Netflix, Inc. v. Linda Deutch
Claim Number: FA1707001740569
Complainant is Netflix, Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Linda Deutch (“Respondent”), Singapore.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <netflixvip.com>, registered with NameCheap, Inc.
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 Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 18, 2017; the Forum received payment on July 18, 2017.
On July 19, 2017, NameCheap, Inc. confirmed by e-mail to the Forum that the <netflixvip.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 19, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 2017 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@netflixvip.com. Also on July 19, 2017, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 11, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <netflixvip.com> domain name is confusingly similar to Complainant’s NETFLIX mark.
2. Respondent does not have any rights or legitimate interests in the <netflixvip.com> domain name.
3. Respondent registered and uses the <netflixvip.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant operates a video streaming service under the NETFLIX mark, and holds numerous registrations with several governmental entities, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,552,950, registered Mar. 26, 2002) and with the Intellectual Property Office of Singapore (“IPOS”) (e.g., Reg. No. 1235989, registered Sept. 17, 2015), demonstrating rights in the mark.
Respondent registered the <netflixvip.com> domain name on March 16, 2017, and uses it to pirate and stream copies of movies and television shows owned by Complainant.
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 view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel finds that Complainant has established rights in the NETFLIX mark under Policy ¶ 4(a)(i) through its registrations for the NETFLIX mark around the world, including with the USPTO. See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”).
Respondent’s <netflixvip.com> domain name merely adds the generic term “VIP” to Complainant’s mark, along with the “.com” gTLD. Generic terms and gTLDs do not distinguish a domain name from a mark. See Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Accordingly, the Panel finds that Respondent’s <netflixvip.com> domain name is confusingly similar to Complainant’s NETFLIX mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
In arguing that Respondent lacks rights and legitimate interests in the disputed domain name, Complainant urges that Respondent is not commonly known by the disputed domain name. Further, Complainant contends that Respondent is not sponsored by or legitimately affiliated with Complainant in any way. The WHOIS record indicates that “Linda Deutch” is the registrant of record. Therefore, the Panel finds that Respondent is not commonly known by <netflixvip.com> under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant demonstrates that Respondent is engaging in passing itself off as Complainant, and pirates and streams copies of movies and television shows owned by Complainant. The Panel finds that this is not a Policy ¶4(c)(i) bona fide offering of goods or services, or a Policy ¶4(c)(iii) legitimate noncommercial or fair use, and thus Respondent has no rights or legitimate interests in the <netflixvip.com> domain name. See Twentieth Century Fox Film Corporation v. Domain Admin /whoisprotection.biz, FA1408001575082 (Forum Sept. 23, 2014) (holding that operation of a streaming website showing unauthorized copies of the complainant’s broadcasts “constitutes an unauthorized appropriation of Complainant’s marks and programming…[and] is not a Policy ¶4(c)(i) bona fide offering of goods or services, or Policy ¶4(c)(iii) legitimate noncommercial or fair use.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has an established pattern of bad faith domain registrations. Complainant provides a screenshot showing Respondent’s alleged domain portfolio, which includes registrations of domain names that presumably infringe on the trademark rights of third parties. Panels consider the facts surrounding each alleged pattern of domain registrations, and have traditionally seen bad faith findings in prior UDRP decisions or registration of multiple domains in the same dispute as evidence of Policy ¶ 4(b)(ii) bad faith. See Bed Bath & Beyond Procurement Co. Inc. (N/K/A Liberty Procurement Co. Inc.) v. PPA Media Services / Ryan G Foo, FA1307001510619 (Forum Oct. 9, 2013) (finding that the respondent’s negative involvement in at least three prior UDRP proceedings and the respondent’s registration of twenty-four domain names in the instant proceeding demonstrated a pattern and practice of bad faith domain name registration pursuant to Policy ¶ 4(b)(ii)). However, here there is just one domain name at issue, and there are no cited adverse UDRP rulings against Respondent, and therefore the Panel declines to find bad faith under Policy ¶ 4(b)(ii).
Complainant argues that Respondent’s offering of fraudulent, illegally copied, and competing content at the resolving website constitutes bad faith disruption of Complainant’s business. The Panel agrees and finds bad faith under Policy ¶ 4(b)(iii). See Twentieth Century Fox Film Corporation v. Domain Admin / whoisprotection.biz, FA1408001575082 (Forum Sept. 23 2014) (bad faith where use of the disputed domain name disrupted complainant’s business by promoting illegitimately obtained copies of complainant’s digital content); see also Disney Canada, Inc. et. al v. Nikola Petkovic, FA1605001676278 (Forum June 14, 2016) (“Panel is in agreement with prior panels, which have ruled that the consequence of directing Internet users to illegal content, is to disrupt a complainant’s legitimate business and that such a respondent presumably nets profit.”); see also Google Inc. v. James Lucas / FireStudio / jameschee / FIRESTUDIO / SEONG YONG, FA 1605757(Forum Apr. 7, 2015) (“This Panel agrees that Respondent’s use of confusingly similar domain names to offer downloads via video streaming services to confuse Internet users is a bad faith disruption under Policy ¶ 4(b)(iii).”).
Further, because of the global fame of Complainant’s mark, Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the NETFLIX mark. The Panel agrees, noting that Respondent is copying Complainant’s content, and finds that Respondent's actual knowledge of Complainant’s rights constitutes further bad faith under Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
The Panel finds that Complainant has satisfied 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 <netflixvip.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 12, 2017
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