Roku, Inc. v. Arjun Sridharan / ANANDS
Claim Number: FA1710001751844
Complainant is Roku, Inc. ("Complainant"), represented by Monica Riva Talley of Sterne, Kessler, Goldstein & Fox PLLC, District of Columbia, USA. Respondent is Arjun Sridharan / ANANDS ("Respondent"), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rokucomlink.org>, registered with GoDaddy.com, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 2, 2017; the Forum received payment on October 2, 2017.
On Oct 04, 2017, GoDaddy.com, LLC confirmed by email to the Forum that the <rokucomlink.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 October 6, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 26, 2017 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@rokucomlink.org. Also on October 6, 2017, the Written Notice of the Complaint, notifying Respondent of the email 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 October 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 various digital streaming media devices under the ROKU mark, and claims to have a 37% share of this market in the United States. Complainant first used the ROKU mark in 2003 and owns various U.S. trademark registrations for ROKU and ROKU-formative marks. Complainant states that its customers activate their devices using the URL <roku.com/link>.
Respondent registered the disputed domain name <rokucomlink.org> through a privacy registration service in July 2017. Complainant states that Respondent is not commonly known by the disputed domain name; that it is not an authorized provider of Complainant’s products or services; and that it has not been authorized to use Complainant’s mark. The disputed domain name is being used for a website that includes Complainant’s ROKU mark, purple trade dress, and various other details similar or identical to those used by Complainant. It bears the message “Welcome to ROKU” at the top of the main page, and contains no disclaimer of an affiliation with Complainant. The site prominently depicts Complainant’s products, and promotes both those products and various competing products and services.
Complainant contends, on the above grounds, that the disputed domain name <rokucomlink.org> is confusing similar to a mark in which Complainant has rights; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was 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 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.").
The disputed domain name <rokucomlink.org> corresponds to Complainant's registered ROKU mark, with the addition of the generic terms “com” and “link” and the ".org" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., 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); Goodreads LLC v. Mayk Belov / N/A, FA 1624520 (Forum July 17, 2015) (finding <bestgoodreadslink.com> confusingly similar to GOODREADS); Roku, Inc v. It's So Easy Pty Ltd / Sharyn Webber, DAU2013-0004 (WIPO May 3, 2013) (finding <roku.com.au> confusingly similar to ROKU); Wells Fargo & Co. v. Sergy Selivanov, FA 1241104 (Forum Feb. 19, 2009) (finding <wwwwellsfargocom.org> confusingly similar to WELLS FARGO). The Panel finds that the disputed domain name is confusingly similar to Complainant's mark.
Under the Policy, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (ForumAug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used to promote competing products and services, using Complainant's mark in a manner likely to confuse potential customers. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Kohler Co. v Jaimin Shah / justdial, FA 1717527 (Forum Mar. 23, 2017) (finding lack of rights or legitimate interests where domain name incorporating trademark was used to promote competing products in manner likely to create confusion); Roku, Inc. c. Encargado de Privacidad Protección de Datos / Jorge Villalon, supra (finding lack of rights or legitimate interests based upon use of domain name incorporating ROKU mark to promote compatible programming services in manner likely to create confusion).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name that incorporates Complainant’s registered mark, and is using the domain name for a website that promotes competing products and services in a manner likely to create a false impression of association with Complainant. The Panel considers Respondent’s actions to be indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. See, e.g., Kohler Co. v Jaimin Shah / justdial, supra (finding bad faith registration and use where domain name incorporating trademark was used to promote competing products in manner likely to create confusion); Roku, Inc. c. Encargado de Privacidad Protección de Datos / Jorge Villalon, supra (finding bad faith registration and use under paragraph 4(b)(iv) where domain name incorporating ROKU mark was used to promote compatible programming services in manner likely to create confusion). The facts that the disputed domain name mimics the <roku.com/link> URL used and widely publicized by Complainant, and that Respondent attempted to conceal his identity by registering the domain name through a privacy registration service, lend further support to the inference of bad faith. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rokucomlink.org> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: October 31, 2017
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