Roku, Inc.v. Christopher Bowser / christopherbowser.com
Claim Number: FA1812001820282
Complainant is Roku, Inc. (“Complainant”), represented by Monica Riva Talley of Sterne, Kessler, Goldstein & Fox PLLC, District of Columbia, USA. Respondent is Christopher Bowser / christopherbowser.com (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rokusmarttv.com>, registered with Wild West Domains, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Vali Sakellarides as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 10, 2018; the Forum received payment on December 10, 2018.
On December 11, 2018, Wild West Domains, LLC confirmed by e-mail to the Forum that the <rokusmarttv.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, LLC 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 December 14, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2019 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@rokusmarttv.com. Also on December 14, 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.
On December 17, 2018, Respondent provided a brief response.
On December 20, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Vali Sakellarides 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 issues 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Roku, Inc., manufactures a variety of digital media devices under the mark ROKU that allow customers to access Internet streamed video and audio services through televisions. Complainant has rights in the ROKU mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,177,666, registered Nov. 28, 2006). See Compl. Ex. 9. Respondent’s <rokusmarttv.com> is confusingly similar to Complainant’s mark as Respondent incorporates the entire ROKU mark, merely adds the generic terms “smart” and “tv,” along with the “.com” generic top-level domain (“gTLD”) to Complainant’s mark.
Respondent has no rights or legitimate interests in the <rokusmarttv.com> domain name. Respondent is not licensed or authorized to use Complainant’s ROKU mark and is not commonly known by the disputed domain name. Additionally, Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s resolving webpage is designed to impersonate Complainant in order to phish for personal information belonging to Complainant’s users.
Respondent registered or uses the <rokusmarttv.com> domain name in bad faith. Respondent attempts disrupt Complainant’s business and attract, for commercial gain, uses to the disputed domain name where Respondent passes off as Complainant. Respondent also uses the disputed domain name to host a phishing scheme. Furthermore, Respondent had actual knowledge of Complainant’s mark when it registered the <rokusmarttv.com> domain name.
B. Respondent
Respondent provided a brief response on December 17, 2018, in which it stated “I have deleted the site, <rokusmarttv.com>, from my server with all content. It is no longer accessible. The domain name will expire on January 6, 2019 and will not be renewed”. See Resp. The Panel notes that the disputed domain name was registered on January 6, 2014.
Preliminary Issue: Consent to Transfer
Respondent appears to consent to transfer the <rokusmarttv.com> domain name to Complainant. However, after the initiation of this proceeding, Wild West Domains, LLC. placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending. As a result, the Panel may find that in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to Complainant, the Panel may decide to forego the traditional UDRP analysis and order an immediate transfer of the <rokusmarttv.com> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
Alternatively, as in the present case, the Panel decides that Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain name without a decision on the merits by the Panel. The Panel finds that the “consent-to-transfer” approach is but one way for cyber-squatters to avoid adverse findings against them. In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Forum July 17, 2008), the panel stated that:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
Therefore, the Panel decides that it would like to analyze the case under the elements of the UDRP.
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.
Complainant claims rights to the ROKU mark based upon registration with the USPTO. Registration with USPTO sufficiently establishes 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 provides copies of its USPTO registrations for the ROKU mark (e.g., Reg. No. 3,177,666, registered Nov. 28, 2006). See Compl. Ex. 9. Therefore, the Panel finds that Complainant has rights in the ROKU mark per Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <rokusmarttv.com> domain name is confusingly similar to Complainant’s ROKU mark as Respondent merely adds a modifier and a gTLD to the mark. Additions of generic and/or descriptive terms and a gTLD to a complainant’s mark does not negate any confusing similarity between a disputed domain name and mark under 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.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Complainant argues Respondent merely adds the descriptive/generic terms “smart”, “tv” and a “.com” gTLD to Complainant’s ROKU mark. The Panel agrees with Complainant and finds that the <rokusmarttv.com> does not contain changes that would sufficiently distinguish it from the ROKU mark per Policy ¶ 4(a)(i).
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) then, the burden shifts to Respondent to show 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”).
Complainant argues that Respondent has no rights or legitimate interests in <rokusmarttv.com> domain name. Specifically, Complainant argues Respondent is not licensed or authorized to use the ROKU mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the disputed 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). The WHOIS information of record identifies Respondent as “Christopher Bowser / christopherbowser.com” and there is no other evidence to suggest Respondent was authorized to use the ROKU mark. See Compl. Ex. 2. The Panel therefore finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Instead, Respondent uses the <rokusmarttv.com> domain name to pass off as Complainant in order to perpetrate a phishing scheme. Using a disputed domain name to pass off and conduct a phishing scheme is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Virtu Financial Operating, LLC v. Lester Lomax, FA1409001580464 (Forum Nov. 14, 2014) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) where the respondent was using the disputed domain name to phish for Internet users personal information by offering a fake job posting on the resolving website); see also Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (refusing to find rights and legitimate interests in a domain name on the part of a respondent when the disputed domain name “resolves to a website that Respondent has designed to mimic Complainant’s own in an attempt to pass itself off as Complainant”). Complainant argues Respondent uses the <rokusmarttv.com> domain name as part of a fraudulent phishing scheme to obtain customer information by using Complainant’s mark and products to impersonate Complainant. See Compl. Ex. 11. Therefore, the Panel finds that such use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Complainant claims Respondent registered and uses the <rokusmarttv.com> domain name in bad faith. Specifically, Complainant claims Respondent attempts to disrupt Complainant’s business and divert, for commercial gain, users to the disputed domain name where it passes off as Complainant. Use of a disputed domain name to unfairly compete with a complainant by impersonating it may be considered evidence of bad faith under Policy ¶¶ 4(b)(iii) and/or (iv). See United States Postal Service v. kyle javier, FA 1787265 (Forum June 12, 2018) (“Complainant alleges that Respondent is using the disputed domain name to divert Internet users to Respondent’s website, which features content that is identical to Complainant’s own website. The Panel finds that Respondent is disrupting Complainant’s business and that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii).”); see also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). Complainant provides screenshots of the disputed domain name’s resolving website which purports to offer competing versions of Complainant’s goods. See Compl. Ex. 11. Complainant argues Respondent’s use of the disputed domain name to unfairly compete disrupts Complainant’s business for Respondent’s commercial gain. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Further, Complainant alleges Respondent also uses the <rokusmarttv.com> domain name in furtherance of a phishing scheme. Use of a disputed domain name to procure users’ personal or financial information may evince a finding of bad faith under Policy ¶ 4(a)(iii). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”). Complainant points out that at Respondent’s disputed domain name’s resolving website, users are asked to submit a comment which asks users to provide their name, email, and/or website. See Compl. Ex. 11. Therefore, the Panel finds Respondent attempts to obtain users’ information, thus demonstrating bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant contends that in light of the fame and notoriety of Complainant's ROKU mark, it is inconceivable that Respondent could have registered the <rokusmarttv.com> domain name without actual knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant further asserts that Respondent’s use of the domain name to pass off as Complainant in furtherance of phishing indicates it had actual knowledge of Complainant’s rights. The Panel agrees and finds Respondent had actual knowledge of Complainant’s rights in the mark and thus registered the name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rokusmarttv.com> domain name be TRANSFERRED from Respondent to Complainant.
Vali Sakellarides, Panelist
Dated: January 9, 2019
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