Plex, Inc. v. Mensur Medic
Claim Number: FA2210002018234
Complainant is Plex, Inc. (“Complainant”), represented by Christopher J. Palermo of Baker Botts L.L.P., Texas, USA. Respondent is Mensur Medic (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <plexmanager.com> (“Domain Name”), registered with Porkbun LLC.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to Forum electronically on October 31, 2022; Forum received payment on October 31, 2022.
On October 31, 2022, Porkbun LLC confirmed by e-mail to Forum that the <plexmanager.com> domain name is registered with Porkbun LLC and that Respondent is the current registrant of the name. Porkbun LLC has verified that Respondent is bound by the Porkbun 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 November 1, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 21, 2022 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@plexmanager.com. Also on November 1, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On November 29, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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, Plex, Inc., provides a streaming service for television, movies, podcasts, and news, and provides other digital media apps, software, and services under the PLEX mark. Complainant claims rights in the PLEX mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,521,345 registered on April 29, 2014). Respondent’s <plexmanager.com> domain name is confusingly similar to the PLEX mark because it wholly incorporates the PLEX mark and adds a generic term and the “.com” generic top-level domain (“gTLD”).
Respondent lacks any rights or legitimate interests in the <plexmanager.com> domain name. Respondent is not commonly known by the Domain Name and Complainant has not authorized or licensed Respondent to use the PLEX mark. Respondent does not use the Domain Name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead attempts to divert internet users to a website (“Respondent’s Website”) which falsely claims to be affiliated with Complainant and purports to offer a service that would allow users to improperly circumvent Complainant’s subscription fees for its services and violate its Terms of Service.
Respondent registered and is using the Domain Name in bad faith by passing off as Complainant and diverting consumers from Complainant’s site and services for commercial gain. Respondent registered the Domain Name with actual knowledge of Complainant’s rights in the PLEX mark since it passes off as Complainant on the Respondent’s Website by reproducing Complainant’s registered Arrow device mark.
B. Respondent
Respondent failed to submit a Response in this proceeding however on July 13, 2021 sent the following e-mail, the relevant portion being reproduced below, to Forum.
If I am to relinquish the domain, what do I need to do?
Complainant holds trademark rights for the PLEX mark. The Domain Name is confusingly similar to Complainant’s PLEX mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and has used the Domain Name 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the PLEX mark through its registration of the mark with the USPTO (e.g., Reg. No. 4,521,345 registered on April 29, 2014). Registration with the USPTO can sufficiently establish rights in a mark under Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a national trademark authority).
The Panel finds that the <plexmanager.com> domain name is confusingly similar to Complainant’s PLEX mark because it wholly incorporates Complainant’s PLEX mark while adding the descriptive term “manager” and the “.com” gTLD to form the Domain Name. These changes are insufficient to distinguish the Domain Name from the PLEX mark under Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”); 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).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the 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) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the PLEX mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Mensur Medic” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name is presently inactive but prior to the commencement of the proceeding resolved to the Respondent’s Website which is a website that purports to allow visitors to configure Complainant’s Plex Media Server instances to stream videos to various third parties other than those licensed under the agreement between Complainant and its customer. This service would place the user in breach of Complainant’s Terms of Service and potentially enable them to improperly circumvent Complainant’s subscription fees. Furthermore, the Respondent’s Website prominently reproduces Complainant’s Arrow device mark giving the impression that it is an official website of the Complainant or otherwise endorsed by the Complainant. The use of a domain name containing the PLEX Mark to resolve to a website that, for commercial gain, assists and encourages individuals to breach Complainant’s terms of service and improperly circumvent subscription fees is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii). See Airbnb, Inc. v. Nima Rahnemoon, FA 1737766 (Forum July 25, 2017) (“It is clear from the evidence that Respondent has used the site attached to the Domain Name to promote illegal unauthorized use of Complainant’s systems… As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii)
The Panel finds on the balance of probabilities that, at the date of registration of the Domain Name, January 3, 2022, Respondent had actual knowledge of Complainant’s PLEX mark as the Respondent’s Website makes references to Complainant’s services (and reproduces Complainant’s Arrow device mark). Indeed, its purported business model relies on the exploitation of Complainant’s Plex Media Server. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith to create confusion with Complainant’s PLEX Mark for commercial gain by using the confusingly similar Domain Name to resolve to a website that assists users in improperly circumventing subscription fees and breaching Complainant’s terms of service. Use of a disputed domain name to encourage and assist users in breaching a company’s terms of service may be evidence of bad faith per Policy ¶ 4(a)(iii). See Twitter, Inc. v. Alvaro Martins / Domaina Admin / Whois Privacy Corp., FA 1703001721606 (Forum April 30, 2017) (holding that use of the disputed domain name to offer instructions on how to hack a <twitter.com> account and offer hacking services is evidence of bad faith).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <plexmanager.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: November 30, 2022
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