DECISION

 

Plex, Inc. v. Yong / Beijing Qisike Network Technology Co., Ltd

Claim Number: FA1706001734434

PARTIES

Complainant is Plex, Inc. (“Complainant”), represented by Christopher J. Palermo of Hickman Palermo Becker Bingham LLP, California, USA.  Respondent is Yong / Beijing Qisike Network Technology Co., Ltd (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <plexvpn.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Anne M. Wallace, QC, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on June 5, 2017; the Forum received payment on June 5, 2017.

On June 7, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <plexvpn.com> domain name is 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 June 7, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 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@plexvpn.com.  Also on June 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.

A timely Response was received and determined to be complete on June 15, 2017.

Complainant’s Additional Submission was received and determined to be in compliance with the Rules on June 20, 2017.

The Forum received an Additional Submission from Respondent on June 22, 2017. The Panel will consider this submission.

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be CANCELLED.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant submits:

  1. Complainant registered its PLEX mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,521,345, registered Apr. 29, 2014), and has rights in the mark under Policy ¶ 4(a)(i). Respondent’s <plexvpn.com> is identical or confusingly similar to Complainant’s mark because it simply appends the term “VPN” and the generic top-level domain (“gTLD”) “.com”.
  2. Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its PLEX mark in any fashion, and Respondent is not commonly known by the disputed domain name. Respondent is not using the resolving website in connection with any bona fide offering of goods or making any legitimate noncommercial fair use because Respondent is most likely commercially benefitting through a false association with Complainant. Respondent may be involved in malicious distribution of malware or may be using the site as part of a phishing scheme.
  3. Respondent has registered and is using the disputed domain name in bad faith. Respondent is attempting to attract Internet traffic and commercially benefit from the goodwill of the PLEX mark by creating confusion as to the source, sponsorship, affiliation, or endorsement of its website by using Complainant’s mark. Respondent’s use of the website to conduct a phishing scheme or to distribute malware is also bad faith use.

B. Respondent

Respondent submits:

  1. The disputed domain name is not identical or confusingly similar to Complainant’s trademark, PLEX. Respondent’s addition of “VPN” to the mark evinces the use Respondent makes of the domain name; specifically, a “Virtual Private Network”—an addition which distinguishes the domain name from the PLEX mark.
  2. Respondent  has rights in the PLEX INC. mark because it incorporated a business entity bearing the mark in the Republic of Seychelles (Reg. No. 146,031, registered May 7, 2014). Respondent does not compete with Complainant’s offerings or suggest any association with Complainant on the resolving website. Respondent is making a fair use of the domain name.
  3. Respondent did not register and use the domain name in bad faith. Respondent never heard of Complainant before Complainant started this dispute.

 

C. Additional Submissions

Complainant submits:

  1. Respondent failed to provide a schedule indexing documentary evidence to comply with Rule 5(c)(ix), and Respondent failed to state that a copy of its Response has been sent or transmitted to Complainant in accordance with Rule 5(c)(vii). Accordingly, Complainant requests that the Panel decline to consider the Response.
  2. Respondent has failed to adduce evidence sufficient to establish rights in or to the PLEX mark. The validity of the business registration cannot be validated as the government of Seychelles does not make corporation data available online. Respondent’s only of the trade name “PLEX INC.” is included in the “privacy policy” posted at Respondent’s site. Respondent has not asserted or provided evidence that it has been commonly known by PLEXVPN, so it does not have any legitimate right to use the name.
  3. Respondent suggests delivery of media on its website. This trades on the goodwill associated with Complainant and its PLEX brand, and does not amount to a “fair use” as Respondent asserts.
  4. Respondent’s use in connection with HD videos competes with Complainant and constitutes bad faith disruption under Policy ¶ 4(b)(iii).

 

Respondent submits:

1.    Respondent took transfer of the shares of Plex Inc. on December 7, 2015, at which point Plex Inc. became a wholly owned subsidiary of Respondent.

2.    Respondent’s services are completely different from Complainant’s services. Respondent’s business involves “index VPN application’s higher speed and little time delay for users to watch TV”, which has nothing to do with Complainant.

3.    Respondent has no intention to mislead Complainant’s users. If Complainant needs assurances, Respondent will modify its website to make it clear there is no relationship between Respondent and Complainant.

 

FINDINGS

The Panel finds:

  1. Complainant has rights in the PLEX mark.
  2. The disputed domain name is confusingly similar to Complainant’s PLEX mark.
  3. On the evidence before us, Respondent has not established rights or legitimate interests in the disputed domain name.
  4. Respondent registered and is using the disputed domain name in bad faith.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

Complainant has provided evidence of its registered marks including among others a PLEX mark registered with the USPTO (Reg. No. 4,521,345, registered Apr. 29, 2014). This establishes rights in the PLEX mark under Policy ¶ 4(a)(i). See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Complainant, therefore has rights in the PLEX mark under Policy ¶ 4(a)(i)).

