Roku, Inc. v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1807001799003
Complainant is Roku, Inc. (“Complainant”), represented by Monica Riva Talley of Sterne, Kessler, Goldstein & Fox PLLC, District of Columbia, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rokumachtv.com>, registered with Internet Domain Service BS Corp.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, 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, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <rokumachtv.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 6, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 27, 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@rokumachtv.com. Also on August 6, 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 August 29, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
A. Complainant’s background and services
Roku, Inc. (“Roku”) is a Delaware corporation founded in 2002, with its principal place of business in Los Gatos, California.
1. Roku manufactures a variety of digital media devices under the mark ROKU that allow customers to access Internet streamed video and audio services through televisions (TVs), including subscription-based services and services that are available through the receiver free of charge.
2. Roku pioneered streaming for television by developing a streaming platform that delivers a best-in-class user experience. At the heart of the platform is Roku’s proprietary operating system, the ROKU OS. Roku is recognized for its streaming innovation, which is demonstrated by Roku’s growing and highly-engaged customer base. Roku offers the number one TV streaming platform in the United States as measured by total hours streamed, according to a survey by Kantar Millward Brown. As of December 30, 2017, Roku has 19.3 million monthly active accounts that streamed content in the last 30 days. See, Roku, Inc. United States Securities and Exchange Commission Form 10-K, March 1, 2018.
3. In 2017, Roku customers streamed nearly 15 billion hours of video and music. Roku is not only maintaining its lead as the top streaming media player device in the U.S., it is increasing it, with 37% of all streaming devices owned by U.S. broadband households made by Roku. See, “Roku maintains leading share of U.S. OTT device market at 30%, Parks Associates says,” FierceVideo.com, May 31, 2018.
4. Roku has grown the reach and scale of its platform by distributing its operating system through its streaming devices and through licensing arrangements with global TV original equipment manufacturers (OEMs) and pay TV operators.
5. Customers enjoy their ROKU streaming devices because of Roku’s coveted content selection, ease of use, and value. Among other things, customers activate their ROKU devices, select programming/content for streaming, and access entertainment across thousands of streaming channels, through Roku’s website at roku.com.
B. Roku’s Trademarks
1. The mark ROKU is a valuable asset of Roku as an identifier of source for its streaming devices and accessories, computer hardware and software (including its operating systems and Platform-as-a-Service services), streaming and digital broadcasting and distribution services, entertainment information services, and trouble-shooting and technical support services.
2. Roku first used the ROKU mark in 2003, predating Respondent’s registration of the Domain Name by more than a decade. The ROKU mark has been in continuous use since 2003, the First Use in Commerce date claimed in the majority of its trademark registrations captioned below, providing Complainant with common law rights in the mark dating back to at least 2003. See Taxhawk, Inc. v. Silmaril ltd, FA1210001465276 (Nat. Arb. Forum Nov. 7, 2012) (finding that Complainant established common law rights in the FREETAXUSA mark that dated back at least to its first use in commerce date); see also Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999).
3. In addition to its common law rights and other registrations for ROKU and ROKU-formative marks, Roku owns various U.S. Principal Register registrations and corresponding Mexican registration, which were registered and/or have a date of first use prior to registration of the domain name:
The mark ROKU is inherently distinctive, and all of the above-listed registrations are valid and subsisting. Additionally, U.S. Registration No. 3,177,666 for the word mark ROKU is incontestable.
Roku also owns the following trade dress registrations:
[Table Omitted]
FACTUAL AND LEGAL GROUNDS
A. The Domain Name is Confusingly Similar to Complainant’s Marks
The Domain Name “rokumachtv.com” is confusingly similar to Complainant’s ROKU mark because it subsumes the whole of Complainant’s inherently distinctive ROKU mark:
ROKUMACHTV.COM
In addition to the ROKU mark, the domain name also includes the descriptive terms MACH and TV. The definition of the word “Mach” in the Merriam-Webster dictionary is “a usually high speed expressed by a Mach number.” See, “Mach.” Merriam-Webster.com.
Merriam-Webster, n.d. Web. 23 July 2018. Merriam-Webster's dictionary also indicates that the term “mach” is an abbreviation for the word “machine.” The term TV is descriptive for the television programs shown via the Roku or other streaming device (or machine). In view of their mere descriptiveness, the terms MACH and TV do nothing to distinguish the Domain Name from Complainant's ROKU mark. See Roku, Inc. c. Encargado de Privacidad Protección de Datos / Jorge Villalon, D2017-0026 (WIPO Mar. 7, 2017) (finding <dssmediaroku.com>, <mundoroku.com>, <nanoflixroku.com>, and <undertvroku.com> confusingly similar to ROKU); see also Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also American 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)).
