Tubi, Inc. v. Hoang Van Dong
Claim Number: FA1911001871012
Complainant is Tubi, Inc. (“Complainant”), represented by Tsan Abrahamson of Cobalt LLP, California, USA. Respondent is Hoang Van Dong (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tubikids.com>, registered with GMO Internet, Inc. d/b/a Onamae.com.
The undersigned certifies that he 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.
Héctor Ariel Manoff as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 12, 2019; the Forum received payment on November 12, 2019.
On November 15, 2019, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <tubikids.com> domain name is registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.com 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 20, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 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@tubikids.com. Also on November 20, 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 December 4, 2019.
On December 10, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Héctor Ariel Manoff 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.
A. Complainant
Complainant:
Complainant, Tubi, Inc., is the United States’ largest free ad-supported movie streaming service. Complainant registered the TUBI mark with multiple registries, including the European Union Intellectual Property Office (“EUIPO”) (e.g., Reg. No. 018020920, registered June 25, 2019), the United States Patent Office (“USPTO”) (e.g. Reg. No. 5,414,516, registered on Feb. 27, 2018) and TUBI TV registered before the United States Patent Office (“USPTO”) (e.g. Reg. No. 4,763,028, registered on June 30, 2015).
Complainant also owns and operates the websites <www.tubitv.com>, and <www.tubi.tv>. Since at least as early as 2015, Tubi has offered programming for kids as part of its business. See Annex 5. TUBI is a coined term, so well-known and connected to Complainant, that a simple Google search reveals the notoriety of Complainant’s marks, domain and use of TUBI.
The Domain Name in dispute is near identical to Complainant’s TUBI Marks and Complainant’s own <tubitv.com> and <tubi.tv> domain names. The disputed Domain Name fully incorporates the TUBI mark, substituting in the generic term “kids”. The addition of a generic term does not distinguish the Domain Name from Complainant’s TUBI Marks.
Respondent has no rights or legitimate interests in the term “Tubi kids” or the corresponding Domain Name. Respondent registered the disputed Domain Name on May 30, 2016, two years after Complainant began using the TUBI Marks, and a year after the United States Patent and Trademark Office granted Complainant its first trademark registration for the mark TUBI TV.
WHOIS information identifies the Respondent as Hoang Van Dong. Nor, to the best of Complainant’s knowledge, does Respondent have any common-law trademark or service mark, or registered trademark or service mark, or trademark or service mark rights or applications anywhere in the world for the marks TUBI, TUBI KIDS, or TUBI TV. Respondent is also not affiliated with Complainant. Neither has it been licensed nor permitted to use Complainant’s TUBI mark, nor any domain names incorporating Complainant’s TUBI mark.
Respondent has registered the disputed Domain Name, which is confusingly similar to Complaint’s TUBI marks, to host a website that offers services that compete directly with those offered by TUBI under the TUBI Marks.
Respondent has no rights or legitimate interests in the <tubikids.com> domain name. Respondent is not licensed or authorized to use Complainant’s TUBI mark and is not commonly known by the disputed domain name. Additionally, Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to offer services that directly compete with Complainant and its business.
Respondent uses the disputed Domain Name in an attempt to capitalize on Complainant’s goodwill in order to promote its own competing streaming services. Respondent offers streaming video content for children. Complainant offers those same services.
B. Respondent
Respondent argues that TUBITV is not known in his country.
Respondent argues that domain name <tubikids.com> is a coincidence with TUBI TV.
Respondent argues that the <tubikids.com> domain simply refers to Tubi = Youtube, Kids = the subject of the web.
It took Respondent 3 years to develop the <tubikids.com> website.
Respondent argues that his website’s traffic is 2M.
Complainant, Tubi, Inc., is the United States’ largest free ad-supported movie streaming service and the owner of TUBI and TUBI TV marks registered in the European Union and the United States as from 2015. Complainant also owns and operates the websites <www.tubitv.com>, and <www.tubi.tv>.
Respondent registered the domain name <tubikids.com>, which is near identical to Complainant’s TUBI Marks and domain names.
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.
Complainant, Tubi, Inc., is a company in United States which offers free ad-supported movie streaming services.
Complainant is the owner or TUBI based upon registration with the EUIPO (e.g., Reg. No. 018020920, registered on June 25, 2019) and USPTO (e.g., Reg. No. 5,414,516, registered on Feb. 27, 2018) and TUBI TV mark registered before the USPTO (e.g. Reg. No. 4,763,028, registered on June 30, 2015). See Compl. Annex 4.
