Netflix, Inc. v. Kevin O’Shea et al.
Claim Number: FA1509001639486
Complainant: Netflix, Inc. of Los Gatos, California, United States of America.
Complainant Representative: Holland & Hart LLP of Boulder, Colorado, United States of America.
Respondent: Kevin O’Shea of Drogheda, Ireland.
Kevin O’Shea of Drogheda, IE.
REGISTRIES and REGISTRARS
Registries: DotWebsite Inc.
Registrars: GoDaddy.com, LLC
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
David J. Steele, Esq., as Examiner.
Complaint submitted: September 25, 2015
Commencement: September 28, 2015
Response Date: September 28, 2015
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (“Rules”).
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
At the outset, it is necessary to resolve the contentions raised by Respondent that he is not the registrant of the domain name and that the domain name has expired. Respondent’s entire response is:
I am not the registered owner of this domain. Ownership has long expired. Contact Godaddy. Netflix.website was a help forum for television and movie fans. It was in no way associated with Netflix as stated on the page. Apart from that the domain was used to run basic site testing and has since expired and is not under ownership.
The URS Policy (“Policy”) and Rules require that URS complaints be commenced against a “Respondent,” a defined term which means the “holder of a domain name registration.” See Rules, para. 1.
Respondent’s contentions that he is not the registrant of the subject domain name, and that the domain name has expired, are contradicted by the verification provided to the Forum by the registry. Specifically, the registry identified:
Registrant Name: Kevin O’Shea
Registrant Organization: Kevin O’Shea
Regarding Respondent’s contention that the domain name “has long expired,” the registry stated that the domain name’s expiration date is:
Registry Expiry Date: 2016-09-24T23:59:59.0Z
Having weighed the verification provided by the registry against Respondent’s unsupported allegations, I am satisfied that the proceeding has been properly commenced against the correct respondent for the subject domain name.
Turning to the substantive issues raised in the Complaint, URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.
[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
Complainant states that it owns more than 250 trademark registrations in over 100 jurisdictions throughout the world for its famous NETFLIX mark covering streaming services, including U.S. Reg. Nos. 2,552,950; 3,194,832; 3,299,362; and 4,236,137. Complainant has submitted into evidence the registration certificate for five of its United States registrations.
Complainant further submits as proof of current use of its NETFLIX mark a screen shot showing Complainant’s website, available at netflix.com and, providing streaming services.
Complainant alleges that the netflix.website is identical to Complainant’s NETFLIX mark because it consists entirely of Complainant’s NETFLIX mark paired with the generic toplevel [sic] domain “.website.”
Respondent replies, “I am not the registered owner of this domain. Ownership has long expired. Contact Godaddy. Netflix.website was a help forum for television and movie fans. It was in no way associated with Netflix as stated on the page. Apart from that the domain was used to run basic site testing and has since expired and is not under ownership.”
Complainant owns numerous valid trademark and service mark registrations of national effect for its NETFLIX mark in over 100 jurisdictions throughout the world. These registrations evidence Complainant’s rights for the purposes of the Policy. [URS 1.2.6.1(i)].
Complainant is currently using its NETFLIX mark in connection with, among other goods and services, numerous online services. Evidence of use by Complainant of its NETFLIX mark is a screenshot of Complainant’s website. From the evidence submitted, it is clear that Complainant’s services include “TV shows & moves streamed instantly over the Internet” and that these services are delivered, in part, from Complainant’s own website.
The NETFLIX mark is unquestionably famous within the meaning of 15 U.S.C. 1125(c).
The subject domain name, netflix.website is identical to Complainant’s famous mark. The incorporation of a trademark in its entirety into a domain name is sufficient to establish that the domain name is identical or confusingly similar to the trademark at issue.
Historically, the top-level domain name (“TLD”), for example “.com” or “.net,” has been viewed as irrelevant to the confusingly similar analysis. This has been the case under the United States Anti-Cybersquatting law, 15 U.S.C. 1125(d), and under the Uniform Domain Name Dispute Resolution Policy (“UDRP”). This reasoning was established under the view that the TLD string contained no source identifying properties. See Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1055 (9th Cir.1999) (observing that the differences between the mark “MovieBuff” and the domain name “moviebuff.com” are “inconsequential in light of the fact that … the ‘.com’ top-level domain signifies the site’s commercial nature”); See also Edmunds.com, Inc. v. Bestinfo, Case No. D2006-0573 (WIPO Jun. 27, 2006) citing The Forward Association, Inc., v. Enterprises Unlimited, FA 095491 (Nat. Arb. Forum Oct. 3, 2000) (“neither the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance”).
However, for the same reasons that prior decisions ignored the TLD string, the addition of new TLDs to the domain name space now require consideration of the TLD string’s significance. These new TLDs contain descriptive, generic and even geographical terms, which may affect the analysis of whether the domain name is identical or confusingly similar to a complainant’s mark. For example, when a descriptive term is used in combination with a trademark that is distinctive for the descriptive term, that the term is in the TLD portion of the domain name is no longer irrelevant to the identical or confusingly similar calculus.