Alternatively, if Respondent alleges trademark rights in MACH TV, the inclusion of Respondent's alleged trademark in the domain name is also insufficient to avoid a finding of confusing similarity to the Complainant's mark. It is well accepted that the first element of the Policy functions primarily as a standing requirement. The threshold test for confusing similarity involves a reasoned straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will be considered confusingly similar to that mark for purposes of UDRP standing. See “WIPO Jurisprudential Overview 3.0” §1.7.
In the instant case, the domain name not only incorporates the whole of Complainant’s mark, but also leads with Complainant’s mark, further enhancing its dominance. Even assuming, arguendo, that MACH TV is a trademark, its addition to Complainant’s mark in the domain name does nothing to mitigate a likelihood of confusion. If anything, combination of the ROKU mark with Respondent's alleged mark only exacerbates a likelihood of confusion and confusingly similarity, because it implies that Respondent and its website are sponsored or endorsed by, or affiliated with Roku, and/or that Roku has consented to Respondent’s use of Complainant’s mark in connection with Respondent’s website and offerings.
Further, as a generic top-level domain (gTLD), the appearance of .COM in the domain name at issue similarly fails to distinguish it from Complainant’s ROKU mark. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark).
Accordingly, the Domain Name is confusingly similar to Complainant’s ROKU mark in satisfaction of paragraph 4(a)(i) of the Policy.
B. Respondent has no Rights or Legitimate Interests in the Domain Name
1. Respondent can demonstrate no legitimate purpose for registering the “rokumachtv.com” domain name.
2. Respondent is not and has not been commonly known by the Domain Name.
3. Complainant has not authorized Respondent to use its mark or to register its mark as a domain name.
4. Respondent is not an authorized reseller or distributor of Complainant’s products.
5. Respondent is not an authorized provider of Roku services or devices.
6. Respondent is not making legitimate noncommercial or fair use of the Domain Name, without intending to mislead and divert consumers, or to tarnish Complainant’s ROKU mark for commercial gain.
7. There is nothing on Respondent’s website to explicitly indicate that Respondent is not associated with Complainant (that is, no disclaimer), and the prominent use of Roku's marks and images of ROKU devices throughout the webpage does nothing to suggest otherwise. See screenshots taken from Respondent’s rokumachtv.com website. The images of the ROKU device on the website also infringe Complainant's trade dress, including the registrations listed above.
8. Respondent’s use of the ROKU mark in the domain name at issue cannot be deemed a nominative fair use under the Oki Data test, because (a) Respondent is not actually offering Complainant’s goods and services, (b) the Respondent is not selling only the trademarked goods or services, or goods and/or services intended for use with only Complainant’s goods, and (c) the website associated with the Domain Name at issue does not accurately and prominently disclose Respondent’s relationship with Complainant (as there is no such relationship). Oki Data Americas, Inc. v. ASD, Inc. (WIPO D2001-0903).
(a) As to the first factor, neither Complainant’s devices, nor its services, are, in fact, offered for sale on the website associated with the Domain Name. Respondent offers streaming services/channel packages not sourced by Complainant, and the one channel that purports to be associated with Complainant, ROKUTV, is completely unrelated to Complainant, despite Respondent’s improper use of Complainant’s trademarks in advertising for this channel. See annotated screen shot taken from https://www.rokumachtv.com/, below:
[graphic omitted]
(b) In conflict with the second factor of the Oki Data test, Respondent offers streaming services/channels for devices that compete with Complainant’s device. Not only does Respondent offer services for use with competing ANDROID and AMAZON FIRE streaming devices, the website actually recommends these competing devices to consumers and directs customers to contact Respondent if they need help “getting an Android device,” contrary to any fair use defense that Respondent could credibly make. See annotated screen shot taken from https://www.rokumachtv.com/, below:
[graphic omitted]
(c) And, of equal import, there is nothing on Respondent’s website to indicate that it is not associated with Complainant, as required by the third factor of the Oki Data test. It is noted that Respondent's website does include the statement, “We are an intermediary between the customer and the channels' developers. We are completely independent to their systems and contents.” However, this statement cannot satisfy the third factor, because it does not indicate that Respondent is not associated with Complainant, and Complainant is not a “channel developer.” Furthermore, this content appears at the bottom of the website in a very light gray font, which is not likely to be noticed by consumers. Even so, the mere existence of a disclaimer cannot cure bad faith or legitimize the use. In cases such as this, the panel may consider “respondent’s use of a disclaimer as an admission by the respondent that users may be confused.” See WIPO Jurisprudential Overview 3.0, Question 3.7 and Accord, Gallo v. Hanna Law Firm, WIPO Case No. D2000-0615; DFO, Inc. v. Christian Williams, WIPO Case No. D2000-0181 (“The fact that the users, once so diverted or attracted, are confronted with numerous disclaimers does not cure the initial and illegitimate diversion.”)
