Roku, Inc. v. Renato Ascencio / ServersMX
Claim Number: FA1807001799002
Complainant is Roku, Inc. (“Complainant”), represented by Monica Riva Talley of Sterne, Kessler, Goldstein & Fox PLLC, Washington DC, USA. Respondent is Renato Ascencio / ServersMX (“Respondent”), Mexico.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rokumx.net>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 28, 2018; the Forum received payment on July 28, 2018.
On July 31, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <rokumx.net> domain name are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 August 13, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 2018 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@rokumx.net. Also on August 13, 2018, 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 September 5, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant manufactures a variety of digital media devices under the mark ROKU that allow customers to access Internet streamed video and audio services through televisions, including certain subscription-based services and other services that are available free of charge. Complainant has rights in the ROKU mark through its registration thereof with the United States Patent and Trademark Office (“USPTO”), the Mexican Institute for Industrial Property (“IMPA”) as well as with other national trademark offices. Respondent’s <rokumx.net> domain name is identical or confusingly similar to Complainant’s mark as it adds the geographic designation “mx” (for Mexico) along with the “.net” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <rokumx.net> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to pass itself off as Complainant and offer competing digital streaming services. Further, Respondent’s use of the domain name is potentially illegal, as Respondent likely provides pirated streaming services that infringe on the copyrighted works of third parties.
Respondent registered and uses the <rokumx.net> domain name in bad faith. Respondent uses the domain name to pass itself off as Complainant and create a false association with Complainant in attempts to commercially benefit from the reputation of Complainant’s ROKU mark by offering competing streaming services. Such use of the domain name disrupts Complainant’s business. Further, Respondent must have been aware of Complainant’s rights in the ROKU mark given the longstanding goodwill associated with the ROKU mark in commerce.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 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(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 (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 claims rights in the ROKU trademark through its registration of the mark with the USPTO, the IMPA, as well as other national trademark offices. Registration of a mark with a national office sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (“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).”). From the evidence of its trademark registrations presented here, the Panel finds that Complainant has established rights in the ROKU mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <rokumx.net> domain name is identical or confusingly similar to the ROKU mark as it merely adds the geographic designation “mx” (for Mexico) along with the “.net” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.); see also Transamerica Corporation v. Remigio Lopez / Transamerica, FA 1591667 (Forum January 5, 2015) (<transamericamexico.com> found confusingly similar to the TRANSAMERICA trademark where “the inclusion of the geographic term ‘mexico’ serves no distinguishing value especially given Complainant’s reach into Mexico.”). Further, in most cases, the “.net” TLD may be disregarded for the ¶ 4(a)(i) analysis as it adds no significant meaning to a domain name and does not avoid confusing similarity with a complainant’s trademark. See Textron Innovations Inc. v. Textron Sistemi di Fissaggio srl, FA 1732602 (Forum July 6, 2017) (“Respondent is simply utilizing the Textron name/mark with the top level domain (‘tld’) .net. It is well-settled that a domain name, which utilizes a trademark along with an additional descriptive, generic terms (in this case the tld .net) does not mitigate the confusing use of the trademark.”).
The Panel therefore finds that the <rokumx.net> domain name is confusingly similar to the ROKU mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Here, Complainant contends that the Respondent has no rights or legitimate interests in the <rokumx.net> domain name because it uses the name to pass itself off as the Complainant and offer services in direct competition therewith. Using a confusingly similar domain name to pass oneself off as a complainant while offering competing services fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”); see also Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Complainant has submitted into evidence a screenshot of the resolving <rokumx.net> webpage along with a screenshot of its own <roku.com> webpage, which shows that both pages contain similar designs, type fonts, and color schemes. Respondent’s website also advertises and promotes the sale of products claiming to originate from the Complainant as well as from its competitors and it offers subscriptions to various streaming services that are not offered by the Complainant itself. The Panel also notes that the content on the website is in the Spanish language which indicates that it is intended to appeal to viewers who speak that language, such as may be found in Mexico.
Complainant also argues that Respondent fails to use the disputed domain for any bona fide offering of goods or services because the Respondent uses the domain name to offer unauthorized streaming devices and illegal streaming content that violates international copyright laws. It is well accepted that illegal use of a domain name can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use. See Airbnb, Inc. v. Nima Rahnemoon, FA 1737766 (Forum July 25, 2017) (“It is clear from the evidence that Respondent has used the site attached to the Domain Name to promote illegal unauthorised use of Complainant’s systems… As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name.”). Complainant contends that the content offered on the resolving webpage is pirated, and thus illegal, which further indicates Respondent’s lack of rights and legitimate interests.
