Netflix Inc. v. Falsol Enterprises a/k/a Desmond Falsol
Claim Number: FA0909001286999
Complainant is Netflix
Inc. (“Complainant”), represented by Nancy
H. Lutz, of Kelley Drye & Warren LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain name at issue is <netflx.com> domain name registered with DotRegistrar, LLC.
The other domain names at issue are <betflix.com>, <natflix.com>, <neetflix.com>, <netfflix.com>, <netfliix.com>, and <newtflix.com>, registered with Namesdirect.
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 September 30, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 1, 2009.
On September 30, 2009, DotRegistrar, LLC confirmed by e-mail to the National Arbitration Forum that the <netflx.com> domain name is registered with DotRegistrar, LLC. and that Respondent is the current registrant of the names. DotRegistrar, LLC. has verified that Respondent is bound by the DotRegistrar, LLC. 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 September 30, 2009, Namesdirect confirmed by e-mail to the National Arbitration Forum that the <betflix.com>, <natflix.com>, <neetflix.com>, <netfflix.com>, <netfliix.com>, and <newtflix.com> domain names are registered with Namesdirect and that Respondent is the current registrant of the names. Namesdirect has verified that Respondent is bound by the Namesdirect 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 October 7, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 27, 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@netflx.com, postmaster@betflix.com, postmaster@natflix.com, postmaster@neetflix.com, postmaster@netfflix.com, postmaster@netfliix.com, and postmaster@newtflix.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 30, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <netflx.com>, <betflix.com>, <natflix.com>, <neetflix.com>, <netfflix.com>, <netfliix.com>, and <newtflix.com> domain names are confusingly similar to Complainant’s NETFLIX mark.
2. Respondent does not have any rights or legitimate interests in the <netflx.com>, <betflix.com>, <natflix.com>, <neetflix.com>, <netfflix.com>, <netfliix.com>, and <newtflix.com> domain names.
3. Respondent registered and used the <netflx.com>, <betflix.com>, <natflix.com>, <neetflix.com>, <netfflix.com>, <netfliix.com>, and <newtflix.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Netflix Inc., is an online movie rental service. Complainant has over ten million members and provides access to more than 100,000 DVD titles available through the mail and instantly on computers and televisions. Complainant has operated under the NETFLIX mark since April 14, 1998. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its NETFLIX mark (e.g., Reg. No. 2,552,952 issued March 26, 2002).
Respondent has registered the <netflx.com>, <betflix.com>, <natflix.com>, <neetflix.com>, <netfflix.com>, <netfliix.com>, and <newtflix.com> domain names no earlier than May 25, 2002. The <netflx.com> domain name resolves to a website featuring advertisements for movie rental services which compete with Complainant’s services. The <natflix.com>, <neetflix.com>, <netfflix.com>, <netfliix.com>, and <newtflix.com> domain names resolve to websites featuring an advertisement for “Blockbuster,” a specific competitor of Complainant, and offers a direct link to a “Blockbuster” website which offers competing services to Complainant. The <betflix.com> domain name fails to resolve to an active website.
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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the
entities which control the domain names at issue are effectively controlled by
the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides
that a “complaint may relate to more than one domain name, provided that the
domain names are registered by the same domain name holder.” The physical addresses for both Respondents
are identical in the WHOIS information, except that the state “
Previous panels have found that the registration of a mark with a federal trademark authority is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). Complainant holds trademark registrations with the USPTO for its NETFLIX mark (e.g., Reg. No. 2,552,952 issued March 26, 2002). Therefore, the Panel finds Complainant has established rights in its NETFLIX mark under Policy ¶ 4(a)(i).
Complainant contends Respondent’s <netflx.com>, <betflix.com>, <natflix.com>, <neetflix.com>, <netfflix.com>, <netfliix.com>, and <newtflix.com> domain names are confusingly similar to Complainant’s NETFLIX mark. The disputed domain names are simply common misspellings of Complainant’s mark with the addition of a generic top-level domain ("gTLD”) “.com.” The Panel finds the common misspellings of Complainant’s mark and the addition of a gTLD is insufficient to adequately distinguish the disputed domain names from Complainant’s mark. Therefore, the Panel finds Respondent’s disputed domain names are confusingly similar to Complainant’s NETFLIX mark pursuant to Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding the respondent’s <microssoft.com> domain name to be confusingly similar to the complainant’s MICROSOFT mark because they differ by only one letter, and “such a small alteration is insufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in any of the disputed domain names. The burden shifts to Respondent to prove it does have rights or legitimate interests when Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). The Panel finds Complainant made a sufficient prima facie case. Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the disputed domain names. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Respondent has offered no evidence, and there is no evidence in the record, suggesting that Respondent is commonly known by any of the disputed domain names. Complainant asserts that Respondent has never been authorized or licensed to use the NETFLIX mark. The WHOIS information does not provide evidence that Respondent is commonly known by the disputed domain names. Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent’s <netflx.com>
domain name resolves to a website featuring advertisements for movie rental
services which compete with Complainant’s services. The <natflix.com>, <neetflix.com>, <netfflix.com>, <netfliix.com>, and <newtflix.com> domain names
resolve to websites featuring an advertisement for “Blockbuster,” a specific
competitor of Complainant, and offer a direct link to a “Blockbuster” website
which offers competing services to Complainant.
