Netflix, Inc. v. RDE
Claim Number: FA1303001489844
Complainant is Netflix, Inc. (“Complainant”), represented by Darin L. Brown of Holland & Hart LLP, Colorado, USA. Respondent is RDE (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <netflixpremium.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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 14, 2013; the National Arbitration Forum received payment on March 14, 2013.
On March 14, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <netflixpremium.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 March 15, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 4, 2013 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@netflixpremium.com. Also on March 15, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 10, 2013, 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" 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 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 <netflixpremium.com> domain name, the domain name at issue, is confusingly similar to Complainant’s NETFLIX mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Netflix, Inc., is the world’s largest online movie rental and streaming service, offering more than 33 million members in 40 countries access to a vast library of TV shows and movies via its on-demand streaming service and flat rate DVD-by-mail service. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the NETFLIX mark (e.g., Reg. No. 2,552,950, registered March 26, 2002). Complainant is also the owner of trademark registrations with India’s Office of the Controller-General of Patents, Designs and Trademarks for the NETFLIX mark (e.g., Reg. No. 1,782,352, registered February 6, 2009).
Respondent’s <netflixpremium.com> is confusingly similar to Complainant’s NETFLIX mark because it merely adds the descriptive term “premium” to Complainant’s famous NETFLIX mark and incorporates the mark as the dominant domain name element. Respondent registered the <netflixpremium.com> domain name on October 24, 2012. There is no evidence that Respondent was commonly known by “NETFLIX PREMIUM” prior to registration of the disputed domain name on October 24, 2012. Respondent’s use of the disputed domain name is clearly intended to trade on Complainant’s business reputation. Respondent’s interest in the mark “NETFLIX PREMIUM” is using the mark within the disputed domain name to conduct a phishing scheme. Respondent is fraudulently offering of Netflix Codes in exchange for Internet users’ personal information. Respondent had actual knowledge of Complainant’s prior trademark rights in the NETFLIX mark due to Complainant’s extensive use of the mark and favorable media coverage of Complainant’s services.
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(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.”).
Complainant, Netflix, Inc., is the world’s largest online movie rental and streaming service, offering more than 33 million members in 40 countries access to a vast library of TV shows and movies via its on-demand streaming service and flat rate DVD-by-mail service. Complainant is the owner of trademark registrations with the USPTO for the NETFLIX mark (e.g., Reg. No. 2,552,950, registered March 26, 2002). Complainant is also the owner of trademark registrations with India’s Office of the Controller-General of Patents, Designs and Trademarks for the NETFLIX mark (e.g., Reg. No. 1,782,352, registered February 6, 2009. Respondent appears to reside in India. Therefore, Complainant’s registration of the NETFLIX mark with India’s Office of the Controller-General of Patents, Designs and Trademarks and the USPTO is sufficient to demonstrate its rights in the mark under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).
Respondent’s <netflixpremium.com> domain name is confusingly similar to Complainant’s NETFLIX mark because it merely adds the descriptive term “premium” to Complainant’s famous NETFLIX mark and incorporates the mark as the dominant domain name element. The addition of a generic term does not distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Respondent adds the generic top-level domain (“gTLD”) “.com” to the disputed domain name. The addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Thus, the Panel concludes that Respondent’s <netflixpremium.com> is confusingly similar to Complainant’s NETFLIX mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
There is no evidence that Respondent was commonly known by “NETFLIX PREMIUM” prior to Respondent’s registration of the disputed domain name on October 24, 2012. The WHOIS information identifies “RDE” as the registrant, not an entity identified as “NETFLIX PREMIUM.” Respondent owns no trademark applications or registrations for “NETFLIX PREMIUM,” nor has Complainant identified any company registered to do business in the United States or in India named “NETFLIX PREMIUM.” Respondent’s use of “NETFLIX” and “NETFLIX PREMIUM” is unauthorized. Complainant has not granted permission to Respondent to use the NETFLIX mark or name. Accordingly, Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent’s use of the disputed domain name is clearly intended to trade on Complainant’s business reputation. Respondent’s use of the domain name is not in furtherance of any legitimate interest in the mark “NETFLIX PREMIUM.” Respondent’s interest in the mark “NETFLIX PREMIUM” is in fact illegitimate, as it is using the mark within the disputed domain name to conduct a phishing scheme. Respondent’s disputed domain name resolves to a website stating “Free Netflix Codes – Upgrade Netflix To Premium For Free!” Respondent’s purported offering of free NETFLIX codes in exchange for visitors’ personal information constitutes phishing and is not a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Complainant does not mention any of the typical Policy ¶ 4(b) arguments. However, the Panel finds that it may look beyond Paragraph 4(b) to the totality of the circumstances when analyzing bad faith, as the examples of bad faith set forth in Policy ¶ 4(b) are intended to be illustrative, rather than exclusive. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Respondent is fraudulently offering Netflix Codes in exchange for Internet users’ personal information. Respondent’s disputed domain name resolves to a website stating “Free Netflix Codes – Upgrade Netflix To Premium For Free!” Clearly, Respondent registered and used the NETFLIX mark along with the descriptive grade designator (“premium”) to lure visitors familiar with Complainant’s services to the infringing website, to offer fraudulent and inoperative “free codes” to visitors and to collect and likely profit from the personal information submitted by such visitors. Accordingly, Respondent registered the domain name to phish for Internet users’ personal information, and the Panel finds this is evidence of bad faith use and registration under Policy 4(a)(iii). See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers).
Respondent clearly had actual knowledge of Complainant’s prior trademark rights in the NETFLIX mark due to Complainant’s extensive use of the mark and favorable media coverage of Complainant’s services. Due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <netflixpremium.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 14, 2013
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