Netflix Inc. v. Domain Name
Claim Number: FA0909001287000
Complainant is Netflix Inc. (“Complainant”), represented by Nancy
H. Lutz, of Kelley Drye & Warren LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <netfilx.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On October 2, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 22, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@netfilx.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <netfilx.com> domain name is confusingly similar to Complainant’s NETFLIX mark.
2. Respondent does not have any rights or legitimate interests in the <netfilx.com> domain name.
3. Respondent registered and used the <netfilx.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Netflix, Inc., is the world’s largest online
movie rental service. Complainant owns
multiple trademark registrations with the United States Patent and Trademark
Office (“USPTO”) for the NETFLIX mark (e.g., Reg. No. 2,552,950 filed
Respondent registered the <netfilx.com> domain name on
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."
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(e), 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 (Nat. Arb. 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.”).
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 asserts rights in the NETFLIX mark through it
various trademark registrations with the USPTO (e.g., Reg. No. 2,552,950 filed
Complainant argues
that Respondent’s <netfilx.com> domain name is confusingly similar to Complainant’s
NETFLIX mark pursuant Policy ¶ 4(a)(i).
Respondent’s disputed domain name contains a misspelled version of
Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that a disputed domain name
that contains a misspelled version of a complainant’s mark, in this case the
flipping of the letters “i” and “l,” fails at distinguishing the disputed
domain name and instead creates a confusing similarity between the disputed
domain name and the complainant’s mark. See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002)
(finding <googel.com> to be confusingly similar to the complainant’s
GOOGLE mark and noting that “[t]he transposition of two letters does not create
a distinct mark capable of overcoming a claim of confusing similarity, as the
result reflects a very probable typographical error”); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum
Nov. 18, 2000) (finding that, by misspelling words and adding letters to words,
a respondent does not create a distinct mark but nevertheless renders the
domain name confusingly similar to the complainant’s marks). In addition, the Panel finds that the
addition of a gTLD is irrelevant in distinguishing a disputed domain name from
an established mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or legitimate interests in the <netfilx.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the <netfilx.com> domain name under Policy ¶ 4(c). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant contends that Respondent is neither commonly known by nor licensed to register the <netfilx.com> domain name. The Panel finds that registrant’s WHOIS information demonstrates that Respondent is not commonly known by the disputed domain name. Therefore, pursuant to Policy ¶ 4(c)(ii), Respondent lacks rights and legitimate interests in the disputed domain name. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Respondent’s <netfilx.com>
domain name resolves to a blank website.
The Panel finds that Respondent’s failure to make an active use of the
disputed domain name is not a bona fide
offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Shemesh,
FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a
respondent’s non-use of a domain name that is identical to a complainant’s mark
is not 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)); see
also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583
(Nat. Arb. Forum
Complainant fails to allege, but Respondent is taking advantage of Internet users that are attempting to
reach Complainant’s website by capitalizing on the misspelling of Complainant’s
NETFLIX mark. The Panel finds
that Respondent’s engagement in the practice of typosquatting is evidence that
Respondent lacks rights and legitimate interests in the <netfilx.com> domain name under
Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that a finding of bad faith registration and use under Policy ¶ 4(a)(iii) is not limited to those instances enumerated in Policy ¶ 4(b). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).
As discussed above, Respondent’s <netfilx.com> domain
name contains only a blank page.
Respondent registered the disputed domain name on
The Panel finds that Respondent’s <netfilx.com> domain name is merely a typosquatted
version of Complainant’s NETFLIX mark, and that such typosquatting constitutes bad
faith registration and use under Policy ¶ 4(a)(iii). See
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (finding that the respondent engaged in typosquatting, which is evidence
of bad faith registration and use under Policy ¶ 4(a)(iii)); see also Bank of Am. Corp. v. Tak Ume
domains for sale, FA 154528 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <netfilx.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 9, 2009
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