Netflix, Inc. v. b larsen
Claim Number: FA0907001275519
Complainant is Netflix, Inc. (“Complainant”), represented by Nancy
H. Lutz, of Kelley Drye + Warren LLP, Washington,
D.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <netflixs.com>, registered with Godaddy.com, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 24, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 24, 2009.
On July 24, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <netflixs.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July
27, 2009, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 17, 2009
by which Respondent could file a response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent's registration as technical, administrative and billing contacts,
and to postmaster@netflixs.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 20, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <netflixs.com> domain name is confusingly similar to Complainant’s NETFLIX mark.
2. Respondent does not have any rights or legitimate interests in the <netflixs.com> domain name.
3. Respondent registered and used the <netflixs.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant operates an online movie rental business under the NETFLIX mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on March 26, 2002 (Reg. No. 2,552,950). Complainant has used the NETFLIX mark continuously in commerce since at least as early as April 14, 1998, and now gives more than 10 million subscribers online access to their products.
Respondent registered the <netflixs.com> domain name on January 18, 2000. The disputed domain name does not currently resolve to an active website; it had previously resolved to a website that featured links to the websites of Complainant’s competitors.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
The Panel finds that Complainant has established rights in the
NETFLIX mark for purposes of Policy ¶ 4(a)(i) through its trademark
registration with the USPTO (Reg. No. 2,552,950, issued March 26, 2002). See
Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration
of a mark is prima facie evidence of
validity, which creates a rebuttable presumption that the mark is inherently
distinctive."); see also Men’s
Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
As stated in the findings, Complainant has used the NETFLIX
mark continuously in commerce since at least as early as April 14, 1998, and
now has more than 10 million subscribers. Complainant contends that it has established
common law rights in the NETFLIX mark through its use of the mark continuously
in commerce since at least as early as 1998.
Previous panels have found that the use of a mark in commerce
establishes common law rights in that mark, as long as that use is continuous
and sufficient secondary meaning is established. See
Jerry
Damson, Inc. v.
Complainant contends that
Respondent’s <netflixs.com>
domain name is confusingly similar to Complainant’s NETFLIX
mark. The <netflixs.com> domain name differs from Complainant’s mark in two ways:
(1) the letter “s” has been added to the end of the mark; and (2) the generic
top-level domain (gTLD) “.com” has been added to the mark. The Panel finds that adding the letter “s” to
a mark does not sufficiently distinguish a domain name from that mark for the
purposes of Policy ¶ 4(a)(i). See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May
22, 2007) (finding that the addition of the letter “s” to a registered
trademark in a contested domain name is not enough to avoid a finding of
confusing similarity under Policy ¶ 4(a)(i)); see also Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb.
Forum Jan. 11, 2001) (finding that the domain name
<nationalgeographics.com> was confusingly similar to the complainant’s
NATIONAL GEOGRAPHIC mark). The Panel
finds that the addition of a gTLD is also inconsequential when considering
whether a domain name is identical or confusingly similar to a mark. See Busy
Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000)
("[T]he addition of the generic top-level domain (gTLD) name ‘.com’
is . . . without legal significance since use of a gTLD is
required of domain name registrants . . . ."); see also SCOLA v. Wick, FA 1115109 (Nat. Arb. Forum Feb. 1, 2008) (concluding that “the domain name at issue is identical
to [the] complainant’s SCOLA mark, as the only alteration to the mark is the
addition of the generic top-level domain “.com.”). Therefore, the Panel finds that despite these changes, the
disputed domain name remains confusingly similar to Complainant’s NETFLIX mark
pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <netflixs.com> domain name. Under Policy ¶ 4(a)(ii), if the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).
Complainant contends that Respondent is not commonly known
by the <netflixs.com> domain
name nor has it ever been the owner or licensee of the NETFLIX mark. The WHOIS record for the disputed domain name
lists Respondent as “b larsen,” and
what’s more, Respondent has failed to show any evidence contrary to
Complainant’s contentions that Respondent is not commonly known by the <netflixs.com> domain name. Because there is no evidence that Respondent
has ever been commonly known by any variant on the NETFLIX mark, the Panel
finds that Respondent is not commonly known by the <netflixs.com> domain
name pursuant to Policy ¶ 4(c)(ii).
See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where the respondent was
not commonly known by the mark and never applied for a license or permission
from the complainant to use the trademarked name); see also
Respondent was using the <netflixs.com> domain name to host a website that featured links to third-party websites selling similar products to those sold by Complainant. Complainant contends that Respondent received “click-through” fees from those third-party websites, and therefore was commercially benefitting from the use of the disputed domain name. The Panel finds that this use by Respondent of the <netflixs.com> domain name was 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 Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Compaq Info. Techs. Group v Jones, FA 99091 (Nat. Arb. Forum Oct. 4, 2001) (finding that the respondent had no rights or legitimate interests in a domain name that it used to redirect Internet users to a commercial website as part of that website’s affiliate program, where the resultant website contained banner ads as well as various links to offers for free merchandise, including merchandise from the complainant's competitor).
Respondent is currently not making any active use of the <netflixs.com> domain name. The Panel finds that Respondent’s current failure to make an active use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Am. Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent's [failure to make an active use] of the <aolfact.com> domain name for over six months is evidence that Respondent lacks rights and legitimate interests in the domain name.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The <netflixs.com>
domain name had been directing Internet customers to Respondent’s website that
resolves from the disputed domain name.
Complainant contends that Respondent was intentionally disrupting
Complainant’s business by further diverting confused customers to third-party
websites that sell products in the same market as Complainant. The Panel finds that Respondent was
disrupting Complainant’s business, and therefore, that Respondent’s
registration and use of the disputed domain name was in bad faith pursuant to
Policy ¶ 4(b)(iii). See
Complainant contends that Respondent was gaining
commercially from this diversion, through the click-through fees that
Respondent was receiving from the third-party websites. The Panel finds that Respondent was
intentionally using the disputed domain name for commercial gain by creating a
likelihood of confusion with Complainant’s mark, and so, pursuant to Policy ¶
4(b)(iv), the Panel finds that this use was also evidence of Respondent’s registration
and use of the <netflixs.com>
domain name in bad faith.
Currently, the disputed domain
name does not resolve to any active website.
The Panel finds that Respondent’s failure to make an active use of the
disputed domain name at this time is evidence that Respondent registered and is
using the <netflixs.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat.
Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the
domain name or website that connects with the domain name, and that [failure to
make an active use] of a domain name permits an inference of registration and
use in bad faith); see also Pirelli &
C. S.p.A. v.
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <netflixs.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 2, 2009
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