Roku, Inc. v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1807001799005
Complainant is Roku, Inc. (“Complainant”), represented by Monica Riva Talley of Sterne, Kessler, Goldstein & Fox PLLC, Washington DC, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mundoroku.tv>, registered with Internet Domain Service BS Corp.
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.
Kenneth L. Port 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 <mundoroku.tv> 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 13, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 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@mundoroku.tv. Also on August 13, 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 September 6, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 a variety of digital media devices under the mark ROKU that allow customers to access Internet streamed video and audio services through televisions, including subscription-based services and services that are available free of charge. Complainant has rights in the ROKU mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,177,666, registered Nov. 28, 2006). See Compl. Ex. 8. Respondent’s <mundoroku.tv> domain name is identical or confusingly similar to Complainant’s mark as it adds the descriptive term “mundo” (Spanish for the word “world”) along with the “.tv” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <mundoroku.tv> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to offer competing digital streaming services. See Compl. Ex. 9. Further, Respondent’s use of the domain name is potentially illegal, as Respondent likely provides pirated streaming services infringing on copyrighted material. Id.
Respondent registered and uses the <mundoroku.tv> domain name in bad faith. Respondent uses the domain name to create a false association with Complainant and attempts to commercially benefit off Complainant’s mark by offering competing streaming services. See Compl. Ex. 9. Such use of the domain name disrupts Complainant’s business. Further, Complainant has filed a concurrent UDRP Complaint against the registrant of the <rokumachtv.com> and <rokuuniverse.com> domain names, who is likely the same registrant as Respondent in this proceeding, thus Respondent has violated Policy ¶ 4(b)(ii) by registering multiple infringing domain names. Finally, Respondent must have been aware of Complainant’s rights in the ROKU mark given the longstanding goodwill associated with the ROKU mark in commerce.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the disputed domain name on January 26, 2017
The Panel finds that the disputed domain name is confusingly similar with Complainant’s trademark; that Respondent has no rights or legitimate interests in or to the disputed domain name; and that Respondent has engaged in bad faith use and registration of the disputed domain name.
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 Panel finds that the disputed domain name, <mundoroku.tv>, is confusingly similar to Complainant’s valid and subsisting trademark, ROKU. Complainant has adequately plead it rights and interests in and to this trademark. Respondent arrives at the disputed domain name by merely adding the word “mundo” (the Spanish word for “world”) and the gTLD “.tv.” This is inadequate to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar with Complainant’s trademark.
The Panel further finds that Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent has no right, permission or license to register the disputed domain name. Respondent is not commonly known by the disputed domain name.
Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to offer competing digital streaming services. See Compl. Ex. 9. Further, although beyond the scope of a UDRP proceeding, Respondent’s use of the disputed domain name is potentially illegal, as Respondent likely provides pirated streaming services infringing on copyrighted material. Id.
As such, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain name.
The Panel further finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Complainant claims that it has filed concurrent UDRP Complaints against the registrant of the <rokumachtv.com> and <rokuuniverse.com> domain names, who is likely the same registrant as Respondent in this proceeding. As such, Respondent has violated Policy ¶ 4(b)(ii) by registering multiple infringing domain names. The registration of multiple confusingly similar domain names incorporating a complainant’s mark can demonstrate bad faith use and registration. See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)). Complainant alleges that Respondent registered all of the domain names given the substantially similar content displayed on all of the resolving webpages. There is no evidence before this Panel to determine definitively that the Respondent here registered the other two; however, this seems quite likely. As such, the Panel finds that Respondent’s registration of multiple confusingly similar domain names evinces bad faith under Policy ¶ 4(b)(ii).
Additionally, Complainant argues that Respondent registered and uses the <mundoroku.tv> domain name in bad faith by disrupting Complainant’s business and creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by offering competing goods or services. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of the complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (finding that the respondent’s use of the disputed domain name to offer competing loan services disrupts the complainant’s business under Policy ¶ 4(b)(iii)); see also 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).”). Complainant provides a screenshot of the resolving webpage, which appears to advertise for both Complainant and its competitors through offering subscriptions of the streaming services. See Compl. Ex. 9. Accordingly, the Panel finds that Respondent disrupts Complainant’s business and attempts to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Further, Complainant claims that Respondent had actual knowledge of Complainant’s rights in the ROKU mark at the time of registering the <mundoroku.tv> domain name. Given the fame of Complainant’s mark and the totality of the circumstances, the Panel finds that Respondent had actual knowledge of Complainant’s prior rights and interests in and to the trademark ROKU at the time of the registration of the disputed domain name.
As such, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mundoroku.tv> domain name be TRANSFERRED from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: September 10, 2018
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