Plex, Inc. v. Jamie Whittingham / Genex Networks
Claim Number: FA1704001725402
Complainant is Plex, Inc. (“Complainant”), represented by Christopher J. Palermo of Hickman Palermo Becker Bingham LLP, California, USA. Respondent is Jamie Whittingham / Genex Networks (“Respondent”), Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <plexaccess.com>, registered with eNom, Inc.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits here as Panelist.
Complainant submitted a Complaint to the Forum electronically April 5, 2017; the Forum received payment April 5, 2017.
On April 6, 2017, eNom, Inc. confirmed by e-mail to the Forum that the <plexaccess.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. verified that Respondent is bound by the eNom, Inc. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 7, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 27, 2017 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@plexaccess.com. Also on April 7, 2017, 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 Forum transmitted to the parties a Notification of Respondent Default.
On May 2, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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 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’s Allegations in this Proceeding:
Complainant, Plex, Inc., is a leading provider of digital media management computer software and online services based in Los Gatos, California. In connection with this business, Complainant uses the PLEX mark to promote its goods and services. Complainant has rights in the PLEX mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,521,387, registered Apr. 29, 2014). See Compl., at Attached Ex. 3. Respondent’s domain name, <plexaccess.com>, is identical or confusingly similar to Complainant’s PLEX mark as it contains the mark in its entirety and appends the “access” term, as well as the generic top-level domain (“gTLD”) “.com.”
Respondent lacks rights or legitimate interests in <plexaccess.com>. Respondent has not been commonly known by the domain name, and Complainant did not authorize Respondent to register a domain containing its PLEX mark. Respondent did not use <plexaccess.com> in connection with a bona fide offering of goods or services and did not make a noncommercial or fair use. Instead, the resolving website displays Complainant’s mark and offers hyperlinks to services that compete with Complainant’s business for Respondent’s commercial gain. See Compl., at Attached Exs. 4–9.
Respondent registered and is using <plexaccess.com> in bad faith. Respondent’s resolving website attracts Internet users for Respondent’s commercial gain by passing itself off as Complainant’s website. See Compl., at Attached Exs. 4–9.
(b) Respondent’s Contentions in this Proceeding:
Respondent did not file a Response in this proceeding. The Panel notes that Respondent registered <plexaccess.com> January 30, 2016. See Compl., at Attached Ex. 1.
Complainant established rights to and legitimate interests in the disputed domain name that contains in its entirety Complainant’s protected mark.
Respondent has no such rights to or legitimate interests in the disputed domain name that contains in its entirety Complainant’s protected mark.
Respondent registered a confusingly similar domain name that contains Complainant’s protected mark.
Respondent registered and used the disputed domain name in bad faith.
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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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 (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.”).
Identical or Confusingly Similar:
Complainant has rights in the PLEX mark through its registration with the USPTO (Reg. No. 4,521,387, registered Apr. 29, 2014). See Compl., at Attached Ex. 3. Registration of a mark with the USPTO is sufficient to establish rights in the mark. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). The Panel finds that Complainant has rights in the PLEX mark pursuant to Policy ¶ 4(a)(i).
Respondent’s domain name, <plexaccess.com>, is confusingly similar to Complainant’s PLEX mark as it contains the mark in its entirety and appends the “access” term, as well as the gTLD “.com.” Addition of generic terms and a gTLD to a complainant’s mark does not differentiate the mark from a domain created from it per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). The Panel finds Respondent’s domain name is confusingly similar to Complainant’s PLEX mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered and used a confusingly similar domain name that contains in its entirety Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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.”).
Complainant asserts Respondent has not been commonly known by the disputed domain name. Absent a Response, WHOIS information can support a finding that a respondent has not been commonly known by a disputed domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). The WHOIS information on record lists the registrant as “Jamie Whittingham.” See Compl., at Attached Ex. 1. The Panel finds that Respondent has not been commonly known by <plexaccess.com>.
Next, Complainant argues Respondent failed to use <plexaccess.com> in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or otherwise fair use. Instead, Complainant asserts, the disputed domain name resolves to a page attempting to pass itself off as Complainant’s website and offering media services in direct competition with Complainant’s business. See Compl., at Attached Ex. 4. Use of a disputed domain to pass itself off as a complainant and sell goods or services in direct competition with said complainant’s business supports a finding that a respondent lacks rights and legitimate interests pursuant to a Policy ¶ 4(c)(i) & (iii) analysis. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Respondent’s website appropriates Complainant’s PLEX mark and facilitates the violation of Complainant’s end user license agreement. The Panel agrees that Respondent’s behavior constitutes passing off, finding that Respondent failed to use <plexaccess.com> in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or otherwise fair use, pursuant to Policy ¶¶ 4(c)(i) & (iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name that contains in its entirety Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant contends Respondent registered and is using <plexaccess.com> in bad faith. Respondent’s resolving website attracts Internet users for Respondent’s commercial gain by passing itself off as Complainant’s website. Use of a resolving website to pass off as a complainant in order to attract Internet users and provide goods and services in direct competition with complainant is indicative of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). On March 27, 2017, Complainant’s staff received an unsolicited e-mail message from offers@plexaccess.com. See Compl., at Attached Ex. 11. The subject line is “1997 gave us NetFlix but 2017 gives us Plex!” and the body reads: “Welcome to PlexAccess 1,000’s of Movies & TV Shows. Available from anywhere, anytime on any device. Sing (sic) Up from $3.” Id. Complainant asserts that this use imputes an attempt to pass off as Complainant for the purpose of commercial gain. The Panel fully agrees that Respondent’s behavior constitutes passing off and finds that Respondent registered and used <plexaccess.com> in bad faith with full knowledge of Complainant’s rights shown by the name of the domain name and by its open and obvious use pursuant to a Policy ¶ 4(b)(iv) analysis.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <plexaccess.com> domain name be CANCELLED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 15, 2017
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