WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Netflix, Inc. v. WhoisGuard Protected, WhoisGuard, Inc / Linda Deutch / Jamaal Baine / c/o WHOIStrustee.com Limited, Registrant of netflixnew.com
Case No. D2017-2099
1. The Parties
Complainant is Netflix, Inc. of Los Gatos, California, United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States.
Respondents are WhoisGuard Protected, WhoisGuard, Inc. of Panama / Linda Deutch of Singapore / Jamaal Baine of San Antonio, Texas, United States / C/o WHOIStrustee.com Limited, Registrant of netflixnew.com of Wakefield United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrars
The disputed domain names <netflixfilm.co>, <netflixfilm.net>, <netflixfilm.org>, <netflixfree.co>, <netflixplus.co>, <netflixplus.net>, <netflixplus.org>, <netflixpro.net>, <netflixpro.org>, <netflixvip.net>, <netflixvip.org>, <123netflix.com>, <123netflix.net> and <123netflix.org> are registered with NameCheap, Inc. The disputed domain name <netflixnew.com> is registered with 1API GmbH.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2017. On October 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 30, 2017, the Registrar 1API GmbH transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <netflixnew.com> which differed from the named Respondent and contact information in the Complaint. On October 27, 2017, the Registrar NameCheap, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the remaining disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 13, 2017 providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 16, 2017. On November 23, 2017, the Center, in its acknowledgement of receipt of amended Complaint, noted (applying the principles and preliminary provider assessment stipulated in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2) that there appeared to be at least prima facie grounds sufficient to warrant accepting the Complaint for the Panel’s final determination of the consolidation request on appointment and that it would proceed to commencement and formal Complaint notification on that basis. The Center further stated that a copy of the Complaint would be forwarded to the contact information of all identified registrants and that the Center would accept a response from any identified registrant who wishes to submit a reply to the Complaint, which would be forwarded to the Panel for consideration when appointed.
The Center verified that the amended 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 November 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 19, 2017.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on January 4, 2018. 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.
4. Factual Background
Complainant is an entertainment company founded in 1997, and located in California, United States. Complainant operates a video streaming service under the NETFLIX trademark. Complainant has over 100 million members in over 190 countries.
Complainant holds numerous registrations around the world, including with the United States Patent and Trademark Office (Registration No. 2,552,950, registered March 26, 2002) and with the Intellectual Property Office of Singapore (Registration No. 1235989, registered September 17, 2015).
The disputed domain names were all registered on March 16, 2017, except for the disputed domain name <netflixnew.com> which was registered on June 26, 2017.
Some of the disputed domain names resolve to websites being used as for illegal streaming of movies, while other domain names are parked and contain pay-per-click (“PPC”) advertisements.
5. Parties’ Contentions
Complainant requests that the Complaint be consolidated against multiple respondents, on the basis that the disputed domain names are all under common management and control. According to the Complaint, this common control is exerted by a single entity. Complainant provides a long and detailed explanation of the need and propriety to consolidate all the disputed domain names.
Complainant states that all of the disputed domain names incorporate its NETFLIX trademark with the addition of descriptive or generic terms, including “123”, “new”, “pro”, “film”, “plus”, “free”, and “vip”, with the clear intent to maliciously divert Internet traffic from Complainant’s website for Respondent’s own commercial gain.
Complainant states that the disputed domain names are confusingly similar to its well-known trademark.
Complainant also states that Respondent has no rights or legitimate interests in the disputed domain names. Respondent is intentionally using the fame of Complainant’s trademark to attract Internet traffic to websites unassociated with Complainant.
Complainant has separated the disputed domain names in two groups. With respect to the disputed domain names included in Group 1, Complainant explains that the Respondent is prominently displaying Complainant’s logo on the resolving website, and using the website to offer pirated copies of movies and television shows, including movies and shows to which Netflix owns rights, for illegal download or viewing, in violation of Complainant’s rights. Complainant explains that this use is likely to mislead consumers as to Complainant’s association or affiliation with Respondent and its websites. This is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names.
With respect to the disputed domain names in Group 2, Complainant explains that these domain names resolve to parked webpages which displays sponsored links that Respondent presumably profits from by way of click-through income. According to the Complaint, such use of the disputed domain names demonstrates that Respondent “has intentionally chosen domain names based on registered trademarks in order to generate traffic to his web sites and through this procedure generate income through sponsored links.”
Finally, Complainant says that the disputed domain names were registered and have been used in bad faith. The Complaint states that by registering the first of the disputed domain names on June 26, 2017, nearly twenty years after Complainant began using the NETFLIX trademark and long after Complainant’s trademark had been registered throughout the world and had become internationally recognized and famous, Respondent registered the disputed domain names in bad faith.
Respondent clearly had actual knowledge of Complainant’s mark, as the disputed domain names in Group 1 resolve to websites that display the NETFLIX logo and have the look and feel of Complainant’s website. Respondent’s use of the disputed domain names in Group 1 to impersonate Complainant and pass off Respondent’s services as Complainant’s, demonstrates bad faith. UDRP panels uniformly consider such behavior to be clear evidence of bad faith registration and use. Furthermore, Respondent’s use of the disputed domain names in Group 1 to offer unauthorized copies of pirated digital content, including content to which Complainant owns rights, constitutes competition with Complainant’s streaming services, and therefore a disruption of Complainant’s business.
