WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Redbox Automated Retail, LLC d/b/a Redbox v. Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2019-0812

1. The Parties

The Complainant is Redbox Automated Retail, LLC d/b/a Redbox, United States of America(“US” or “United States”), represented by Neal, Gerber & Eisenberg, United States.

The Respondent is Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <nredbox.com> (the “disputed domain name”) 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 April 10, 2019. On April 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 10, 2019, 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 April 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 15, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 20, 2019.

The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on May 28, 2019. 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

The Complaint is Redbox Automated Retail, LLC., an American company specializing in DVD, Blu-ray, 4K, UHD, and video game rentals via automated retail kiosks.

The Complainant owns the following trademark registrations:

Trademark

Registration Number

Registration Date

Class

Jurisdiction

REDBOX

2919854

January 18, 2005

9

United States

REDBOX

2988869

August 30, 2005

41

United States

REDBOX

3082012

April 18, 2006

35

United States

logo

3229436

April 17, 2007

9,41

United States

REDBOX

4418938

October 15, 2013

35,38,41

United States

logo

4418939

October 15, 2013

35,38,41

United States

REDBOX.COM

4672047

January 13, 2015

9,35,41

United States

REDBOX

4988910

June 28, 2016

41,42

United States

The Complainant owns the domain name <redbox.com>, registered on September 16, 1999.

The disputed domain name was created on February 25, 2019. The website to which it resolves comprises pay-per-click advertisement links to real estate and video rental sites, made available by third parties.

5. Parties’ Contentions

A. Complainant

The Complainant argued the following:

That the Complainant has been using the trademark REDBOX and the domain name <redbox.com> for almost twenty years in connection with the rental of movies and games, as well as the on-demand streaming of movies and TV shows on-the-go in the United States.

That the Complainant provides more than 5 billion rentals across the United States, and that its services and marks have attained considerable recognition. That the Complainant’s trademark REDBOX has acquired a considerable distinctiveness.

That the Respondent registered the disputed domain name on February 25, 2019, after the adoption and first use of the REDBOX trademarks by the Complainant.

That the disputed domain name displays pay-per-click advertisements, and that it is comprised entirely of the REDBOX and REDBOX.COM trademarks.

That the only difference between the Complainant’s domain name <redbox.com> and the disputed domain name is the addition of a letter “n”.

That such typo has been included in the disputed domain name to capture and redirect traffic from the Complainant’s website to the disputed domain name and the pay-per-click website to which it resolves.

That the Respondent purposely designed the disputed domain name to mimic the legitimate domain name <redbox.com> of the Complainant, either to take advantage of mistypes, to redirect traffic, or to create an implied affiliation with the Complainant´s mark REDBOX.

That the Complainant has never consented to the registration of the disputed domain name, and that it sent her a letter demanding the transfer of the disputed domain name.

That, when Domains By Proxy revealed the real identity of the Registrant, the Complainant learned that the Respondent has been named as a respondent in almost twenty prior UDRP cases where the relevant disputed domain names were transferred to the complainants, including at least ten cases involving typosquatting.

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

That the disputed domain name is identical and confusingly similar to the Complainant’s REDBOX trademark, because it consists of said trademark, plus the letter “n”.

That the irrelevant addition of the “.com” top-level domain indicator does not distinguish the disputed domain name from the Complainant’s REDBOX trademark.

(ii) The Respondent has no rights or legitimate interests in the disputed domain name.

That the Respondent cannot establish a legitimate right to, or interest in, the disputed domain name.

That the Respondent has no legal relationship with the Complainant; that the Complainant has not consented to the registration of the disputed domain name; and that the Complainant has objected to the registration and use of the disputed domain name by the Respondent.

That the Respondent is not commonly known by the disputed domain name.

That the Respondent does not have any registrations for “NREDBOX” or “nredbox.com”.

That the mere registration of a domain name does not confer trademark rights upon the registrant, and that such rights can arise only from the bona fide offering of goods or services.

That the Respondent has not made, and is not making, a legitimate noncommercial or fair use of the disputed domain name.

That, where a respondent infringes a complainant’s trademark by attempting to attract users to its site by creating confusion, diverting traffic, and trading on the goodwill of another’s mark, such conduct “precludes a finding that [the] respondent [is] making a ‘bona fide offering of goods and services’”.

That, given the renown of the REDBOX trademark, the Respondent would not have chosen the disputed domain name unless the Respondent was seeking to intentionally trade on the Complainant’s REDBOX trademark.

(iii) Registration and use in bad faith.

That the Respondent has registered and used the disputed domain name in bad faith and with full knowledge of the Complainant’s REDBOX trademark.

That, by virtue of the Complainant’s U.S. federal trademark registrations for the REDBOX trademarks, the Respondent had constructive knowledge of the Complainant’s long-standing rights to the REDBOX trademark at the time of registration of the disputed domain name.

That previous UDRP panels have found that if a respondent has engaged in typosquatting, this fact may be sufficient to establish registration and use in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Complainant must prove that the three elements of paragraph 4(a) of the Policy have been met:

(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 with respect to the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

In view of the Respondent’s failure to submit a Response, the Panel shall decide this proceeding on the basis of the Complainant’s undisputed factual allegations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules, and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules (see Boris Johnson v. Belize Domain WhoIs Service Lt, WIPO Case No. D2010-1954).

