DECISION

 

Netflix, Inc. v. Heath grayson / Heath h grayson

Claim Number: FA2309002063725

 

PARTIES

Complainant is Netflix, Inc. ("Complainant"), represented by David K Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Heath Grayson ("Respondent"), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <netflixgames.com>, registered with Name.com, Inc.

 

PANEL

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.

 

Charles A. Kuechenmeister, Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 27, 2023; Forum received payment on September 27, 2023.

 

On September 27, 2023, Name.com, Inc. confirmed by e-mail to Forum that the <netflixgames.com> domain name (the Domain Name) is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 September 29, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of October 19, 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@netflixgames.com. Also on September 29, 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 October 19, 2023.

 

On October 20, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Charles A. Kuechenmeister 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.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is a leading internet entertainment service, whose products include games. It has rights in the NETFLIX mark based upon its registration of that mark with the United States Patent and Trademark Office ("USPTO"). The <netflixgames.com> Domain Name is identical to Complainant's mark as it fully incorporates the NETFLIX mark, merely adding the descriptive term "games" and the generic top-level domain ("gTLD") ".com."

 

Respondent has no rights or legitimate interests in the Domain Name. He has no relationship with Complainant, it is not commonly known by the Domain Name, he is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead uses it to redirect visitors to landing pages that are likely malware sites or to retail or gambling sites, and he offers the Domain Name for sale. 

 

Respondent registered or uses the Domain Name in bad faith. He registered the Domain Name with actual knowledge of Complainant and its rights in the NETFLIX mark, he redirects visitors to landing pages that are likely malware sites or to retail or gambling sites, and he offers the Domain Name for sale.

 

B. Respondent

Respondent registered the Domain Name in July 2013 with the intent to use it for a consumer product review site, to educate consumers about Complainant's business practices, which qualifies as nominative fair use.

 

Respondent has displayed the Domain Name on the worldwide web openly, notoriously, continuously and exclusively since July 2013 without complaint or objection by Complainant. It is only now, after Respondent began to use it for his web hosting account that Complainant has brought this proceeding.

 

Respondent has never used the Domain Name to compete with Complainant.

 

FINDINGS

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 a Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:

 

(1)       the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(2)       the 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.

 

The Panel finds as follows with respect to the matters at issue in this proceeding:

 

Identical and/or Confusingly Similar

The NETFLIX mark was registered to Complainant with the USPTO (Reg. No. 2,552,950) on March 26, 2002 (TSDR printout included in Complaint Annex Q). Complainant's registration of its mark with the USPTO establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i).  DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) ("Complainant's ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).").

 

Respondent's <netflixgames.com> Domain Name is identical or confusingly similar to Complainant's mark, as it fully incorporates the mark, merely adding the descriptive term "games" and the ".com" gTLD. These changes do not distinguish the Domain Name from Complainant's mark for the purposes of Policy ¶ 4(a)(i).  CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) (holding, "The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶ 4(a)(i)."), MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) ("The disputed domain name is confusingly similar to Complainant's mark as it wholly incorporates the CUB CADET mark before appending the generic terms 'genuine' and 'parts' as well as the '.com' gTLD.").  The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 1.7, states that the test for confusing similarity "typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name."  Notwithstanding the changes described above, Complainant's mark is clearly recognizable within the Domain Name, and the Domain Name is likely to cause confusion.

 

For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the NETFLIX mark, in which Complainant has substantial and demonstrated rights. 

 

Rights or Legitimate Interests

If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests"). If a respondent fails to come forward with such evidence, the complainant's prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.

 

Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent's rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):

 

(i)                      Before any notice to the respondent of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

(ii)                      The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii)                      The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) he has no relationship with Complainant, (ii) he is not commonly known by the Domain Name, (iii) he is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead uses it to redirect visitors to landing pages that are likely malware sites or to retail or gambling sites, and (iv) he offers the Domain Name for sale. These allegations are addressed as follows: 

 

Complainant states that Respondent has no business relationship with it and that it has not authorized or licensed Respondent to use its mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant's mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant's mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) ("Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant's trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.").

 

The information furnished to Forum by the registrar lists "Heath h grayson / heath grayson" as the registrant of the Domain Name. Neither of these names bears any resemblance to the Domain Name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA 1571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists "Pablo Palermo" as registrant of the disputed domain name), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 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). The Panel is satisfied that Respondent has not been commonly known by the Domain Name.

 

Complaint Annexes T, U and V are screenshots of the websites resolving from the Domain Name at various times. Annex T displays a warning by Microsoft Security Services that the site has been blocked for security reasons and for safety. Annex U displays websites offering retail goods and gambling, for which Respondent presumably receives pay-per-click revenues. Annex V advises visitors that the <netflixgames.com> website is for sale. None of these uses qualifies as a bona fide offering of goods or services or as a legitimate noncommercial or fair use of a domain name within the meaning of Policy ¶¶ 4(c)(i) or (iii). Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) ("Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii)."), Vance Int'l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees), 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that "a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests" in a disputed domain name).

