Complainant.
Lorelei Ritchie
Sole Panelist
Dated: December 2, 2019
