DECISION

 

Netflix, Inc. v. Irpan Panjul / 3corp.inc

Claim Number: FA1707001741976

PARTIES

Complainant is Netflix, Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA.  Respondent is Irpan Panjul / 3corp.inc (“Respondent”), India.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <tv-netflix.com> (‘the Domain Name’), registered with NameCheap, Inc..

 

PANEL

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.

 

Dawn Osborne of Palmer Biggs IP as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on July 27, 2017; the Forum received payment on July 27, 2017.

 

On July 28, 2017, NameCheap, Inc. confirmed by e-mail to the Forum that the <tv-netflix.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 31, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 21, 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@tv-netflix.com.  Also on July 31, 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 22, 2017 , pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

 

Complainant’s contentions can be summarised as follows:

 

Complainant is the owner of registered trade mark NETFLIX registered, inter alia in the United States for services related to audiovisual and multimedia content with first use in commerce recorded as 1998.

 

Complainant uses the URL tv.netflix.com in connection with its digital streaming services. The term ‘tv’ means television.

 

The Domain Name registered in 2017 has been attached to a website called TV NETFLIX (which has the look and feel of Complainant’s web site at www.netflix.com) which is offering digital streaming of unlicensed content of Complainant violating Complainant’s rights including copyright.

 

The Domain Name includes Complainant’s NETFLIX mark and the term ‘tv’ which does nothing to abate the confusing similarity of the Domain Name with Complainant’s mark as ‘tv’ is generic and describes Complainant’s business increasing likelihood of confusion.

 

The Domain Name is an example of typosquatting, being nearly identical to Complainant’s active URL tv.netflix.com, substituting a hyphen for the dot after ‘tv’.

 

The inclusion of .com in the Domain Name does not affect a finding of confusing similarity under the Policy.

 

The Domain Name is confusingly similar to Complainant’s NETFLIX mark.

 

Respondent cannot demonstrate rights or legitimate interests in the Domain Name. There is no relationship between Complainant and Respondent which would give Respondent the right to own a Domain Name containing Complainant’s NETFLIX mark.

 

Respondent is neither using the Domain Name in connection with a bona fide offering of goods or services, nor making a legitimate non commercial or fair use of the Domain Name. Rather, Respondent has registered the Domain Name to pass itself off as Complainant and offer competing services. Using NETFLIX in the name of the website attached to the Domain Name, using the look and feel of Complainant’s web site and offering pirate copies of Complainant’s movies and television shows cannot be a bona fide offering of goods and services. Typosquatting is also an indication of lack of rights or legitimate interests and registration and use in bad faith. These activities also show actual knowledge of Complainant and its business and such use to pass off is registration and use in bad faith under the Policy. Offering unauthorised copies of Complainant’s content is also a competing disruption of Complainant’s business.

 

B. Respondent

 

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

Complainant is the owner of registered trade mark NETFLIX registered, inter alia, in the United States for services related to audiovisual and multimedia content with first use in commerce recorded as 1998.

 

The Domain Name registered in 2017 has been used to offer unauthorised copies of Complainant’s content on a site mimicking the look and feel of Complainant’s official site and using Complainant’s NETFLIX mark.

 

DISCUSSION

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:

 

 

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 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.”).

 

Identical and/or Confusingly Similar

 

The Domain Name in this Complaint combines Complainant’s NETFLIX  mark (registered in, inter alia, the United States for audiovisual services and used since 1998 in relation to the same) with a hyphen, the generic term ‘tv’ reflecting the services provided by Complainant in association with its mark and the gTLD .com.

 

The addition of terms which are related to Complainant or its goods and services supports a finding of confusing similarity. Accordingly the addition of this generic abbreviation ‘tv’ meaning television does not serve to distinguish the Domain Name from Complainant’s NETFLIX  mark especially bearing in mind that Complainant’s business includes distribution of television content.