Instead of a nominative fair use, Respondent has usurped Complainant’s trademarks to divert consumers of streaming devices and streaming services from Complainant’s website, and/or to convey the impression that Respondent’s streaming services/channel packages are sourced, sponsored, or endorsed by, or associated or affiliated with Complainant. The domain name is used as a “bait and switch” – confusing and luring online consumers looking for Complainant’s devices and related services to rokumachtv.com, only to offer them services purportedly compatible with Complainant’s device, as well as those that compete with Complainant. This is evidence of both no legitimate interest in the domain name, as well as bad faith. Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774 (WIPO Feb. 26, 2001) (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Kanao v. J.W. Roberts Co., Case No. 0109 (CPR July 25, 2001) (bait and switch is not legitimate).
9. Because Respondent registered and uses the Domain Name to infringe Complainant’s rights in the ROKU mark, to trade off Complainant’s goodwill, and to usurp Internet traffic rightly intended for Complainant, Respondent’s registration and use of the Domain Name for a website that appears to be sponsored or endorsed by, or affiliated with, Complainant, or purports compatibility with Complainant’s devices, to offer Respondent’s streaming services do not and cannot constitute a bona fide offering of goods or services pursuant to Section 4(c)(i) of the UDRP. See Roku, Inc. c. Encargado de Privacidad Protección de Datos / Jorge Villalon, D2017-0026 (WIPO Mar. 7, 2017) (finding lack of rights or legitimate interests based upon use of domain name incorporating ROKU mark to promote compatible programming services in a manner likely to create confusion); see also Pandora Media, Inc. and Beats Electronics, LLC v. Diaconu Claudiu / Pandora Beats, FA1605001674549 (Nat. Arb. Forum June 20, 2016) (finding no legitimate interest where respondent is using a confusingly similar domain name to offer competing audio streaming services); see also Yahoo! Inc. v. Microbiz, Inc. (WIPO D2000-1050) (“use that intentionally trades on another cannot constitute a ‘bona fide’ offering of goods or services.”); Chanel, Inc. v. Cologne Zone (WIPO D2000-1809) (“Bona fide use does not exist when the intended use is a deliberate infringement of another’s rights.”); Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. Ulexis a/k/a/ Lawfirm (HNAF FA0106000097684) (finding no legitimate interest when respondent uses the disputed domain name to offer similar/related services and to divert potential customers to its competing website).
10. Respondent's offering of a monthly subscription service for the “RokuTV” channel to stream video content may potentially constitute illegal activity, which has been held to “never confer rights or legitimate interests on a respondent.” See, “WIPO Jurisprudential Overview 3.0” §2.13.1, 2017; see also Wikimedia Foundation, Inc. v. Walter Gerbert (WIPO D2016-1346) (“Use of a well-known mark to deceive Internet users and maliciously infect their computer system is not a bona fide use of the mark.”). Respondent is likely illegally streaming pirated content over its channels, and given that the website is designed in a way that implies sponsorship by Complainant, the reputation of Complainant has been and will continue to be damaged if this use is allowed to continue. In 2017, a Mexican court suspended sales of ROKU devices in Mexico, “because hackers would use it to offer Roku owners pirated content from HBO, ESPN, and Televisa's channels.” See, “Mexico court suspends sale of Roku TV streaming gadgets,” reuters.com, June 29, 2017. The Reuters news article about the “hackers” describes a sales strategy of using the messaging app WhatsApp to offer customers illegal access to packages of channels. Notably, the first point of contact for Respondent on the website is WhatsApp. The suspension of sales of ROKU devices has been lifted, but the illegal activities of parties like Respondent have damaged the reputation of Complainant in Mexico and elsewhere by implying that Roku has sponsored or endorsed the illegal distribution of pirated content. Respondent’s potential distribution of illegal pirated content under the ROKU mark via its subscription-based channels cannot confer a legitimate interest in Respondent’s use of the mark. See Spotify AB v. Haji Pacman, FA1701001713362 (Nat. Arb. Forum Feb. 21, 2017) (finding lack of rights or legitimate interests based upon use of disputed domain name to offer counterfeit audio streaming services).
C. Respondent’s Activities and Bad Faith Acts
1. Respondent misappropriated Complainant’s mark and goodwill when it registered the Domain Name on January 7, 2015, more than a decade after Complainant first commenced use of the ROKU mark and launched its website at roku.com.