Complainant argues Respondent’s <plexvpn.com> is confusingly similar to Complainant’s PLEX mark because it simply appends the term “VPN” and the gTLD “.com”. Appending a descriptive term and adding a gTLD are not usually considered sufficiently distinguishing to negate confusing similarity. See Allianz of  . Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)). Here, Respondent has appended the gTLD “.com” and the letters “VPN”. VPN is a common abbreviation for “Virtual Private Network”, a term in the computer services business. The Panel finds the term “VPN” is merely descriptive and is not sufficient to distinguish the domain name from Complainant’s PLEX mark. The Panel finds the <plexvpn.com> domain name is confusingly similar to Complainant’s PLEX mark. Complainant as met the requirements of Paragraph 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 shifts to Respondent to show it does have 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).

Complainant claims it has not licensed or otherwise authorized Respondent to use its PLEX mark in any fashion. A lack of contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name can be evidence of a lack of rights and legitimate interests. 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). Additionally, WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).

In this case, Complainant has not licensed or otherwise authorized Respondent to use Complainant’s PLEX mark. Respondent has brought forth no evidence to the contrary. In addition, the <plexvpn.com> WHOIS information of record lists “YONG” as the registrant with an address with Beijing Qisike Network Technology Co., Ltd.. It includes nothing to show Respondent is commonly known by <plexvpn.com>. This is sufficient to shift the burden to Respondent to establish it does have rights or legitimate interests in the disputed domain name.

Respondent has not provided any evidence to establish Respondent is making a legitimate noncommercial or fair use of the domain name. There is likewise no reliable evidence to establish Respondent has been commonly known by the domain name. With its initial response, Respondent provided what it suggests is a corporate registration for a company Plex Inc. in the Republic of Seychelles on May 7, 2014. This purported registration, without more, is suspicious as it comes only days after Complainant’s April 29, 2014 trade mark registration for the PLEX mark. Respondent says Respondent registered Plex Inc. to “run business of proxy tool”. In its additional submission, Respondent provided what it suggests is corporate documentation to show that in December 2015 Beijing Qisike Network Technology Co., Ltd. acquired the shares in Plex Inc. and that Plex Inc. is now a wholly owned subsidiary of Beijing Qisike Network Technology Co., Ltd..

With respect to these assertions, the Panel notes the apparent inconsistency in Respondent’s submissions. Respondent says on the one hand that it incorporated the Plex Inc. corporation in Seychelles in 2014 and then on the other says that it purchased the shares of Plex Inc. in December 2015. There is no explanation for this inconsistency,  and on the evidence before the Panel, Respondent has not established on a balance of probabilities that the alleged corporate registration gives Respondent any right or legitimate interest in the disputed domain name.

Furthermore, other than the single reference to Plex Inc. in the privacy policy on Respondent’s plexvpn.com website, Respondent has provided no evidence to show it has used the PLEX name or mark or a PLEXVPN mark in any way in business at any time. Respondent registered the disputed domain name on May 16, 2016, some two years after the purported corporate registration of Plex Inc. and more than two years after Complainant had obtained its first registered PLEX marks. Respondent has not established on a balance of probabilities that it is commonly known by the disputed domain name or that it has made demonstrable preparation to use the domain name in a bona fide offering of goods or services.

In all the circumstances, the Panel finds Respondent has not established rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Complainant  submits Respondent’s use of the disputed domain name to resolve to HD video services directly competes with Complainant and amounts to disruption under Policy ¶ 4(b)(iii). Competing use has been found to constitute disruption under the Policy. 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 Panel agrees that the disputed domain name is substantially similar to Complainant’s PLEX mark and the offering of HD video streaming services bears a direct connection to Complainant’s services. This constitutes a disruption of Complainant’s legitimate business under Policy ¶ 4(b)(iii).

Complainant also submits Respondent has registered and is using the <plexvpn.com> domain name in bad faith under Policy ¶ 4(b)(iv) by attempting to attract Internet traffic and commercially benefit from the goodwill of the PLEX mark. Use of a disputed domain name to create confusion as to the source, sponsorship, affiliation or endorsement of the content therein constitutes bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed.  Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). Here, Respondent’s website advertises that its product enables users to “watch high-definition videos” and “enjoy high-definition videos from any sites”. Complainant’s business operates in the software and media services business. Customers of Complainant and Respondent are customers looking for computer software and related technology services. The Panel is satisfied Respondents use of the disputed domain name creates confusion. On this basis, Complainant has also established Respondent’s registration and use of the disputed domain name in bad faith under Policy ¶ 4(b)(iv).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, the Panel orders that the <plexvpn.com> domain name be CANCELLED.

 

 

Anne M. Wallace, QC, Panelist

Dated:  June 26, 2017

 

 

 

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