This Panel finds that registration of a mark with multiple trademark organizations is sufficient to establish rights in said mark per Policy ¶ 4(a)(i). See Astute, Inc. v. Raviprasath C / Astute Solution Pvt Ltd, FA 1546283 (Forum Apr. 9, 2014) (finding that registrations with two major trademark agencies is evidence enough of Policy ¶ 4(a)(i) rights in the ASTUTE SOLUTIONS mark.). Therefore, the Panel finds Complainant has rights in the TUBI mark per Policy ¶ 4(a)(i).
Complainant also owns and operates the websites <www.tubitv.com>, and <www.tubi.tv> and argues that <tubikids.com> domain name is confusingly similar to its TUBI mark as Respondent merely adds the term “kids”, and a “.com” gTLD to Complainant’s TUBI mark.
The Panel agrees with Complainant and finds that the <tubikids.com> does not contain changes that would sufficiently distinguish it from the TUBI mark per Policy ¶ 4(a)(i).
This Panel finds that additions of a generic and/or descriptive terms and a gTLD to a complainant’s mark does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see alsoTrip 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 that the at-issue domain name ise confusingly similar to the TD mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent has no rights or legitimate interests in the <tubikids.com> domain name. Specifically, Complainant argues Respondent is not licensed or authorized to use the TUBI mark and is not commonly known by the disputed domain name.
This Panel finds that the WHOIS information supports Complainant’s arguments and Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (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.). Additionally, lack of authorization to use a complainant’s mark demonstrates the Respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record identifies Respondent as “Hoang Van Dong,” and there is no other evidence to suggest Respondent was authorized to use the TUBI mark. See Compl. Annex 1. The Panel therefore finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
The Panel finds that Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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”).
In addition, Respondent has not filed evidence to prove his legitimate interest in the domain name. His explanation about the reason why he chose that name is not sufficient for the Panel. TUBE is not the same as TUBI. TUBI is not a generic term and it is not likely that TUBI derives from TUBE or YOU TUBE.
This Panel does not find legitimate interest in the Respondent.
In addition, Complainant argues that Respondent uses the <tubikids.com> domain name to redirect users to Respondent’s competing website. Use of a disputed domain name to offer competing products and services may not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the name under Policy ¶¶ 4(c)(i) & (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant argues that Respondent hosts a website that offers video streaming services that compete directly with Complainant and its business. See Compl. Annex 8.
The Panel has not found either that the use on the site <tubikids.com> is a legal and commercial use in accordance with the copyright law. The terms of use and contact of the website do not look real and compatible with a legitimate website.
The Panel finds that Respondent’s use of the <tubikids.com> domain name to offer competing services is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
Complainant argues and this Panel agrees that Respondent registered and uses the <tubikids.com> domain name in bad faith. Specifically, Complainant contends Respondent is disrupting Complainant’s business and diverting users to the disputed domain name to offer competing goods and services. Using a disputed domain name to mislead users and redirect them to a competing website may indicate bad faith per Policy ¶¶ 4(b)(iii) and (iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”).
Complainant argues that Respondent uses the <tubikids.com> domain name to divert potential customers of Complainant’s business to a webpage that offers services in direct competition with Complainant. See Compl. Annex 8. This Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant Policy ¶¶ 4(b)(iii) and (iv).
Finally, Complainant argues that due to the fame of the TUBI mark and Respondent’s inclusion of Complainant’s TUBI mark in the disputed domain name to offer identical streaming services, Respondent must have had actual knowledge.
This Panel finds Respondent’s explanation about the creation of his website is not consistent and it could not be a mere coincidence with TUBI mark. This Panel finds that TUBI is not a generic term and it cannot be derive from TUBE. Moreover, Respondent’s site is in English and the Complainant’s too. Complainant proved that its trademark is known through a Google search (Annex 6 and 7). This Panel concludes that Respondent should have known it when registering the domain name and creating its site. Consequently, the Panel finds Respondent had actual knowledge of Complainant’s rights in the TUBI mark prior to registration and thus constitutes bad faith per 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 <tubikids.com> domain name be TRANSFERRED from Respondent to Complainant.
Héctor Ariel Manoff, Panelist
Dated: December 20, 2019
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