Netflix, Inc. v. Miguel Nunez
Claim Number: FA2109001966875
Complainant is Netflix, Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Miguel Nunez (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <netflixjr.com>, registered with GoDaddy.com, LLC.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 29, 2021; the Forum received payment on September 29, 2021.
On September 30, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <netflixjr.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 October 6, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 26, 2021 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@netflixjr.com. Also on October 6, 2021, 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 October 31, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it is the world’s leading internet entertainment service with over 209 million members in over 190 countries enjoying TV series, documentaries and feature films across a wide variety of genres and languages. Complainant’s members can watch as much as they want, anytime, anywhere, on any internet-connected screen. Members can play, pause and resume watching, all without commercials or commitments. Complainant is a pioneer in the internet delivery of TV shows and movies, launching its first DVD rental and sales site on April 14, 1998, and launching its streaming service in 2007. Since its launch, Complainant has developed an ecosystem for internet-connected screens and has added increasing amounts of content that enable consumers to enjoy TV shows and movies directly on their internet-connected screens. As a result of these efforts, Complainant has experienced growing consumer acceptance of, and interest in, the delivery of TV shows and movies directly over the internet. By 2014, Complainant had reached over 57.4 million members, and in 2015 the number of its members rose 30% percent to over 74.8 million members. In 2016, the number of its members continued to rise reaching 93.8 million members, marking a 25% rise in members. On April 21, 2017, Complainant had reached 100 million members. By April 16, 2018, Complainant had 125 million subscribers. As of July 23, 2018, Complainant was ranked the 12th most visited website in the United States and 27th most visited website globally, based on monthly unique visitor metrics. As of April 22, 2019, Complainant was ranked 12th in the U.S., and 25th globally. As of September 23, 2021, Complainant was ranked the 18th most visited website in the United States and the 19th globally. Complainant continues to add members at an astonishing rate. Over the year 2020 and the first half of 2021, it added over 42 million members. Complainant’s global popularity and high quality content have also resulted in immense financial success. Complainant posted record revenues of 6.148 USD billion in the second quarter of 2020, 6.436 USD billion in the third quarter of 2020, and 6.644 USD billion in the fourth quarter of 2020, resulting in annual revenue for 2020 of nearly 25 USD billion. Complainant’s success continues into 2021 as well: in the first two quarters of this year, Netflix posted revenues of 7.163 USD billion and 7.341 USD billion. Complainant’s mobile applications to view its digital streaming content, available for both iOS and Android operating systems, are enormously popular. As of September 23, 2021, Complainant’s App was ranked among the top 5 most-downloaded entertainment apps on iPhone in 97 countries, and on Android in 58 countries. Complainant’s original content has also been very successful commercially. Films and series produced by Complainant are consistently recognized around the world by critics and awards bodies, proving that Complainant has become not only a mainstay but a record-breaker in the entertainment awards circuit. For example, in 2018, it was the most-nominated studio at the Emmy Awards and won 23 awards. In 2019, it won four Academy Awards. It led both the film and television nominations at this year’s Golden Globes with 17 nominations in each category. It led the nominations for the 2020 Emmy Awards as well with 160 nominations, the most ever for a television network. It received 24 Oscar nominations in 2020 and 36 nominations in 2021, each more than any other major Hollywood studio or distributor, winning two in 2020 and seven in 2021. Most recently, Complainant tied the all-time record for most Emmy wins in a single season, with 44 wins in 2021. The Crown and The Queen’s Gambit won 11 awards each, including Outstanding Drama Series and Outstanding Limited Series. Complainant entered the awards with an impressive 129 nominations. Finally, Complainant is the owner of the highly successful “Netflix Jr.” channel on YouTube, which has over 9 million subscribers and over 5.6 billion views as of the date of this Complaint. Previously “Netflix for Kids,” the channel rebranded to Netflix Jr. in September 2019.
Complainant has rights in the NETFLIX mark through its registration of the mark in the United States in 2002. The mark is registered elsewhere around the world and it is well known. In addition, Complainant has common law trademark rights in the NETFLIX JR mark.
Complainant alleges that the disputed domain name is confusingly similar to its NETFLIX mark, as it incorporates the mark in its entirety, merely adding the descriptive term “jr” (which stands for junior) and the “.com” generic top-level domain (“gTLD”). Complainant cites UDRP precedents to support its position. Further, it is identical to Complainant’s NETFLIX JR mark.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized or licensed Respondent to use the NETFLIX mark, nor is Respondent commonly known by the disputed domain name. Further, Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as the resolving website displays pay-per-click advertising links to a combination of competing and unrelated products and services. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. The resolving website displays click-through hyperlinks to competing and unrelated third-party products and services. Additionally, Respondent had actual notice of Complainant’s rights in the mark, evidenced by the use of the mark and the notoriety of Complainant’s mark. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the mark NETFLIX dating back to 2002 and uses it to provide Internet video streaming services.
The disputed domain name was registered in 2020.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent is using the disputed domain names to resolve to a web site that contains advertising to products and services, some of which compete with those of Complainant.
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 alleges that it has common law trademark rights in the mark NETFLIX JR. However, for the reasons set forth below, the Panel need not consider that mark. The disputed domain name incorporates Complainant’s registered NETFLIX mark in its entirety, merely adding the descriptive term “jr” (which stands for junior) and the “.com” gTLD. Merely adding a descriptive term and a gTLD is not sufficient to differentiate the disputed domain name from the mark. See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); see also Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”). The Panel therefore finds that the <netflixjr.com> domain name is confusingly similar to Complainant’s NETFLIX mark per Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Complainant to use its mark. Respondent commonly known by the disputed domain name: the Panel may reference WHOIS information to determine whether a Respondent is commonly known by a disputed domain name. 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). Here, the WHOIS Information shows the registrant as “Miguel Nunez”. Thus the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
The resolving website displays parked pay-per-click advertising hyperlinks to products and services, some of which compete with those of Complainant, and some of which are unrelated. Using a disputed domain name to present users with competing hyperlinks to complainant’s business is not a bona fide offering of goods and services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) (“Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). The Panel therefore finds Respondent fails to use the disputed domain name to make a bona fide offering of goods and services or legitimate noncommercial or fair use Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the dispute domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, the resolving website displays advertising links to competing and unrelated products and services. Past panels have found that using the disputed domain name to resolve to a website that offers users hyperlinks to products or services that compete with Complainant’s business constitutes bad faith under Policy ¶ 4(b)(iv). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”); see also Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). Bad faith has been found even where a respondent has commercially benefited through links unrelated to a complainant’s mark. See Bank of Am. Fork v. Shen, FA 699645 (Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). Therefore, the Panel finds bad faith registration and use pursuant to Policy ¶ 4(b)(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 <netflixjr.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: November 1, 2021
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