 

The evidence furnished by Complainant establishes the required prima facie case of no rights or legitimate interests. It is thus incumbent upon Respondent to demonstrate any right or legitimate interest he has in the Domain Name. To this end, Respondent argues that his intent in registering the Domain Name was to develop a site providing information about Complainant's business practices, which would fall within the nominative fair use defense. He also notes that Complainant has waited some ten years since the Domain Name was registered in July of 2013 to bring this proceeding, but he does not assert a claim of laches. Finally, he notes that at no time has he used the Domain Name to compete with Complainant, offering in support of that a screenshot which states that the web page to which the Domain Name points "isn't working."

 

None of these claims establishes any right or legitimate interest in the Domain Name. Respondent's claim of nominative fair use is defeated by the fact that while he may have intended to provide information about Complainant's business practices when he registered the Domain Name in 2013, he has not done so in the ten years since. His uses of the Domain Name as demonstrated by Complainant's evidence have consisted solely of hosting websites that at various time attempt to install malware and provide links to retail products and gambling. He is also offering the Domain Name for sale, and, according to a screenshot he submitted, the Domain Name is not presently being used for any purpose. Respondent has utterly failed to provide any evidence upon which a finding of right or legitimate interest could be based. He has no rights or legitimate interests in the Domain Name.

 

Registration or Use in Bad Faith

Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:

 

(i)                      circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii)                      the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name; or

(iii)                      the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)         by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the 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 the respondent's web site or location or of a product of service on the respondent's web site or location.

 

The evidence of Respondent's conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration or use, based upon one or more of the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, Respondent has used the confusingly similar Domain Name to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of his website, as described in Policy ¶ 4(b)(iv). Respondent here obtained commercial gain from the resolving websites to generate payments in the nature of pay-per-click revenues. The arrangement he had for these sites was different from the typical pay-per-click site in that the Domain Name redirected visitors directly to the site of the downstream vendor rather than display lists of hyperlinks, but the result is the same. When a visitor entered the URL for the Domain Name and was redirected to the vendor's site, Respondent received compensation from the downstream website owners. AllianceBernstein LP v. Texas International Property Associates, D2008-1230 (WIPO 2008) (the domain name resolved to a search directory site with links to third-party vendors and the panel inferred that the respondent received click-through-fees when site visitors clicked on those links), Brownells, Inc. v. Texas International Property Associates, D2007-1211 (WIPO 2007), (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain). Respondent's use of the Domain Name for these purposes was commercial also because the sponsors of the various websites forwarded from Respondent's Domain Name benefitted from the subsequent interest and purchases of those who visited the sites. UDRP panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. Focus Do It All Group v. Athanasios Sermbizis, -0923 (WIPO 2000) (finding that "[I]t is enough that commercial gain is being sought for someone" for a use to be commercial).

 

Next, as discussed above, it appears that at one time Respondent used the Domain Name to install malware on the computers of unsuspecting visitors to his website. This does not fit within any of the scenarios listed in Policy ¶ 4(b) but that paragraph recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005), Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are merely illustrative of bad faith, and that the respondent's bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and using a confusingly similar domain name to install malware onto other persons' computers is, in and of itself, patently in bad faith for the purposes of Policy ¶ 4(a)(iii).  eNom, Incorporated v. Muhammad Enoms General delivery / Enoms.com has been registered just few days after Enom.com, therefore ould not have been regstere, FA 1621663 (Forum July 2, 2015) ("In addition, Respondent has used the disputed domain name to install malware on Internet users' devices. The Panel finds that this is bad faith under Policy ¶ 4(a)(iii)."), Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited, FA 1603444 (Forum Mar. 19, 2015) ("Using the disputed domain name to download malicious software into unsuspecting viewers' computers evidences Respondent's bad faith registration and use pursuant to Policy ¶ 4(a)(iii).").

 

Finally, it is evident that Respondent had actual knowledge of Complainant and its mark when he registered the Domain Name. Complainant and its NETFLIX mark are famous, with Complainant having approximately 238 million members in over 190 countries (information about Complainant submitted in Complaint Annexes D and E).  Complainant's mark is unique, a coined term; it has no meaning except for its association with Complainant. It would not normally be chosen by another person for inclusion in a domain name for any purpose other than to target Complainant. Given the non-exclusive nature of Policy ¶ 4(b), registering a confusingly similar domain name with actual knowledge of a complainant's rights in its mark is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii).  Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).

 

DECISION

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 <netflixgames.com> Domain Name be TRANSFERRED from Respondent to Complainant.

 

 

Charles A. Kuechenmeister, Panelist

October 22, 2023