Netflix, Inc. v. Hamza EL HAFYANI
Claim Number: FA2307002052485
Complainant is Netflix, Inc. (“Complainant”), represented by David K. Caplan, California, USA. Respondent is Hamza EL HAFYANI (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain name at issue is <onepiecenetflix.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Michael A. Albert as Panelist.
Complainant submitted a Complaint to Forum electronically on July 10, 2023; Forum received payment on July 10, 2023.
On July 12, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <onepiecenetflix.com> 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 July 17, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 7, 2023 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@onepiecenetflix.com. Also on July 17, 2023, 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 August 4, 2023.
Complainant’s additional submission was received August 7, 2023. Respondent’s additional submission was received August 8, 2023.
On August 8, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Michael A. Albert 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Netflix, Inc is an internet entertainment service with approximately 233 million members in over 190 countries providing TV series, films, and games across a wide variety of genres and languages. Complainant contends that through its extensive use of its distinctive NETFLIX Mark, and based on its numerous trademark registrations in the United States and elsewhere around the world, Complainant has indisputable trademark rights in the NETFLIX Mark. The disputed domain name incorporates the NETFLIX Mark in its entirety, and is likely to confuse consumers as to Respondent’s connection with Complainant.
Respondent is not commonly known by the disputed domain name. There is also no relationship between Complainant and Respondent that would give Respondent the right to own or use any domain name incorporating Complainant’s NETFLIX Mark. Further, Respondent does not use the disputed domain name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use.
Respondent registered the disputed domain name in bad faith. Respondent registered and uses a confusingly similar domain name to promote and sell merchandise related to the One Piece manga series. Registration of the disputed domain name coincides with the announcement made by Netflix regarding the introduction of a live-action series based on the same manga series on its platform. Respondent chose this name after Netflix’s announcement to intentionally attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Infringing Website and the corresponding products.
B. Respondent
Respondent contends that the disputed domain name does not infringe on Complainant's rights, and that Respondent has legitimate reasons for registering the disputed domain name.
The disputed domain name does not offer digital streaming services or compete with Netflix in any way. The website serves as a fan-oriented, non-competitive platform that enhances the experience for One Piece fans and contributes positively to Netflix's content promotion. It solely focuses on fan merchandise related to the One Piece manga series, enhancing the overall fandom experience. This positive association further strengthens the connection between Complainant and the One Piece community, offering a complementary and mutually beneficial relationship. Respondent contends that its actions therefore do not result in unfair competition or detriment to Netflix's legitimate interests.
C. Additional Submissions
Complainant
Complainant contends in its additional submission that Respondent's assertion that it has a legitimate interest in the infringing domain because it operates a fan site is unsupported by any evidence. Respondent’s reliance on Warner Bros. Entertainment Inc. v. Privacy service provided by Withheld for Privacy ehf, FA 1971029 (Forum Nov 17, 2021) and Nike, Inc. v. Circle Group Internet, Inc., Case No. D2002-0544 (WIPO Sept. 10, 2002) is misplaced.
Complainant further contends that Respondent's use of the domain for commercial gain is evident, with an explicit admission to focus on profit-oriented merchandise related to the One Piece manga series. The evidence demonstrates that (1) the website is not a genuine "fan site" and (2) it is instead a sales platform that misleadingly exploits the Netflix mark for consumer diversion to counterfeit One Piece merchandise. Complainant repeats its contention that Respondent registered and uses the disputed domain name in bad faith.
Respondent
Respondent, in its additional submission, maintains that it operates as a genuine fan site. The assertion that the registration of the disputed domain name occurred after Netflix's live-action series announcement implies bad faith is disputable. The timing aligns with Respondent’s genuine excitement about the series and a desire to engage with fellow fans. Respondent’s intention was to promote collaboration and discussion, not to exploit Netflix's reputation. The timing is consistent with a fan's enthusiasm, rather than an intention to capitalize on Netflix's goodwill.
For the reasons set out below, the Panel finds that Complainant has established the three factors required by the Policy and is entitled to the relief sought.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.
Complainant has demonstrated that it owns multiple trademark registrations for the mark NETFLIX. The disputed domain name is confusingly similar to Complainant’s well-known NETFLIX mark because it contains the entirety of Complainant’s mark with the addition of “onepiece” and a generic gTLD.
Where a complainant’s mark is clearly identifiable within a disputed domain name, the addition of a descriptive term generally fails to prevent a finding of confusing similarity per Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); Netflix, Inc. v. Miguel Nunez, FA 1966875, (Forum Nov. 1, 2021) (finding adding the entirety of the NETFLIX mark with the descriptive term “jr” and the “.com” gTLD did not negate confusing similarity between the disputed domain name and <netflixjr.com>).
Moreover, the addition of a gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). Here, the addition of the “.com” gTLD thus does not obviate confusion.
Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant confirms that it has not authorized Respondent’s use of the NETFLIX mark or the registration of the disputed domain name. Also, Respondent is not known by Complainant’s mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). The WHOIS information for the disputed domain name lists the registrant as “Hamza EL HAFYANI.” Respondent did not present any evidence to suggest that it is commonly known by the disputed domain name.
Further, Complainant contends that Respondent is attempting to create an impression of affiliation with Complainant for commercial gain. In fact, in its Response, Respondent acknowledges a “positive association [between the disputed domain name and Complainant]…, offering a complementary and mutually beneficial relationship.” An attempt by a respondent to pass itself off as an affiliate of the complainant under false pretenses supports a finding of failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Crow v. LOVEARTH.net, FA 203208 (Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).
Respondent argues that it is operating a legitimate “fan site.” Numerous cases under the Policy have addressed similar claims. Many of these decisions are summarized at https://www.wipo.int/amc/en/domains/search/overview3.0/#item27. That analysis of such decisions suggests that “a respondent’s fan site must be active, genuinely noncommercial, and clearly distinct from any official complainant site.” This Panel is not persuaded from the present record that Respondent is in good faith operating a “fan site” at all, and certainly not that it is “non-commercial.” On the contrary, Complainant has aptly demonstrated the commercial nature of the site. Nor is the site at issue here “clearly distinct” from Complainant’s official sites; indeed the timing of the registration of this site is too coincidental with Complainant’s own launch of a live-action series based on the same manga series on its own platform to be plausibly unrelated to an attempt to capitalize on Complainant’s goodwill.
The Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
While Respondent argues that the disputed domain name was not registered in bad faith, it has not explained away the inference of bad faith that can reasonably be drawn from using a confusingly similar domain name as Complainant.
The disputed domain name is being used to direct Internet users to a webpage selling fan merchandise, which is intended to generate revenue. Intentionally attempting to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or other location, constitutes bad faith.
Respondent’s defense that it has merely launched a “fan site” has been addressed above (in connection with the analysis of rights or legitimate interests), and fails here for the same reasons.
Therefore, the Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <onepiecenetflix.com> domain name be TRANSFERRED from Respondent to Complainant.
Michael A. Albert, Panelist
Dated: August 19, 2023
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