Netflix, Inc. v. Robert Brooks
Claim Number: FA1904001840643
Complainant is Netflix, Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Robert Brooks (“Respondent”), United States of America.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <netfdix.com>, <netfhix.com>, <netflhx.com>, <netfli8.com>, <netflih.com>, <netfliy.com>, <netflmx.com>, <netfnix.com>, <neuflix.com>, <nevflix.com>, <ngtflix.com>, <nmtflix.com>, and <oetflix.com> registered with eNom, LLC.
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.
Luiz Edgard Montaury Pimenta as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 25, 2019; the Forum received payment on April 25, 2019.
On April 26, 2019, eNom, LLC confirmed by e-mail to the Forum that the <netfdix.com>, <netfhix.com>, <netflhx.com>, <netfli8.com>, <netflih.com>, <netfliy.com>, <netflmx.com>, <netfnix.com>, <neuflix.com>, <nevflix.com>, <ngtflix.com>, <nmtflix.com>, and <oetflix.com> domain names are registered with eNom, LLC and that Respondent is the current registrant of the names. eNom, LLC has verified that Respondent is bound by the eNom, 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 April 30, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 10, 2019 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@netfdix.com, postmaster@netfhix.com, postmaster@netflhx.com, postmaster@netfli8.com, postmaster@netflih.com, postmaster@netfliy.com, postmaster@netflmx.com, postmaster@netfnix.com, postmaster@neuflix.com, postmaster@nevflix.com, postmaster@ngtflix.com, postmaster@nmtflix.com, and postmaster@oetflix.com. Also on April 30, 2019, 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 May 20, 2019.
On May, 24, 2019, Complainant submitted additional written statements and documents.
On May 28, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Luiz Edgard Montaury Pimenta 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is the world’s leading internet entertainment service with over 148 million members in over 190 countries.
Complainant holds trademark registrations in several countries across the globe, in particular, it holds registration for its NETFLIX mark with the United States Patent and Trademark Office (“USPTO”).
Due to the fame and longevity of Complainant’s use and registration of its NETFLIX mark, Complainant has become recognized by the consuming public.
Complainant argues that the disputed domain names resolve to a website with the text “you have been redirected here by the starnoise research project. This redirect is temporary, things will return to normal. All the best, Michael Brooks”.
According to Complainant, Respondent works in the field of online security and researches security vulnerability.
Complainant argues that Complainant reached out to Respondent on February 4, 2019 to request the transfer of the disputed domain names and Respondent would have agreed to participate in Complainant’s bug bounty program. Complainant agreed to pay Respondent $4,000 but Respondent reversed his decision to participate in the bug bounty program.
Complainant claims that Respondent’s <netfdix.com>, <netfhix.com>, <netflhx.com>, <netfli8.com>, <netflih.com>, <netfliy.com>, <netflmx.com>, <netfnix.com>, <neuflix.com>, <nevflix.com>, <ngtflix.com>, <nmtflix.com>, and <oetflix.com> (the “disputed domain names”) are confusingly similar to Complainant’s mark because they incorporate the NETFLIX mark in its entirety, changing only a single letter, and adding the “.com” generic top-level domain (“gTLD”).
Complainant maintains that Respondent has no rights or legitimate interests in the disputed domain names because Respondent is not commonly known by the disputed domain names and is not authorized or permitted to use Complainant’s mark in any fashion.
Additionally, Respondent is not making any bona fide offering of goods or services or any legitimate noncommercial or fair use of the domain names. Rather, the Respondent holds the disputed domain names in an attempt to sell them and further takes advantage of user’s typographical errors through bitsquatting, which evinces a lack of rights and legitimate interests.
Complainant claims that Respondent has registered and is using the disputed domain names in bad faith because Respondent attempts to sell the disputed domain names.
According to Complainant, the Respondent initially agreed to transfer the disputed domain names in through Complainant’s bug bounty program, but later revoked the acceptance to take a better offer. Further, Respondent engaged in bitsquatting, similar to typosquatting, to take advantage of computer hardware errors. Finally, Respondent had actual knowledge of Complainant’s mark due to the fame and length of use of the mark.
Finally, Complainant requests that the domain names be transferred from Respondent to Complainant.
B. Respondent
In summary, Respondent informs that is an internet researcher and has rights in the disputed domain names since July 24, 2016, due to registration.
Respondent claims that none of the domain name under dispute have a registered trademark and registration of these domain names were not created to resemble any trademark holder.
Respondent argues that none of the domain names under dispute match Netflix and this is intentional. These names would not be intended to be confusing. If Respondent had intended to confuse consumers, it would have registered a homoglyph name or used the NETFLIX mark along with a descriptive top-level domain.
