Netflix, Inc. v. Miroslaw Cyganek
Claim Number: FA1305001499631
Complainant is Netflix, Inc. (“Complainant”), represented by Darin L. Brown of Holland & Hart LLP, Colorado, USA. Respondent is Miroslaw Cyganek (“Respondent”), Poland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <netflix.us>, 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 May 14, 2013; the National Arbitration Forum received a hard copy of the Complaint on May 15, 2013.
On May 14, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <netflix.us> 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 the U.S. Departpment of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On May 15, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 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@netflix.us, in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”). Also on May 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 June 11, 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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 makes the following assertions:
1. Respondent’s <netflix.us.> 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 has rights in the NETFLIX mark, used in connection with online movie rentals and video streaming. Complainant is the owner of registrations for the NETFLIX mark (e.g., Reg. No. 2,552,950 registered March 26, 2002) with the United States Patent and Trademark Office (“USPTO”). The disputed domain name is identical to Complainant’s mark. The disputed domain name pairs Complainant’s mark with the country-code top-level domain (“ccTLD”) “.us.” The addition of a ccTLD does not distinguish the disputed domain name from Complainant’s mark.
There is no evidence that Respondent has ever been commonly known by Complainant’s mark. The WHOIS information for the disputed domain name lists “Miroslaw Cyganek” as the domain name registrant. Complainant has not granted permission to Respondent to use the NETFLIX mark. Respondent registered the disputed domain name for the sole purpose of selling it to a third party for a profit. The WHOIS record indicates Respondent’s intent to sell the disputed domain name via <Sedo.com>, which is a domain auction site. The disputed domain name simply resolves to a template parked domain page on the GoDaddy.com platform. Respondent’s offer to sell the disputed domain name provides evidence of bad faith registration and use. Complainant’s extensive use of the NETFLIX mark and the general fame and notoriety associated with the mark lead Complainant to conclude that Respondent had actual knowledge of the mark prior to registering the disputed domain name. Complainant’s mark has been in continuous use for nearly fifteen years and its services are consumed by more than 33 million people in 40 countries. Respondent registered the <netflix.us> domain name on July 26, 2010.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon the UDRP precedent as applicable in rendering its decision.
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 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 has rights in the NETFLIX mark, used in connection with online movie rentals and video streaming. Complainant is the owner of registrations for the NETFLIX mark (e.g., Reg. No. 2,552,950 registered March 26, 2002) with the USPTO. Panels have determined that a complainant does not need to register its mark in the country in which a respondent operates. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the [UDRP] does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, Complainant has rights in the NETFLIX mark under 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 [UDRP] ¶ 4(a)(i).”).
The disputed domain name is identical to Complainant’s mark and the disputed domain name pairs Complainant’s mark with the ccTLD “.us.” The addition of a ccTLD to an otherwise identical domain name does not distinguish the disputed domain name from a complainant’s mark. See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark). Therefore, Respondent’s <netflix.us> domain name is identical to Complainant’s NETFLIX mark for the purposes of 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 in the record indicating that Respondent owns any service marks or trademarks that reflect the <netflix.us> domain name. Therefore, Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (find that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name; see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Respondent does not own any rights or have any legitimate interests in the <netflix.us> domain name. There is no evidence that Respondent has ever been commonly known by Complainant’s mark. The WHOIS information for the disputed domain name lists “Miroslaw Cyganek” as the domain name registrant. Panels have used the WHOIS record as a factor in determining whether a respondent is commonly known by a disputed domain name. See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that [UDRP] ¶ 4(c)(ii) does not apply). Further, Complainant has not granted permission to Respondent to use the NETFLIX mark. Therefore, Respondent is not commonly known by the <netflix.us> domain name and thus does not have any right or legitimate interest in the <netflix.us> domain name under Policy ¶ 4(c)(iii). See 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent registered the disputed domain name for the sole purpose of selling it to a third party for a profit. The WHOIS record indicates Respondent’s intent to sell the disputed domain name via <Sedo.com>, which is a domain auction site. Auctioning off a domain name is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”). Therefore, Respondent’s use of the <netflix.us> domain name is neither a Policy ¶ 4(c)(ii) bona fide offering of goods or services nor a Policy ¶ 4(c)(iv) legitimate noncommercial or fair use.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent’s offer to sell the disputed domain name provides evidence of bad faith registration and use. Offering a disputed domain name for sale on an auction site is evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Wrenchead.com, Inc. v. Hammersla, D2000-1222 (WIPO Dec. 12, 2000) (finding that offering the domain name for sale at an auction site is evidence of bad faith registration and use). Accordingly, Respondent has registered or used the <netflix.us> domain name in bad faith pursuant to Policy ¶ 4(b)(i).
Complainant’s extensive use of the NETFLIX mark and the general fame and notoriety associated with the mark lead to the conclusion that Respondent had actual knowledge of the mark prior to registering the disputed domain name. Complainant’s NETFLIX mark has been in continuous use for nearly fifteen years and its services are consumed by more than 33 million people in 40 countries. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel concludes that Respondent had actual notice of Complainant's NETFLIX mark and thus registered the <netflix.us> domain name in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); 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)(iii) has been established.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <netflix.us> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 12, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page