WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hulu, LLC v. Helecops, Vinod Madushanka
Case No. D2016-0365
1. The Parties
The Complainant is Hulu, LLC of Santa Monica, California, United States of America, represented by Cantor Colburn LLP, United States of America.
The Respondent is Helecops, Vinod Madushanka of Colombo, Sri Lanka.
2. The Domain Name and Registrar
The disputed domain name <hulumovie.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 23, 2016. On February 24, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 17, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 18, 2016.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on March 23, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The proceedings are conducted in English since this is the language of the registration agreement for the disputed domain name, as confirmed by the Registrar.
4. Factual Background
The Complainant operates free and subscription-based streaming services of premium video content (motion pictures, TV shows, clips, documentaries, and so forth) from its website at "www.hulu.com".
The Complainant, which was founded in 2007, is a joint venture of ABC Television Group, (A Walt Disney Company), Fox Broadcasting Company (21st Century Fox), and NBC Universal Television Group (Comcast).
Currently, the Complainant has nearly 9 million paid subscribers, over 500 content providers, and more than 2,000 advertising partners.
The Complainant owns the mark HULU, which is registered in the United States of America since 2010. The Complainant's United States of America trademark registrations cover products and services encompassed in international classes 9, 35, 38, 41, and 42.
The Respondent registered the disputed domain name on February 13, 2015. The disputed domain name resolves to a movie streaming website nicknamed "Holumovie".
On October 9, 2015, the Complainant sent via email a letter demanding the Respondent to transfer, at its own expense, the disputed domain name, claiming that the registration and use of the disputed domain name diluted the distinctiveness of the HULU mark.
Following an exchange of email communications between the parties in relation to the Complainant's demand letter, on November 8, 2015, the Respondent replied by email as follows: "I purchased it [the disputed domain name] from go daddy and when I brought (sic) this from go-daddy no one informed me you cant (sic) buy this domain. So I think its (sic) not illegal. […] If you want […]. I can sell you this domain for $8000".
In response, the Complainant instituted this proceeding.
5. Parties' Contentions
In summary, the Complainant contends as follows:
i. The Complainant's trademark rights in its HULU trademarks well predate the Respondent's registration of the disputed domain name;
ii. By virtue of the inherent strength of the HULU marks as applied to the Complainant's services and products and the extensive use and promotion of the HULU mark for nearly eight years, the HULU mark has become famous;
iii. The disputed domain name's full incorporation of the HULU marks clearly shows the Respondent's intention to trade off of the valuable goodwill and reputation the Complainant has established in the HULU marks;
iv. Decisions under the Policy have long held that confusing similarity is demonstrated when a respondent adopts the dominant feature of a complainant's mark as the primary feature of a domain name and merely adds a generic term thereto. That is exactly what Respondent has done here;
v. The addition of the generic term "movie" to the dominant feature of the disputed domain name being "hulu", makes confusion more, not less likely, because said generic term precisely describes the main offering of the Complainant's services;
vi. In sum, the disputed domain name is identical or confusingly similar to the HULU marks in which the Complainant has prior rights;
vii. The Respondent cannot demonstrate any rights in the disputed domain name that are superior to the Complainant's rights in the HULU marks;
viii. The Respondent is not commonly known by the disputed domain name and is not making a legitimate noncommercial or fair use of the disputed domain name;
ix. No relationship exists between the Complainant and the Respondent that would give rise to any license, permission, or authorization by which the Respondent could own or use the disputed domain name;
x. The disputed domain name resolves to a website featuring the confusingly similar mark HOLU in the same color and font designed to replicate complainant's distinctive logo as set forth in the HULU (stylized) mark;
xi. The disputed domain name features movies which are still in theatrical release, and thus likely infringes on the copyrights of those films. Such use is not legitimate noncommercial or fair use;
xii. The Respondent's offer for sale in the amount of USD 8,000 strongly indicates that the disputed domain name was acquired primarily for the purpose of selling, renting, or otherwise transferring it for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name, in contravention of Policy paragraph (4)(b)(iv);
xiii. Before and after the Complainant contacted the Respondent requesting transfer of the disputed domain name, the latter resolved to the infringing website which contained content in direct competition with the Complainant;
xiv. The confusingly similar HOLU mark on the infringing website, the overall similarities between the form and layout of the infringing website and the Complainant's website, and the overlapping services offered on the Complainant's website and the infringing website demonstrate that the Respondent was well aware of the Complainant;
xv. The Complainant's HULU mark is so famous that the Respondent has no colourable argument that the Respondent was unaware of the HULU marks at the time the disputed domain name was registered and when the Respondent began using it for competing services.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant must prove that:
i. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
ii. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
iii. the disputed domain name is registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
A. Identical or Confusingly Similar
As explained in paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), the test for confusing similarity under the UDRP involves a straightforward visual or aural comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the disputed domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent Internet user confusion.
The Complainant has proven to hold registered trademark rights in the United States, since 2010, and India, since 2011, over the mark HULU.