2. Respondent’s use of Complainant's marks on its website also constitutes a bad- faith act to cause confusion with Complainant’s marks and to mislead consumers. Respondent's website contains multiple uses of Complainant's marks, including copyrighted images of Complainant's ROKU device, throughout its website.
Respondent purportedly offers streaming channels for use on a ROKU device (and multiple other third-party devices), and may arguably be entitled to use the ROKU mark to denote the compatibility of its services with a ROKU device under the nominative fair use exception. However, Respondent's multiple uses of the ROKU marks throughout the website, including using the ROKU design mark as part of the name of a streaming channel, go well beyond nominative fair use, and constitute use of the marks in bad faith.
3. Respondent falsely states on its website that it is an “authorised reseller” of channels for ROKU devices.
Complainant confirms that Respondent is not, in fact, an “authorised seller” of channels for ROKU devices, and by holding itself out as such, Respondent is misleading customers to believe that Complainant is endorsing or sponsoring the services offered by Respondent. Furthermore, Respondent’s offering of channel services for devices that compete with Complainant is further evidence of bad faith. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii).”)
4. Respondent’s “rokumachtv.com” website diverts Internet users who seek the ROKU mark to Respondent’s commercial website through the use of a domain name that is confusingly similar to Complainant’s mark. The content posted on Respondent’s website does nothing to dispel the misimpression that users have reached the website of a company endorsed or sponsored by Complainant, and instead contains the ROKU mark, as well as images of Roku devices. In short, Respondent is unfairly and opportunistically benefiting from the goodwill associated with Complainant’s ROKU marks.
5. Respondent’s registration and use of the Domain Name meet the bad faith element set forth in Section 4(b)(iv) of the UDRP. Specifically, Respondent’s use of the Domain Name intentionally attempts to attract (and does attract), for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of the products and services on the website. See Roku, Inc. c. Encargado de Privacidad Protección de Datos / Jorge Villalon, D2017-0026 (WIPO Mar. 7, 2017) (finding bad faith registration and use under paragraph 4(b)(iv) where domain name incorporating ROKU mark was used to promote allegedly compatible programming services in manner likely to create confusion).
6. Respondent’s registration and use of the Domain Name meet the bad faith element set forth in Section 4(b)(iii) of the UDRP. Specifically, Respondent disrupts Complainant’s business and unfairly competes with Complainant by using the Domain Name for a commercial website that is similar to Complainant’s through the unfair and improper use Complainant’s trademarks and trade dress, copyrighted content and images, Respondent’s unauthorized streaming services, and images of goods that compete with Complainant. See Google Inc. v. wwwgoogle.com and Jimmy Saivesh Behain (WIPO D2000-1240) (finding bad faith in respondent’s use of the dispute domain name to direct Internet users to respondent’s competing website); Fatbrain.com, Inc. v. IQ Management Corporation (NAF FA0101000096374) (same).
7. Complainant believes that the domain names mundoroku.tv, rokumachtv.com, and rokuuniverse.com may be commonly owned or commonly controlled, because the content on each is remarkably similar. Although the true identities of the Registrants’ of these domains are hidden behind a privacy shield, Complainant asserts that Respondent, and those controlling Respondent or acting in concert with Respondent, do so in bad faith, as they are demonstrating a pattern of targeting Complainant via the registration of ROKU-formative domain names for websites offering goods and services complimentary to or competitive with Complainant. Complainant has filed Complaints against the mundoroku.tv and rokuuniverse.com domain names concurrently herewith. See Paragraph 4(b)(ii) of the Policy.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,177,666, registered Nov. 28, 2006). Registration of a mark with a governmental authority, such as the USPTO, is sufficient to demonstrate rights in a mark under Policy ¶4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶4(a)(i)). Complainant established its rights in the ROKU mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <rokumachtv.com> domain name is confusingly similar to Complainant’s ROKU mark because it merely appends the generic term “machtv” and the gTLD “.com.” Adding a generic and/or descriptive term to a complainant’s mark does not prevent the finding of confusing similarity between a disputed domain name and a mark under Policy ¶4(a)(i). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶4(a)(i)). Respondent’s <rokumachtv.com> domain name is confusingly similar to Complainant’s ROKU mark.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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”).
Complainant claims Respondent does not have rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the domain name and Complainant has not licensed or otherwise authorized Respondent to use its ROKU mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Absent information in the record to the contrary (and there is none in this case), the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶4(c)(ii)). The WHOIS information for the <rokumachtv.com> domain name lists “Domain Admin / Whois Privacy Corp.” as the registrant (which indicates the disputed domain name was registered using a WHOIS privacy service). This registrar does not automatically provide Respondent’s real name once a Proceeding commences (some registrars do provide a respondent’s real name). The Panel concludes Respondent is not commonly known by the <rokumachtv.com> domain name.