 

The addition of a hyphen to Complainant’s mark does not create a distinct characteristic capable of overcoming a Policy 4 (a)(i) confusingly similar analysis. See Sports Auth. Mitch Inc. v Bantu 5, FA 176541 (Forum September 23, 2003).

 

The gTLD .com does not serve to distinguish the Domain Name from the NETFLIX  mark, which is the distinctive component of the Domain Name. See Red Hat Inc. v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to Complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).

 

Accordingly, the  Panel finds that the Domain Name is confusingly similar to a mark in which Complainant has rights for the purpose of the Policy.

 

Rights or Legitimate Interests

 

Respondent does not appear to be commonly known by NETFLIX Complainant’s mark.  Complainant has not authorised Respondent to use this mark. The use of the Domain Name is commercial and so cannot be legitimate non commercial use.

 

Panels have found that a respondent is not using a disputed domain name for a bona fide offering of goods or services nor a legitimate non commercial or fair use because it uses the name to divert Internet users to a web site offering services competing with those offered by a Complainant under its mark. See Coryn Group Inc v Media Insight, FA 19895 9 (Forum Dec. 5, 2003). The Panel may determine that Respondent lacks rights and legitimate interests in the domain name because “Respondent is competing in the same industry as Complainant .. under the same name. See Am. Tool & Machining, Inc. v EZ Hitch Inc, FA 113961 (Forum July 16, 2002)

 

It is clear from the evidence that Respondent has used the sites attached to the Domain Name to promote competing and unauthorised copies of Complainant’s audiovisual content. This use of the Domain Name, imitation of Complainant’s official site and use of the NETFLIX name on Respondent’s web site in relation to ‘TV’ a field in which Complainant operates shows that Respondent was aware of the significance of the NETFLIX name and Complainant’s rights at the time of registration. The usage of Complainant’s NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio visual material  is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off. As such it cannot amount to the bona fide offering of goods and services. See Kmart of Mich. Inc. v Cone, FA 655014 (Forum April 25, 2006) (respondent’s attempts to pass itself off a Complainant was not a bona fide offering of goods or services pursuant to Policy 4 ( c ) (iii) when Respondent used the disputed domain name to present users with a web site that was near identical to Complainant’s web site).

 

Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to use Complainant’s trade marks in this way. As such the Panelist  finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

 

As determined above Respondent's use of the site is commercial and it is using the site to make a profit from competing services not authorised by Complainant in a confusing manner. The specific combination of Complainant’s NETFLIX mark and the description ‘tv’ in the Domain Name and on the web site, the mimicking of Complainant’s official site and use of unauthorised copies of Complainant’s content indicates Respondent was aware of Complainant’s rights at the time of registration. It seems clear that the use of  Complainant’s mark in the Domain Name, the use of Complainant’s trade mark on the web site attached to the Domain Name which mimics the official site of Complainant together with unauthorised copies of Complainant’s content on Respondent’s site would cause people to associate the website at the Domain Name with  Complainant and its business and services and is passing off. See Am. Int’l `group Inc. v Busby, FA 156251 (Forum May 30, 2003)(finding that the disputed domain name was registered and used in bad faith where Respondent hosted a web site that ‘duplicated Complainant’s mark and logo, giving every appearance of being associated with Complainant’s business’) Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the web site. This also appears designed to disrupt the business of a competitor offering unauthorised copies of Complainant’s content. Finally typosquatting in itself has been held to be bad faith and the Domain Name closely follows the URL used by Complainant to stream its content substituting only the dot in the URL for a hyphen in the Domain Name. See Homer TLC, Inc. v Artem Ponomarev, FA 1506001623825 (Forum July 20, 2015) (‘Typosquatting is independent evidence of bad faith in the registration and use of a domain name.)

 

As such, the Panel believes that Complainant has made out its case that the Domain Name was registered and used in bad faith under paragraphs 4 (b)(iii) and (iv) and has  satisfied the third limb of the Policy.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <tv-netflix.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Dawn Osborne, Panelist

Dated:  August 22, 2017