Netflix Inc. v. Anthony Fox
Claim Number: FA0909001287043
Complainant is Netflix Inc. (“Complainant”), represented by Nancy
H. Lutz, of Kelley Drye & Warren LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <netlix.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 September 30, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 1, 2009.
On September 30, 2009, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <netlix.com> domain name is registered with GoDaddy.com, Inc. and that the 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 October 8, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 28, 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on October 14, 2009.
An Additional Submission was received from Complainant on October 19, 2009 and determined to be timely and complete pursuant to Supplemental Rule 7.
On October 21, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <netlix.com>, the domain name in dispute, is confusingly similar to Complainant’s NETFLIX mark.
2. Respondent does not have any rights or legitimate interests in the domain name in dispute.
3. Respondent registered and used the domain name in dispute in bad faith.
B. Respondent makes the following assertions:
1. The domain name in dispute was registered in 1999, more than ten years ago, is not identical to Complainant’s mark and Respondent was not familiar with the NETFLIX mark upon registration of <netlix.com>.
2. Respondent has rights and legitimate
interests in the domain name in dispute and is known as NETLIX by virtue of his
3. Respondent did not register and has not used the domain name at issue in bad faith.
C. Additional Submissions:
The Complainant filed an Additional Submission rebutting the Response which was taken into consideration by the Panel.
Complainant Netflix, Inc. (Netflix) has used its NETFLIX trademark in commerce for over a decade and has held a registration with the United States Patent and Trademark Office since 2002 which registration recites a claimed first use of the mark in commerce of April 14, 1998 in connection with computerized on-line retail services featuring prerecorded videos rental of pre-recorded videos (Reg. No. 3,194,832). Also, Complainant registered its own <netflix.com> domain on November 11, 1997.
Respondent registered <netlix.com>, the domain name at issue, on July 20, 1999 at about the time that Respondent formed Netlix, Inc. for the purpose of offering web hosting services to the public. The website associated with this domain has been used in connection with a cash parking program with GoDaddy.com and as a registered control domain for a reseller account with CoastInc.com and in connection with several small businesses. It appears that Netlix, Inc. may no longer be active as a corporate entity.
Complainant says that Respondent knew or should have constructively known of its rights in the NETFLIX mark by virtue of an intent to use application with the USPTO which predated the registration of the domain name at issue and that <netlix.com> is confusingly similar to NETFLIX. Respondent says that NETFLIX was unknown to him when he registered the domain name at issue more than ten years ago and that he, accordingly, could not possibly have known that some members of the public would make typographical errors in web surfing and wind up at his site instead of Complainant’s <netflix.com> site.
Complainant says that the click-through GoDaddy cash parking program does not constitute a legitimate use of the domain and that the associated website is now languishing due to lack of use. There is no evidence that Respondent attempted to sell the domain name at issue to Respondent for more than out of pocket costs or for any price. There is no “cease and desist” letter sent from Complainant to Respondent prior to filing this UDRP case offered as an exhibit to the Complaint.
Further, in apparent recognition that the facts surrounding this situation occurred more than a decade prior to the instigation of this proceeding, Complainant reminds the Panel that some other panels have held that the equitable doctrine of laches should not be applied in UDRP cases.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 Respondent’s <netlix.com> domain name is not confusingly similar to Complainant’s NETFLIX mark because Respondent’s disputed domain name doesn’t contain the letter “f” and there is no evidence of public confusion satisfactory to the Panel. Even though Complainant clearly has rights in the NETFLIX mark which are even older than Respondent’s rights in the domain name at issue, Complainant has provided no proof to convince the Panel that <netlix.com> is confusingly similar to NETFLIX. The Respondent’s disputed domain name is not confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See iLeads.com LLC v. Elec. Mktg. Sys., Inc., FA 187636 (Nat. Arb. Forum Oct. 13, 2003) (finding that the <aleads.com> domain name was not confusingly similar to the complainant’s ILEADS.COM mark because the letters “a” and “i” are not close to each other on the keyboard, do not look alike, and are not commonly substituted for each other).
Notwithstanding the fact that Complainant has not satisfied Policy ¶ 4(a)(i), because the disputed domain name is not confusingly similar to the NETFLIX mark, and that failure, in and of itself defeats Complainant, the Panel elects to consider the remaining two elements of the Policy as applied to this dispute.
Respondent has used the <netlix.com> domain name since 1999 for the purposes of offering web hosting services to the public and, at or about the time of registration, more than a decade ago, Respondent incorporated an associated Tennessee corporation, Netlix, Inc. Respondent has made demonstrable use of the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name); see also Digital Interactive Sys. Corp. v. Christian W, FA 708968 (Nat. Arb. Forum July 3, 2006) (concluding that the complainant failed to satisfy Policy ¶ 4(a)(ii) because the respondent provided sufficient evidence to convince the panel that it was using the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)).
The <netlix.com> domain name was previously used for “cash parking” with its registrar. Respondent’s previous use of the disputed domain name is evidence that Respondent has rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See McMullen Argus Publ’g Inc. v. Moniker Privacy Servs., D2007- 0676 (WIPO July 24, 2007) (holding that “pay-per-click websites are not in and of themselves unlawful or illegitimate”).
Complainant has not satisfied Policy ¶ 4(a)(ii)
Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Respondent has rights or legitimate interests in the <netlix.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”). Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Complainant has not satisfied Policy ¶ 4(a)(iii)
The Panel concludes that relief shall be DENIED.
James A. Carmody, Esq., Panelist
Dated: November 2, 2009
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