Plex, Inc. v. Chris Eaton
Claim Number: FA2001001877620
Complainant is Plex, Inc. (ďComplainantĒ), represented by Christopher J. Palermo of Hickman Palermo Becker Bingham LLP, California, USA.† Respondent is Chris Eaton (ďRespondentĒ), Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <plex.tube> registered with NameCheap, Inc..
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.
David S. Safran, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 3, 2020; the Forum received payment on January 3, 2020.
On January 6, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <plex.tube> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the names.† NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANNís Uniform Domain Name Dispute Resolution Policy (the ďPolicyĒ).
On January 6, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 27, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondentís registration as technical, administrative, and billing contacts, and to email@example.com.† Also on January 6, 2020, 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 Respondentís registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on January 22, 2020.
On January 27, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David S. Safran 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 name be transferred from Respondent to Complainant.
Complainant, Plex, Inc., is a leading provider of computer software and online services in the field of digital media management. Complainant has rights in the PLEX mark based upon its registration of the mark with the United States Patent and Trademark Office (ďUSPTOĒ) (e.g. Reg. No. 4,521,345, registered Apr. 29, 2014). Respondentís <plex.tube> domain name is confusingly similar to Complainantís PLEX mark, as the domain name incorporates the mark in its entirety and merely adds the ď.tubeĒ generic top-level domain (ďgTLDĒ).
Respondent has no rights or legitimate interests in the <plex.tube> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the PLEX mark in any manner. Respondentís use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses Complainantís mark to provide services that are identical to the services offered by Complainant and even direct users to Complainantís own services.
Respondent registered and is using the <plex.tube> domain name in bad faith. Respondent attempts to attract Internet users for personal gain by creating a likelihood of confusion with Complainantís services. Further, Respondent had actual knowledge of Complainant as Respondent references Complainantís mark on the disputed domain name several times.
Respondent concedes that the Domain name <plex.tube> is similar to the Complainantís Trademark ďPlex.Ē However, Respondent contends that its
use of the Domain name was both non-competitive and non-commercial in nature, the disputed domain name being used to stream video content on the individual PLEX server that is offered as a part of Complainantís services.
The Panel notes that Respondent registered the disputed domain name on January 12, 2018, subsequent to trademark registrations of Complainant. Complainantís own evidence corroborates the Respondentís contention that its
use of the Domain name was both non-competitive and non-commercial in nature, the disputed domain name being used to stream video content on the individual PLEX server that is offered as a part of Complainantís services. See, e.g. last two webpage copies of Complainantís Exhibit 5,
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.
Confusing similarity has been conceded by Respondent. Thus, the Panel finds for Complainant on this element.
The Panel may hold that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ∂ 4(a)(ii). See High Adventure Ministries v. JOHN TAYLOE / VOICE OF HOPE, FA 1737678 (Forum Aug. 9, 2017) (holding that a complainantís failure to satisfactorily meet its burden suggests respondent has rights and legitimate interests in the domain name under UDRP ∂ 4(a)(ii)). Complainant has not provided evidence rebutting Respondentís contention that it did not compete with Complainant and used the disputed domain name for noncommercial use.
A respondent can be found to have rights and legitimate interests in a domain name where it uses the domain name for the complainantís benefit. See Vanguard Group Inc. v. Investors FastTrack, FA 863257 (Forum Jan. 18, 2007) (ďRespondent makes a bona fide offering of goods and services in providing investment products and services to people wishing to consider investment in Complainantís financial products and services.Ē). Here, the evidence indicates that Respondentí use of the domain redirects to the Complainantís own authentication pageóthe primary means of accessing any content within Complainantís software and serves as an access point for a small number of users known personally by Respondent to access, and become customers of, Complainantís software.
Complainant has not adequately rebutted Respondentís contention that it does not provide a competitive media streaming service, nor does Domain name operate for commercial gain, but instead Respondent is a customer of Complainant, and the Domain name facilitates use of Complainantís own software by a small number of users known to Respondent without commercial incentive. See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (ďComplainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.Ē); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum Jul. 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).
Additionally, the Panel finds Respondentís website is not being used for the purposes of generating profit or commercial gain, being in effect beneficial to Complainant, so that the requirements of Policy ∂ 4(b)(iv) have not been established. See Mule Lighting, Inc. v. CPA, FA 95558 (Forum Oct. 17, 2000) (finding no bad faith where the respondent has an active website that has been in use for two years and where there was no intent to cause confusion with the complainantís website and business); Nintendo of Am. Inc. v. Jones, D2000-0998 (WIPO Nov. 17, 2000) (finding no bad faith where the respondent operated the fan club website without commercial gain, therefore the requirements of Policy ∂ 4(b)(iv) could not be established).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be denied.
Accordingly, it is Ordered that the <plex.tube> domain REMAIN WITH Respondent.
David S. Safran, Panelist
Dated:† January 28, 2020
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