Complainant claims Respondent is using the <rokumachtv.com> domain name to offering streaming services that directly compete with Complainant’s business. Using a domain name to resolve to a website competing with a complainant’s business does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use. 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).”). Complainant provided screenshots of the <rokumachtv.com> website, which support Complainant’s contentions. Respondent is not using the domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶4(c)(i) or (iii).
Complainant claims Respondent attempts to pass off as Complainant by featuring Complainant’s mark and using Complainant’s name to offer unauthorized versions of Complainant’s products. Using a domain name to pass off as a complainant does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under the Policy. See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶4(c)(iii)). Complainant provided screenshots of the <rokumachtv.com> website which show the site features Complainant’s ROKU mark and purports to offer a product called “RokuTV.” RokuTV is completely unrelated to Complainant’s business. The Panel concludes Respondent attempts to pass itself off as Complainant. Respondent failed to use the domain name for a bona fide offering or fair use under Policy ¶4(c)(i) or (iii).
Complainant claims Respondent’s disclaimer at the <rokumachtv.com> domain name’s resolving website does not prevent confusion about Complainant’s affiliation with the domain name and its content. When a domain name consists of a complainant’s well-known mark, the addition of a disclaimer may not counter Internet users’ expectation the domain name is sponsored by the complainant, especially if the disclaimer is not conspicuous or clear. DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant). Respondent’s disclaimer reads, “We are an intermediary between the customer and the channels’ developers. We are completely independent to their systems and contents.” The disclaimer is written in a small, light grey font and is displayed at the bottom of the webpage. It is unclear what is meant by “the channels’ developers.” Even though Respondent has a disclaimer, the effect is entirely undermined by Respondent’s false claim to be an “authorised seller…[sic]” Respondent failed to prevent confusion between Complainant’s mark and the disputed domain name, in light of the totality of the facts of this case.
Complainant claims Respondent most likely uses the site to stream pirated content (which would be illegal). Respondent has not contested this claim (or any other claim). Using a domain name to further illegal activity does not constitute a legitimate use for purposes of Policy ¶4(c)(i) or (iii). 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 unauthorized use of Complainant’s systems… As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name.”). Hackers recently used Complainant’s ROKU device and the messaging application “WhatsApp” to illegally stream pirated content in Mexico. The <rokumachtv.com> website features a message encouraging Internet users to send a message to Respondent using WhatsApp (using a Mexico country code) to “Enjoy the Best Channels.” In the absence of evidence to the contrary, the Panel must conclude Respondent uses the disputed domain name to illegally stream pirated content. This means Respondent fails to use the domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use.
Respondent registered the domain name using a WHOIS privacy service. This means Respondent has done nothing to publicly associate itself with the domain name. Respondent could not acquire any rights to the domain name simply by registering it.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has engaged in a pattern of bad faith registration and use under Policy ¶4(b)(ii) by registering multiple domain names that infringe on Complainant’s rights in the ROKU mark. This Panel disagrees. Policy ¶4(b)(ii) provides: “[Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct;” Complainant has not been prevented from reflecting its trademark in a domain name because Complainant owns <roku.com>, which reflects Complainant’s mark. Respondent has not engaged in a pattern of bad faith registration under Policy ¶4(b)(ii).
Complainant claims Respondent disrupts Complainant’s business by diverting Internet users to a competing website. Under Policy ¶4(b)(iii), using a domain name to disrupt a competitor’s business constitutes bad faith. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii)). The <rokumachtv.com> website offers products and services which compete with Complainant’s Internet-streaming business. Respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iii).
Complainant claims Respondent uses the disputed domain name to create confusion with Complainant’s ROKU mark for commercial gain by resolving to a website featuring Complainant’s ROKU mark and products related to Complainant’s business. Under Policy ¶4(b)(iv), using a domain name to attract Internet users and create confusion as to the source, sponsorship, affiliation or endorsement of a website for commercial gain constitutes bad faith. See 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).”). The disputed domain name’s resolving website features Complainant’s ROKU mark, products related to Complainant’s Internet-streaming business, and purports to offer an authorized version of Complainant’s Roku streaming device for purchase. None of that is true. Respondent attempts to create confusion with Complainant’s ROKU mark for commercial gain. Respondent registered and used the domain name in bad faith under Policy ¶4(b)(iv).
Respondent registered the disputed domain name using a WHOIS privacy service. In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <rokumachtv.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, September 4, 2018
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