Respondent likely receives click-through fees from the advertisements
contained on the resolving websites. The Panel finds that these uses of the <netflx.com>, <natflix.com>, <neetflix.com>, <netfflix.com>, <netfliix.com>, and <newtflix.com> domain names that are confusingly similar to
Complainant’s mark are not bona fide
offerings of goods or services pursuant to Policy ¶ 4(c)(i) or legitimate
noncommercial or fair uses of the domain names under Policy ¶ 4(c)(iii). See
24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For
The <betflix.com> domain name fails to resolve to an active website. Previous panels have found that a respondent’s failure to make an active use of a disputed domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent is not commonly known by the domain name). Therefore, the Panel finds that this failure to use the <betflix.com> domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).
Moreover, Respondent’s use of the <netflx.com>, <betflix.com>, <natflix.com>, <neetflix.com>, <netfflix.com>, <netfliix.com>, and <newtflix.com> domain names constitutes typosquatting. The Panel finds that Respondent’s use of domain names that are common misspellings of the Complainant’s NETFLIX mark to redirect Internet users seeking Complainant’s website fails to establish rights or interests pursuant to Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <netflx.com>, <natflix.com>, <neetflix.com>, <netfflix.com>, <netfliix.com>, and <newtflix.com> domain names resolve to websites featuring advertisements of Complainant’s competitors in the online movie rental service industry. The <natflix.com>, <neetflix.com>, <netfflix.com>, <netfliix.com>, and <newtflix.com> domain names also offer a direct link to a “Blockbuster” website which offers competing services to Complainant. Internet users interested in Complainant’s online movie rental services may be redirected by Respondent’s confusingly similar domain names to competing online movie rental services. The Panel finds Respondent’s uses of the <netflx.com>, <natflix.com>, <neetflix.com>, <netfflix.com>, <netfliix.com>, and <newtflix.com> domain names disrupts Complainant’s online movie rental services business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
The Panel infers that Respondent receives click-through fees
for redirecting Internet users through the <netflx.com>,
<natflix.com>, <neetflix.com>, <netfflix.com>, <netfliix.com>, and <newtflix.com> domain names resolving to the
websites featuring the advertisements and hyperlinks of Complainant’s
competitors. The Panel finds that this
attempt to profit from the goodwill Complainant has established in its NETFLIX
mark constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See
The Panel finds that it may consider the totality of the
circumstances when conducting a Policy ¶ 4(a)(iii) analysis, and that it is not
limited to the enumerated factors in Policy ¶ 4(b). See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph
4(b) are intended to be illustrative, rather than exclusive.”).
Respondent’s <betflix.com> domain name fails to resolve to an active website. The Panel finds Respondent’s failure to make an active use of the disputed domain name constitutes bad faith registration and use under 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 Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith).
Finally, Respondent’s <netflx.com>,
<betflix.com>, <natflix.com>, <neetflix.com>, <netfflix.com>, <netfliix.com>, and <newtflix.com> domain names show
evidence of typosquatting through the use of common misspellings of
Complainant’s NETFLIX mark. Therefore,
the Panel finds Respondent’s practice of typosquatting constitutes bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See Canadian Tire Corp. v. domain adm’r
no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22,
2003) (finding the respondent registered and used the domain name in bad
faith because the respondent “created ‘a likelihood of confusion with the
complainant’s mark as to the source, sponsorship, affiliation, or endorsement
of the Respondent’s web site or location’. . . through Respondent’s persistent
practice of ‘typosquatting’”); see also Bank of Am. Corp. v. Tak Ume domains for
sale, FA 154528 (Nat. Arb. Forum May 19, 2003) (“Respondent’s
registration and use of the disputed domain name demonstrates a practice
commonly referred to as ‘typosquatting.’
This practice diverts Internet users who misspell Complainant’s mark to
a website apparently owned by Respondent for Respondent’s commercial gain.).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <netflx.com>, <betflix.com>, <natflix.com>, <neetflix.com>, <netfflix.com>, <netfliix.com>, and <newtflix.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: November 11, 2009
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