In addition, given that the disputed domain names in Group 2 currently resolve to parked webpages displaying PPC advertisements for which Respondent presumably derives a profit, there is no doubt that Respondent targeted Complainant, and is using the disputed domain names for commercial gain in bad faith.
Complainant requests the transfer of the disputed domain names.
The Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that a respondent is required to submit to a mandatory administrative proceeding in the event that the complainant asserts to the applicable provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The first issue in this case is whether the Complaint can be consolidated against the various named Respondents, as requested by Complainant.
The disputed domain names were registered in the names of different individuals.
Paragraphs 10(e) and 3(c) of the Rules provide, respectively:
“A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.”
“The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.”
Section 4.11.2 of the WIPO Overview 3.0 furthermore states:
“Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.
Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).”
Complainant argues that the Complaint should be consolidated on the basis that the disputed domain names are all commonly controlled by a single entity. To support this request, Complainant provided convincing evidence of certain commonalities extending to all disputed domain names, including commonalities linking registrant names, registration dates, registrars, IP addresses, name servers, website content and layout, and a prior UDRP proceeding (see Netflix, Inc. v. Linda Deutch, NAF Claim No. 1740569).
None of these statements made in the Complaint or its evidence has been challenged by the named Respondents.
It is the view of the Panel that Complainant has demonstrated by a preponderance of the evidence that all the disputed domains names are under common management and control of the same person or entity.
In these circumstances, the Panel accepts Complainant’s statements that the disputed domain names are subject to common control, in that there is a “unity of interests” between the various Respondents.
The Panel also finds that the consolidation of these disputes would be fair and equitable. On Complainant’s evidence, and as described further below, all of the disputed domain names appear to have been registered with a similar purpose in mind. There is a commonality of facts and issues for each disputed domain name. As such, it is more procedurally efficient to proceed with a single decision.
For these reasons, the Panel agrees to the consolidation of the Complaint in relation to each of the disputed domain names.
B. Identical or Confusingly Similar
The Panel finds that Complainant has established trademark rights in NETFLIX as evidenced by the trademark registrations submitted with the Complaint, as mentioned above.
The Panel is also prepared to find that the disputed domain names are confusingly similar to Complainant’s trademark NETFLIX.
The name NETFLIX is clearly the dominant element of all the disputed domain names. The Panel has had little difficulty in finding that the disputed domain names are confusingly similar to the trademark NETFLIX, as the additional terms “film”, “plus", “vip”, “new”, “free”, “pro” and “123” are, in a trademark sense, generic or common. These elements coupled with the trademark NETFLIX are insufficient to distinguish the disputed domain names as referring to an entity other than Complainant.
Therefore, the Panel finds that Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain names:
“(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.”
There is no evidence of the existence of any of those rights or legitimate interests. Complainant has not authorized, licensed, or permitted Respondent to register or use the disputed domain names or to use the trademarks.
Complainant has prior rights in the trademarks which precede Respondent’s registration of the disputed domain names for nearly two decades.
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. (WIPO Overview 3.0, section 2.1).
Respondent has failed to show that it has acquired any trademark rights in respect of the disputed domain names or that the domain names are used in connection with a bona fide offering of goods or services.
Therefore, the Panel finds that Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
Complainant must prove both that the disputed domain names were registered in bad faith and that they are being used in bad faith.
Complainant’s allegations with regard to Respondent’s registration and use of the disputed domain names in bad faith have been considered by the Panel. These allegations have not been contested by Respondent because of its default.
In the instant case, the Panel considers that Respondent must have had knowledge of Complainant’s rights in the NETFLIX trademark when it registered the disputed domain names since:
- Complainant’s trademark is a well-known trademark.
- Respondent registered within the same day fourteen (14) domain names containing the well-known NETFLIX trademark with the addition of different generic terms.
- Some of the disputed domain names include Complainant’s logo on the resolving website, and according to the Complaint, are being used by Respondent to offer pirated copies of movies and television shows, including movies and shows to which Netflix owns rights. The Panel visited the disputed domain names and was able to verify this statement.
- One of the named Respondents is the same respondent that registered the domain name <netflixvip.com>, a registration that was found in bad faith in Netflix, Inc. v. Linda Deutch, supra.
With respect to use in bad faith, the Panel visited the disputed domain names and was able to verify that some of the disputed domain names (those identified as Group 1 in the Complaint) are being used to offer access to non-authorized movie streaming services, while other disputed domain names (those identified as Group 2 in the Complaint) contain PPC advertising.
The circumstances described above fall squarely within paragraph 4(b)(iv) of the Policy: by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites, by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites.
In sum, the Panel holds that the disputed domain names were registered and are being used in bad faith within the realm of the Policy.
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 names <netflixfilm.co>, <netflixfilm.net>, <netflixfilm.org>, <netflixfree.co>, <netflixnew.com>, <netflixplus.co>, <netflixplus.net>, <netflixplus.org>, <netflixpro.net>, <netflixpro.org>, <netflixvip.net>, <netflixvip.org>, <123netflix.com>, <123netflix.net> and <123netflix.org> be transferred to Complainant.
Pablo A. Palazzi
Date: January 24, 2018