Next, the Complaint asserts that, even if the Respondent here could somehow be viewed as a distributor of the ROKU product or streaming services, its use of the <rokumx.net> domain name does not pass the test for demonstrating rights or legitimate interests from such activity as set forth in the seminal case of Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO, November 6, 2001). In this regard, Complainant points out that i) Respondent is not actually offering Complainant’s goods and services as it offers streaming services, television channels, and packages that are not sourced by Complainant; ii) Respondent is not selling only the trademarked goods or services as its site also offers services for use with competing Amazon Fire streaming devices; and iii) the website does not accurately and prominently disclose Respondent’s relationship (or lack thereof) with Complainant as there is nothing on Respondent’s website to indicate that it is not associated with Complainant.
Complainant also claims that its brand reputation in Mexico has been damaged by the sort of activity carried out by Respondent. In support, it submits a news article that mentions a 2017 court-ordered suspension of the sales of ROKU devices in Mexico due to hacking and pirated streaming services. It also references a prior UDRP decision which highlights that this is not the first time Complainant has faced this particular set of circumstances involving a domain name. In Roku, Inc. c. Encargado de Privacidad Protección de Datos / Jorge Villalon, D2017-0026 (WIPO March 7, 2017), a Mexico-based respondent registered a few domain names, including <mundoroku.com>, that were used to promote streaming television programming services. In that case, the Panel found that the respondent lacked rights or legitimate interests based upon its use of domain names that incorporate the ROKU mark in a manner which creates confusion among consumers who will believe that the respondent’s service is connecting with the Claimant or that it has some kind of relationship with the Claimant. Id.
In consideration of these various arguments, the Panel holds that Respondent’s use of the <rokumx.net> domain name to pass itself off as Complainant and provide competing services fails to convey rights and legitimate interests in the domain name per Policy ¶¶ 4(c)(i) and (iii).
Finally, Complainant contends that Respondent is not commonly known by the <rokumx.net> domain name. Where a response is lacking, relevant information including the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent may be considered. See Braun Corp. v. Loney, FA 699652 (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). The WHOIS record identifies “Renato Ascencio / ServersMX” as the registrant of the <rokumx.net> domain name. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the ROKU mark. Panels may use these assertions as evidence that a respondent lacks rights or legitimate interests in a domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and Complainant has not given Respondent permission to use the mark in any manner. As there is no response in this case no evidence or argument is presented to the contrary. Accordingly, the Panel agrees that Respondent is not commonly known by the <rokumx.net> domain name under Policy ¶ 4(c)(ii).
In light of the above, the Panel holds that Respondent does not have any rights or legitimate interests in the <rokumx.net> domain name under Policy ¶ 4(a)(ii).
In asserting that the Respondent registered and uses the <rokumx.net> domain name in bad faith, Complainant first claims that Respondent had actual knowledge of Complainant’s rights in the ROKU mark at the time of registering the disputed domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can form the foundation for a finding of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent must have been aware of Complainant’s rights in the ROKU mark given its longstanding use in commerce and the goodwill associated with the mark. Further, from the content of the <rokumx.net> website, it is clear that Respondent knew of the ROKU mark and specifically targeted it in the <rokumx.net> domain name.
Complainant goes on to argue that Respondent registered and uses the <rokumx.net> domain name in bad faith by disrupting Complainant’s business and creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by offering competing goods or services and passing itself off as Complainant. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum January 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); 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).”). Here, Complainant provides a screenshot of the resolving webpage for the <rokumx.net> domain name as well as for its own <roku.com> website. The website at the disputed domain name contains a number of similarities in design and feel to that of Complainant’s site and claims to offer streaming products and services of both Complainant and its competitors. Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempts to commercially benefit from the reputation of Complainant’s ROKU mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
In light of the evidence and arguments presented, and in view of the lack of any contradicting evidence, arguments, or response from the Respondent, the Panel finds that Respondent registered and used the <rokumx.net> domain name bad faith under 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 <rokumx.net> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: September 6, 2018
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