Netflix, Inc. v. Masterclass Media et al.
Claim Number: FA1509001639527
Complainant: Netflix, Inc. of Los Gatos, California, United States of America.
Complainant Representative: Holland & Hart LLP of Boulder, Colorado, United States of America.
Respondent: Masterclass Media of Victoria, British Columbia, CA.
Masterclass Media Co. of Victoria, British Columbia, Canada.
REGISTRIES and REGISTRARS
Registries: NEWS Registry
Registrars: Wild West Domains, LLC
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
David J. Steele Esq., as Examiner.
Complainant submitted: September 25, 2015
Commencement: September 28, 2015
Response Date: September 30, 2015
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the “Rules”) .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
[URS 18.104.22.168] The registered domain name(s) is/are identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
Complainant states that it owns more than 250 trademark registrations in over 100 jurisdictions throughout the world for its famous NETFLIX mark covering streaming services, including U.S. Reg. Nos. 2,552,950; 3,194,832; 3,299,362; and 4,236,137. Complainant has submitted into evidence the registration certificate for five of its United States registrations.
Complainant further submits as proof of current use of its NETFLIX mark a screen shot showing Complainant’s website, available at netflix.com and, providing streaming services.
Complainant alleges that the netflix.news is identical to Complainant’s NETFLIX mark because it consists entirely of Complainant’s NETFLIX mark paired with the generic toplevel [sic] domain “.news.”
Respondent alleges that he “is making a legitimate or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Complainant owns numerous valid trademark and service mark registrations of national effect for its NETFLIX mark in over 100 jurisdictions throughout the world. These registrations evidence Complainant’s rights for the purposes of the Policy. [URS 22.214.171.124(i)].
Complainant is currently using its NETFLIX mark in connection with, among other goods and services, numerous online services. Evidence of use by Complainant of its NETFLIX mark is a screenshot of Complainant’s website. From the evidence submitted, it is clear that Complainant’s services include “TV shows & moves streamed instantly over the Internet” and that these services are delivered, in part, from Complainant’s own website.
The NETFLIX mark is unquestionably famous within the meaning of 15 U.S.C. 1125(c).
The subject domain name, netflix.news is identical to Complainant’s famous mark. The incorporation of a trademark in its entirety into a domain name is sufficient to establish that the domain name is identical or confusingly similar to the trademark at issue.
I find that the subject domain name netflix.news is identical or confusingly similar to Complainant’s NETFLIX mark.
Determined: Finding for Complainant
[URS 126.96.36.199] Registrant has no legitimate right or interest to the domain name.
Complainant contends that Respondent has no trademark or other intellectual property rights to the Disputed Domain Name or the NETFLIX mark, and is senior to Respondent’s registration and use by many years. Complainant further contends that “[t]here is no evidence that Registrant was commonly known as ‘Netflix’ prior to registration of the Disputed Domain Name.” Complainant also contends that “Complainant is not aware of any company affiliated with Registrant called ‘Netflix.’” Lastly, Complainant contends that “Registrant is not using the Disputed Domain Name for any bona fide offering of goods or services, or for any legitimate noncommercial or fair use. The domain name is currently not active.”
Respondent replies “I registered this domain with the intention of creating a fan site, with news and updates on the Complainant’s service. I have all intention of proceeding while respecting the Complainant's marks, and will not confuse the public as to my site’s ownership (E.g. will not use the Complainant’s logo).”
In the instinct case, Respondent contends that he intends to create a fan site, with news and updates on the Complainant’s service. Such a use by Respondent could evidence a legitimate noncommercial or fair use under the Policy. However, aside from Respondent’s self-serving statement, Respondent has failed to put into the record any facts which support his claim.
URS paragraph 8.4 states “[i]f the Examiner finds that … genuine issues of material fact remain in regards to any of the elements, the Examiner will reject the Complaint under the relief available under the URS.” Because this record raises, but does not provide adequate information to conclude whether or not Respondent has a legitimate right or interest to the domain name, I must find for the Respondent on this element.
Determined: Finding for Respondent
[URS 188.8.131.52] The domain name(s) was registered and is being used in bad faith.
Complainant states in its Complaint that the “Registrant is not making use of the Disputed Domain Name.” Complainant further submits a screenshot evidencing that the subject domain name is not being used. Complainant next argues that Respondent’s passive holding of the domain name, in view of Complainant’s famous mark, “compel a finding that Registrant is using netflix.news in bad faith.”
Previous URS decisions have held that the passive holding of a domain name could support, by clear and convincing evidence, that a domain name is being used in bad faith. See Netflix, Inc. v. Kevin O’Shea et al., FA 639486 (Nat. Arb. Forum Sep. 29, 2015).
In sum, after carefully considering the evidence before me, I find that the evidence is not clear and convincing that the domain name is being used in bad faith.
Determined: Finding for Respondent
A complainant’s failure to establish any one of the above three elements by clear and convincing evidence must result in a decision rejecting the complainant’s requested relief. “If the Examiner finds that any of the standards have not been satisfied, then the Examiner shall deny the relief requested, thereby terminating the URS proceeding…” URS, para. 8.6.
FINDING OF ABUSE OR MATERIAL FALSEHOOD
The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.
The Examiner finds as follows:
After reviewing the parties’ submissions, the Examiner determines that the Complainant has NOT demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name be RETURNED to the control of Respondent:
David J. Steele Esq., Examiner
Dated: October 02, 2015
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