In this case, the TLD string “website” is descriptive of Complainant’s goods (i.e., netflix.website). Because Complainant’s mark is extensively used in connection with its online services, and many of which are provided at Complainant’s website, the addition of the descriptive term “website” – even as the TLD string – further increases the confusing similarity of the subject domain name with Complainant’s mark.
I find that the subject domain name netflix.website is identical or confusingly similar to Complainant’s NETFLIX mark.
Determined: Finding for Complainant
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
Complainant contends that Respondent has no trademark or other intellectual property rights to the Disputed Domain Name or the NETFLIX mark, and is senior to Respondent’s registration and use by many years. Complainant further contends that “[t]here is no evidence that Registrant was commonly known as ‘Netflix’ prior to registration of the Disputed Domain Name.” Complainant also contends that “Complainant is not aware of any company affiliated with Registrant called ‘Netflix.’” Lastly, Complainant contends that “Registrant is not using the Disputed Domain Name for any bona fide offering of goods or services, or for any legitimate noncommercial or fair use. The domain name is currently not active.”
Respondent replies, “I am not the registered owner of this domain. Ownership has long expired. Contact Godaddy. Netflix.website was a help forum for television and movie fans. It was in no way associated with Netflix as stated on the page. Apart from that the domain was used to run basic site testing and has since expired and is not under ownership.”
As discussed above, Respondent’s contention that he is not the registrant is unsupported by the facts of this case. Respondent admits that the domain name was used as “… a help forum for television and movie fans.”
Respondent has not submitted any evidence that he is commonly known by the disputed domain name. Similarly, Respondent has not submitted any evidence that Respondent plans to use the disputed domain name for a legitimate noncommercial or fair use. Respondent has not submitted any evidence supporting any of the other articulated defenses in the Policy.
Respondent is not making a legitimate or fair use of the domain name without intent for commercial gain to misleadingly divert consumers. In view of Complainant’s famous mark, Respondent’s use of a domain name that is confusingly similar to Complainant’s mark, to operate a website that provides similar or related services to those offered by Complainant was clearly made to misleadingly divert consumers from Complainant’s netflix.com website. In view of Complainant’s famous trademark, any unprotected commercial use by Respondent of the netflix.website domain name would violate Complainant’s rights. This prior use by Respondent evidences a lack of legitimate rights or interest to the domain name.
Respondent does not have any legitimate right or interest to the domain name.
Determined: Finding for Complainant
[URS 1.2.6.3] The domain name(s) was registered and is being used in bad faith.
Respondent’s admission, that the domain name was previously used as “… a help forum for television and movie fans” supports that the domain name was used in bad faith.
However, Complainant states in its Complaint that the “Registrant is not making use of the Disputed Domain Name.” Complainant further submits a screenshot evidencing that the subject domain name is not being used.
Complainant next argues that,
While passively holding a domain name does not necessarily constitute bad faith, the circumstances of this case - namely, the fame of Complainant’s mark as a result of seventeen (17) years of continuous, exclusive, and extensive use, combined with Registrant’s passive holding - compel a finding that Registrant is using netflix.website in bad faith.
The language of the Policy requires that Complainant show, by clear and convincing evidence, that the domain name was registered and is being used in bad faith. Extending Complainant’s argument, the circumstances of this case establish, by clear and convincing evidence, that the domain name is being used in bad faith.
Complainant’s argument is not without merit nor should it be dismissed as being outside the bounds of the Policy. Numerous decisions under the UDRP have shown that the passive holding of a domain name can constitute a domain name being registered and used in bad faith. Further, this Examiner can envision numerous hypotheticals where a registrant’s passive holding of a domain name would support, by clear and convincing evidence, that a domain name is being used in bad faith. Complainant’s argument must be considered: Is there clear and convincing evidence that Respondent’s passive holding of the domain name establishes that the domain name is being used in bad faith?
Complainant explains that the NETFLIX mark is famous and has been used continuously, and extensively, for many years. It is beyond question that Respondent was aware of the NETFLIX mark when he registered the domain name, and when he used it to host “… a help forum for television and movie fans.”
Respondent’s reply states that, “I am not the registered owner of this domain. Ownership has long expired. Contact Godaddy.” However, this fact is plainly contradicted by the registry verification which shows that Respondent is still the listed owner. This fact could suggest that Respondent was obfuscating his control over and use of the domain name – but such a conclusion would be speculative, and would not provide clear and convincing evidence that Respondent’s passive holding of the domain name establishes that the domain name is being used in bad faith.
In sum, after carefully considering the evidence before me, I find that the evidence is not clear and convincing that the domain name is being used in bad faith.
Determined: Finding for Respondent
A complainant’s failure to establish any one of the above three elements by clear and convincing evidence must result in a decision rejecting the complainant’s requested relief. “If the Examiner finds that any of the standards have not been satisfied, then the Examiner shall deny the relief requested, thereby terminating the URS proceeding…” URS, para. 8.6.
FINDING OF ABUSE OR MATERIAL FALSEHOOD
The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.
The Examiner finds as follows:
After reviewing the parties’ submissions, the Examiner determines that the Complainant has NOT demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name be RETURNED to the control of Respondent:
<netflix.website>
David J. Steele, Esq., Examiner
Dated: September 29, 2015
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