Netflix, Inc. v. Sandeep Kumar
Claim Number: FA1807001798407
Complainant is Netflix, Inc. (“Complainant”), represented by Peter Kidd of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Sandeep Kumar (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dvd-netflix.com> (the “Domain Name”), registered with 1&1 Internet SE.
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.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 24, 2018; the Forum received payment on July 24, 2018.
On July 27, 2018, 1&1 Internet SE confirmed by e-mail to the Forum that the <dvd-netflix.com> domain name is registered with 1&1 Internet SE and that Respondent is the current registrant of the name. 1&1 Internet SE has verified that Respondent is bound by the 1&1 Internet SE 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 July 30, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 20, 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@dvd-netflix.com. Also on July 30, 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 22, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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’s contentions can be summarised as follows:
Complainant is the owner of the NETFLIX mark registered, inter alia, in the United States for entertainment services since at least 2002 with first use recorded as 1998. Complainant uses the URL <dvd.netflix.com> in connection with its DVD delivery movie rental service.
The Domain Name registered in 2017 was connected to a site using Complainant’s logo and a copyright notice suggesting the site is an official site. The site appeared to be for the purpose of tricking visitors into clicking various ads disguised as download links for watching online content. At the time of the submission of the Complaint, the site has been suspended.
The Domain Name is confusingly similar to Complainant’s mark, incorporating it in its entirety, adding only the generic term ‘DVD’, a hyphen and the gTLD .com.
The Domain Name is an example of typosquatting, being near identical to Complainant’s URL <dvd.netflix.com> substituting a hyphen for the period after DVD, and designed to be confusing.
Respondent is not commonly known by the Domain Name and has not been authorised by Complainant to use Complainant’s mark. Using a domain name in connection with a pay per click advertising scheme for financial gain is not a bona fide offering of goods or services or a non commercial legitimate and fair use. Typosquatting also is an indication of lack of legitimate rights or interests in a domain name.
Use of a Domain Name to divert Internet traffic for Respondent’s financial gain for pay per click links constitutes bad faith under the Policy under Para 4(b)(iv). Typosquatting itself is bad faith registration and use under Policy 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the NETFLIX mark registered, inter alia, in the United States for entertainment services since at least 2002 with first use recorded as 1998. Complainant uses the URL <dvd.netflix.com> in connection with its DVD delivery movie rental service.
The Domain Name, registered in 2017, is a typosquatting registration mimicking Complainant’s URL for Complainant’s <dvd.netflix.com> dvd service.
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.”).
Identical and/or Confusingly Similar
The Domain Name consists of Complainant’s NETFLIX mark (registered around the world, inter alia in the USA for entertainment services and used since at least 1998), a hyphen, the generic term ‘DVD’ and the gTLD .com.
The Panel agrees that the addition of a hyphen to Complainant's NETFLIX mark does not distinguish the Domain Name from Complainant's registered trade mark pursuant to the Policy. See Health Devices Corp. v Aspen STC, FA 158254 (Forum July 1, 2003) (finding the addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy 4(a)(i)).
Previous panels have found confusing similarity when a respondent merely adds generic terms to a Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). The Panel agrees that the addition of the generic term ‘DVD’ to Complainant's NETFLIX mark does not distinguish the Domain Name from Complainant's registered trade mark pursuant to the Policy especially as Complainant deals in DVDs and has the URL <dvd.netflix.com> for its DVD delivery service.
The gTLD .com does not serve to distinguish the Domain Name from the NETFLIX mark, which is the distinctive component of the Domain Name. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose to a mark in which Complainant has rights.
Rights or Legitimate Interests
Complainant has not authorised the use of its mark. Respondent has not answered this Complaint and there is no evidence or reason to suggest Respondent is, in fact. commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 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).
There is currently no use of the domain name. See Hewlett-Packard Co. v Shemesh, FA 434145 (Forum April 20, 2005) (where the panel found inactive use is not a bona fide offering of goods or services pursuant to Policy 4(c)(i)). (There is no evidence in the papers of the former use of the Domain Name other than in the cease and desist e mails which do not exhibit screen shots.) Additionally, typosquatting indicates a lack of rights or legitimate interests.
As such, the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Respondent has not answered this Complaint or explained why it should be allowed to register a domain name containing Complainant’s well known mark in what appears on the face of it to be a typosquatting registration, merely substituting a hyphen for a period to mimic Complainant’s URL <dvd.netflix.com>.
Typosquatting itself is evidence of relevant bad faith registration and use. See Diners Club int'l Ltd. v Domain Admin ****** It's all in the name ******, FA 156839 (Forum June 23, 2003) (registering a domain name which entirely incorporates a famous mark in the hope that Internet users will mistype and be taken to the respondent’s site is registration and use in bad faith under Policy ¶ 4(b)(iii)).
As such, the Panel holds that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dvd-netflix.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: August 23, 2018
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