Plex, Inc. v. Kevin Reilly
Claim Number: FA2003001888837
Complainant is Plex, Inc. (“Complainant”), represented by Christopher J. Palermo of Hickman Palermo Becker Bingham LLP, California, USA. Respondent is Kevin Reilly (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kevsplex.com>, registered with NameCheap, Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 18, 2020; the Forum received payment on March 18, 2020.
On March 19, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <kevsplex.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 20, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 9, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@kevsplex.com. Also on March 20, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 14, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Plex, Inc., is a company that provides digital media management computer software and online services. Complainant has rights in the trademark PLEX through its use in commerce since 2008 and its registrations of the mark with multiple national trademark agencies, including the United States Patent and Trademark Office (“USPTO”), the United Kingdom Industrial Property Office (“UKIPO”), the European Intellectual Property Office (“EUIPO”), and others dating back to 2014. Respondent’s <kevsplex.com> domain name, registered on August 20, 2016, is confusingly similar to Complainant’s PLEX mark as it contains the PLEX mark in its entirety and merely adds the descriptive term “kevs” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <kevsplex.com> domain name. Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s PLEX mark. Additionally, Respondent fails to use the disputed domain name in connection with a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to divert Internet users to a competing website.
Respondent registered and uses the <kevsplex.com> domain name in bad faith. Respondent attempts to attract Internet users to the disputed domain name’s website for commercial gain by offering competing services. Additionally, Respondent had actual knowledge in the PLEX mark prior to the registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the PLEX mark through its registration of the mark with multiple national trademark agencies. Registration of a mark with multiple trademark agencies around the world is sufficient to demonstrate rights in the mark under Policy ¶ 4(a)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) (finding, “Registration of a mark with a governmental authority (or, in this case, multiple governmental authorities) is sufficient to establish rights in the mark for purposes of Policy ¶4(a)(i)”). Complainant provides evidence of its registration with multiple agencies including the USPTO, the UKIPO, and the EUIPO. Therefore, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <kevsplex.com> domain name is confusingly similar to Complainant’s mark because the disputed domain name incorporates the PLEX mark in its entirety and adds the descriptive term “kevs” and the “.com” gTLD. The addition of a generic or descriptive term and a gTLD is typically not sufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).) Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s PLEX mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent does not have rights or legitimate interests in the <kevsplex.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the PLEX mark. In considering this issue, relevant WHOIS information can be used to determine if a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by that name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain name shows that the registrant’s name is “KEVIN REILLY” and nothing in the record indicates that Respondent is known otherwise or is licensed or authorized to use Complainant’s PLEX mark. Complainant states that it has conducted research on Respondent but has found no business address, LinkedIn account, press releases, etc. which might indicate that Respondent is commonly known by the name “Kevs Plex”. As Respondent has provided no Response or other submission in this case it does not contest this assertion. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Additionally, Complainant claims that Respondent fails to use the <kevsplex.com> domain name in connection with a legitimate noncommercial or fair use because Respondent uses the domain name to divert Internet users to Respondent’s competing website. Using a disputed domain name with the intent to divert Internet users to a competing website is not a bona fide offering or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”) Here, Complainant claims that Respondent uses the disputed domain name to create confusion among Internet users to lure them to Respondent’s competing website. The services offered via the website at the disputed domain name appear to be media streaming services, similar if not identical to those provided by Complainant. Complainant supports its argument by providing a screenshot of Respondent’s website, which also displays Complainant’s mark in the identical color logo form as that used by Complainant. Even assuming that Respondent is offering Complainant’s PLEX software or services, its website contains no mention of Respondent’s relationship with Complainant (or lack thereof) and so it fails the third prong of the seminal test set out in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001). Thus, the Panel agrees that Respondent’s use of the disputed domain name does not provide it any rights or legitimate interests per Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent must have had actual knowledge of Complainant’s PLEX mark. The Panel notes that actual knowledge is sufficient here and may be proven through a totality of circumstances under Policy ¶ 4(a)(iii). See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.) Here, Complainant asserts that it’s PLEX app has “been downloaded, installed and used by millions of end users” and that “[a]s a result of long and extensive use of the mark … Complainant enjoys significant goodwill in [sic] name PLEX as it relates to media services.” However, the Panel notes that Complainant submits no evidence to support these assertions. There are no copies of advertisements or news articles attesting to Complainant’s business, social media pages promoting its services, or even a screenshot of Complainant’s own website or app. As such, the Panel does not have sufficient evidence upon which to base a finding that Respondent must have known of the PLEX mark based upon long or extensive use of the mark or upon the mark’s goodwill. However, Complainant further asserts that Respondent’s actual knowledge of the PLEX mark is supported by the fact that Respondent uses an identical copy of the PLEX logo on its website to offer products or services that directly compete with Complainant. In light of this evidence the Panel does have sufficient ground upon which to find that Respondent had actual knowledge of Complainant’s rights in the mark.
Complainant next claims that Respondent registered and uses the <kevsplex.com> domain name in bad faith. Specifically, Respondent attempts to attract Internet users to Respondent’s website for commercial gain by offering competing services. Using a disputed domain name to mislead users and redirect them to a competing website may indicate bad faith per Policy ¶¶ 4(b)(iii) and (iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA 1579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”) Complainant claims that Respondent registered the disputed domain name to confuse and divert Internet users familiar with Complainant’s services in order to sell competing streaming services and it submits a screenshot of Respondent’s website in support thereof. Although not specifically asserted by Complainant, the site also appears likely to disrupt Complainant’s business by offering competitive services. The <kevsplex.com> website claims to offer media organizing and streaming services that are identical to those provided by Complainant.
Further, the site makes certain statements that appear likely to give the impression that Respondent is, or is affiliated with Complainant such as soliciting users to sign up for a weekly newsletter, to request the addition of a particular show or movie to its service, and to pay a small sum of money to access certain features of Respondent’s media streaming services. This adds to the likelihood of confusion with Complainant’s PLEX mark and further supports the conclusion that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent’s activities violate, or encourage others to violate the End User License Agreement or the terms of use for its PLEX website and app. These agreements and terms, it is claimed, permit use of Complainant’s app only on an individual basis or within a home for use by family members whereas Respondent’s website offers PLEX services to serve media to arbitrary or unknown users. In WhatsApp Inc. v. Domain Data Guard / Hendro Wardoyo, Whatsapp Extra, D2019-1710 (WIPO Sep. 17, 2019), software offered at the Respondent’s disputed website allowed users of Complainant’s application to “send unsolicited electronic communications (spam), for phishing, or for other unauthorized activities.” Id. The Panel in that case held that “[g]iven that the Respondent is using the disputed domain name in a manner inconsistent with the Complainant’s Terms of Service, it is evident that the Respondent is using the disputed domain name in bad faith.” Id. citing Supercell Oy v. Reza Zarif, D2019-1710 (WIPO May 11, 2018) (“Complainant’s unrebutted allegation that Respondent’s use of the disputed domain name [is] to facilitate the violation of Complainant’s Terms of Service supports a finding of bad faith.”) Here, Complainant has provided screenshots of Respondent’s <kevsplex.com> website that offers to stream various media in association with a prominent display of the PLEX mark. However, Complainant has not submitted a copy of its own End User License Agreement or the terms of use for its own website which it claims are violated by Respondent. As such, the Panel does not sufficient information upon which to find that Respondent’s activities violate either of Complainant’s identified agreements.
In view of the evidence presented, and in the absence of a Response or other submission by Respondent in this case, the Panel finds that Respondent has registered and uses the <kevsplex.com> domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kevsplex.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: April 15, 2020
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