To the Panel's eye, "hulu" is readily recognized within the disputed domain name as the Complainant's inherently distinctive mark.
In the Panel's view, the incorporation of the descriptive term "movie" into the disputed domain name reinforces, rather than dispels, the confusing similarity between the disputed domain name and the Complainant's mark because HULU is associated with the on-demand streaming of "movies", among other audiovisual products.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant's HULU mark.
The Complainant has passed the threshold of Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy provides that "any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the Respondent's] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
As noted in paragraph 2.1 of the WIPO Overview 2.0, the burden is on the Complainant to establish the absence of the Respondent's rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see also, e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306).
On this element, the Complainant submits:
First, that it did not authorize the use of its HULU mark in the disputed domain name.
Second, that the Respondent cannot demonstrate any rights in the disputed domain name that are superior to the Complainant's rights in the HULU mark, and
Third, that the Respondent is not commonly known by the disputed domain name nor is it making a legitimate noncommercial or fair use of the disputed domain name since it is using it in connection with a website offering competing services.
Having carefully reviewed the printouts of the Respondent's website, the Panel finds that a) the reference to "holumovie" within the website bears no logical connection with the disputed domain name, while said reference is also confusingly similar to the Complainant's HULU mark, and b) the Respondent's website offers identical services to those for which the HULU mark is known.
In light of these findings, the Panel is of the view that the Respondent's website at the disputed domain name does not entail a bona fide offering of services in the sense of paragraph 4(c)(i) of the Policy, nor a legitimate noncommercial or fair use under Policy paragraph 4(c)(iii), without intent for commercial gain to misleadingly divert consumers or to tarnish the HULU mark.
The Panel therefore finds that the Respondent has no rights or legitimate interests for the purposes of the Policy.
This conclusion is only reinforced by the Respondent's default in the instant proceedings. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221 (finding that the respondent's failure to respond can be construed as an admission that it has no rights or legitimate interests in the disputed domain name); Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., eResolution Case No. AF-0336 (finding no rights or legitimate interests where no such rights or interests were immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed).
Consequently, the Complainant has satisfied the second prong of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires a complainant to show that the disputed domain name has been registered and is being used in bad faith in order to be successful in its complaint. Paragraph 4(b) of the Policy sets forth a number of non-exclusive grounds of bad faith registration and use:
"(i) circumstances indicating that you [the respondent] have registered or … acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your [the respondent's] documented out-of-pocket costs directly related to the domain name; or
(ii) you [the respondent] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you [the respondent] have engaged in a pattern of such conduct; or
(iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [the respondent's] website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your [the respondent's] website or location or of a product or service on your [the respondent's] website or location."
Regarding the choice of "Hulu" as the Complainant's moniker, Mr. Jason Kilar, the Complainant's former CEO, puts forward the following explanation: "in Mandarin, "Hulu" has two meanings. The primary meaning relates to an ancient Chinese proverb describing the Hulu as the holder of precious things. The secondary meaning is 'interactive recording'. Mr. Kilar added that "both definitions as appropriate bookends and highly relevant to the mission of Hulu".1
It follows that, even if the Complainant did not coin the term "hulu", it was the Complainant who made said term noticeable by adopting it as its mark. See Advance Magazine Publishers Inc. v. Giulio Lozzia, WIPO Case No. DMX2014-0028(finding that the preexisting phrase "Vanity Fair" acquired notoriety thanks to the Complainant who coined it as its mark).
Against this backdrop, the Panel accepts the Complainant's proposition that the disputed domain name and its associated website labeled "holumovie", are trading off of the valuable goodwill the Complainant has established in its HULU mark. In the Panel's opinion, the Respondent's actions amount to bad faith registration and use for the purposes of Policy paragraph 4(a)(iii).
More particularly, the Respondent's documented offer to sell the disputed domain name to the Complainant for USD 8,000.00 shows that the Respondent acquired the disputed domain name primarily for the purpose of selling it to the Complainant for valuable consideration exceeding the out-of-pocket costs directly related to the disputed domain name, the Respondent's attempt to unfairly profit from the goodwill established in the Complainant's HULU mark falls within the bad faith scenario of Policy paragraph 4(b)(i).
Further, the Panel finds that the Respondent's use of the disputed domain name to stream movies constitutes bad faith use in the context of the Policy because the Complainant also streams movies under its HULU mark, and also because the name "holumovie" of the Respondent's website is confusingly similar to the Complainant's HULU mark.
In sum, the Panel holds that the disputed domain name was registered and is being used in bad faith within the realm of the Policy.
The Complainant has therefore discharged its burden in connection with paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <hulumovie.com>, be transferred to the Complainant.
Reynaldo Urtiaga Escobar
Date: April 7, 2016
1 "What's in a name?" by Jason Kilar, CEO, May 13, 2008 at "http://blog.hulu.com/2008/05/13/meaning-of-hulu/".