In addition to that, Respondent argues that no member of the public would be confused by the disputed domain names and these registrations are not intended to affect any trademark holder.
Additionally, Respondent argues that uses the disputed domain names for internet research and to understand internet functions on the platform. Respondent has never listed the domain names for sale publicly and intends to hold on to the domain names perpetually.
Respondent concludes by saying that did not register the domain names in bad faith and has no intention of selling the disputed domain names.
C. Additional Submissions
Complainant argues that it is well established that misspelling by a single letter, does not distinguish a disputed domain name from a complainant’s mark and all the disputed domain names comprise single letter misspelling of the NETFLIX mark.
Complainant adds that Respondent (1) registered the disputed domain names with actual knowledge of the NETFLIX mark; (2) acknowledged Complainant as the rightful owner of the disputed domain names; (3) agreed to transfer the disputed domain names; (4) pressure Complainant into a more favorable business deal to benefit Respondent; and (5) made veiled threats to sell the disputed domain names to cyberattackers.
Complainant is the world’s leading internet entertainment service with over 148 million members in over 190 countries. Complainant owns several trademark registrations for NETFLIX in various countries, including the USPTO, eg: registration No 4953701, 4788783, 3299362, 3194832 and 2552950.
Respondent registered the disputed domain names on July, 24, 2016.
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 this case, it is well clear that Complainant has rights in the NETFLIX mark. Registration with the USTPO generally establishes a complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
The Panel verifies that the disputed domain names incorporates the NETFLIX mark in its entirety, changing only a single letter in each domain name and a gTLD. Changing a letter and adding a gTLD do not save it from the realm of confusing similarity under the standards of the Policy.
The Panel therefore finds that the first requirement of the UDRP is satisfied.
Paragraph 4(c) of the Policy includes a nonexclusive listing of circumstances that prove a respondent’s rights or legitimate interests in a domain name:
(i) Before any notice of the dispute, 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; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) 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.
First, the Panel verifies that Respondent lacks rights and legitimate interests in the disputed domain names because Respondent is not authorized or permitted to use Complainant’s NETFLIX mark and is not commonly known by the disputed domain name.
Relevant WHOIS information may be used to identify the respondent per Policy ¶ 4(c)(ii). According to WHOIS information, Complainant affirms that did not authorize Respondent to use NETFLIX mark for any purpose. 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)).
In addition, lack of authorization from a complainant to use its marks may be further evidence that a respondent is not commonly known by a disputed domain name.
In addition to that, Respondent declines Complainant’s offer for $4,000 to transfer the disputed domain names through the bug bounty program because Respondent allegedly received a better offer elsewhere.
Finally, Complainant argues that Respondent intends to take advantage of users’ misspellings or typographical error, by changing one letter. Thus, the Panel finds Respondent lacks rights and legitimate interests in the disputed domain names.
Therefore, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith per Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered and uses the disputed domain names in bad faith because Respondent intends to profit from the sale of the disputed domain names. Registering and using a disputed domain name for the purpose of offering it for sale may be evidence of bad faith under Policy ¶ 4(b)(i). See Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.).
Also, the fact that Respondent states that another offer has been made on the disputed domain names and Respondent will no longer transfer the disputed domain names to Complainant unless it offers more money in exchange is enough for establishing bad faith under Policy ¶ 4(b)(i).
Additionally, the Panel verifies that Respondent registered the domain names and changed only one letter on each, which engages in bitsquatting, similar to the practice of typosquatting. Using an Internet users’ spelling and typographical errors may be evidence of bad faith under Policy ¶ 4(a)(iii). See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant’s mark with small typographical errors introduced therein).
Furthermore, Complainant argues that because of the fame of NETFLIX marks, Respondent had actual knowledge of Complainant’s marks. Actual knowledge of complainant’s rights in a mark may support a finding of bad faith under Policy ¶ 4(a)(iii), and can be established through evidence of the fame of the mark. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”)
In view of the above, the Panel concludes that the Respondent has registered and is using the disputed domain names in bad faith.
Complainant has therefore satisfied the third and final requirement 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 <netfdix.com>, <netfhix.com>, <netflhx.com>, <netfli8.com>, <netflih.com>, <netfliy.com>, <netflmx.com>, <netfnix.com>, <neuflix.com>, <nevflix.com>, <ngtflix.com>, <nmtflix.com>, and <oetflix.com> domain names be TRANSFERRED from Respondent to Complainant
Luiz Edgard Montaury Pimenta, Panelist
Dated: June, 11, 2019
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