A. Identical or Confusingly Similar

The Complainant has submitted evidence showing that it owns and uses the trademark REDBOX in connection with the rental of movies and games, as well as the on-demand streaming of movies and TV shows on-the-go in the United States.

The disputed domain name is confusingly similar to the Complainant’s trademark REDBOX, because it incorporates said trademark in its entirety, with the addition of a letter “n” at the beginning of said disputed domain name.

Such a misspelling of the Complainant’s trademark constitutes an act of typosquatting (see section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)), which attempts to mislead users who are searching for the Complainant’s website (see, Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043, <edmundss.com>: Allstate Insurance Company v. PrivacyProtect. org / Purple Bucquet, WIPO Case No. D2011-0003, <allsatate.com>; and Schneider Electric S.A. v. Domain Whois Protect Service / Cyber Domain Services Pvt. Ltd., WIPO Case No. D2015-2333, <schnieder-electric.com>).

The addition of the generic Top-Level Domain (“gTLD”) “.com” to the disputed domain name is without legal significance for the purpose of assessing confusing similarity (see SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services, WIPO Case No. D2015-0565; and Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc., WIPO Case No. D2014-1919).

The first element of the Policy has been met.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in a domain name:

(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is 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.

The disputed domain name clearly targets the Complainant and its business, as the website to which the disputed domain name resolves displays hyperlinks such as, among others, “New Movie Rental Releases” and “Stream Movies”, and redirects traffic to websites offering movie rentals, similar to those offered by the Complainant.

As there is no evidence contained in the case file showing that the Respondent has been commonly known by the disputed domain name, nor that she is in any way associated with the Complainant or its trademark REDBOX, such conduct cannot be deemed to have taken place in place in good faith, and therefore it cannot confer any rights to, or legitimate interests in the Respondent over the disputed domain name (see, mutatis mutandis, Minerva S.A. v. TT Host, WIPO Case No. D2016-0384; and Accor v. SANGHO HEO / Contact Privacy Inc., WIPO Case No. D2014-1471).

The second element of the Policy has been met.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:

(i) circumstances indicating that the respondent has registered or the respondent has 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The Respondent has used the disputed domain name to offer, in the parking webpage to which it resolves, sponsored PPC links to attract Internet users to its website for commercial gain. Those links are diverting Internet users to services which directly compete with the Complainant’s core activities and business. This implies that the Respondent knew the Complainant, its services, and its trademark REDBOX at the time of registration of the disputed domain name.

The above shows that the Respondent has intentionally registered and is using the disputed domain name to attract, for commercial gain, Internet users to her website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, which conduct constitutes bad faith under paragraph 4 b)(iv) of the Policy (see SVB Financial Group v. WhoisGuard Protected, WhoisGuard, Inc. / Citizen Global Cargo, WIPO Case No. D2018-0398; Haas Food Equipment GmbH v. Usman ABD, Usmandel, WIPO Case No. D2015-0285).

Furthermore, it is well established that the practice of typosquatting constitutes evidence of bad faith registration of a domain name (see, Lexar Media, Inc. v. Michael Huang, WIPO Case No. D2004-1039; Wal-Mart Stores, Inc. v. Longo, WIPO Case No. D2004-0816; Admiral Group Plc and EUI Limited v. Cimpress Schweiz, Cimpress Schweiz GmbH, WIPOCase No. DCO2017-0043; MouseSavers, Inc. v. Mr. Henry Tsung d/b/a www.wwwmousesavers.com, WIPO Case No. D2004-1034).

Considering that the Respondent has been named as a respondent in several cases decided under the Policy, it is reasonable to infer that the Respondent has engaged in a pattern of cybersquatting and typosquatting, such as the conduct in this case. Said conduct constitutes bad faith use under paragraph 4(b)(iv) of the Policy (see SAP SE v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-1090; BUPA v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-1117; Phillip Morris USA Inc. v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-1616; The British United Provident Assoc. Ltd. v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-1755; ZB, N.A. v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No.D2018-1959; The Terminix Int’l Co. Ltd. Partnership v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-2112; The Commissioners for HM Revenue and Customs v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-2348; John Middleton Co. v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-2600; Sanofi v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-2654; IBM Corp. v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-2657; Ford Motor Company v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-2787; esure Insurance Ltd. v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-2870; Calvin Klein Trademark Trust & Calvin Klein, Inc. v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-2882; Allied Universal v.Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-0156; Zions Bancorporation, N.A. dba National Bank of Arizona v. Carolina Rodrigues, Fundacion Comercio Electronico, Case No. D2019-0157; Asurion LLC v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-0211; Facebook Inc. v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-0252; Calvin Klein Trademark Trust & Calvin Klein, Inc. v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-0333).

In light of the above, it is clear that the disputed domain name was registered and is being used in bad faith (see WIPO Overview 3.0 , section 3.2.1 ; Yusuf A. Alghanim & Sons W.L.L. v. Anees Salah Salameh, WIPO Case No. D2018-1231). The third element of the Policy has been met.

7. Decision

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 <nredbox.com> be transferred to the Complainant.

Kiyoshi Tsuru
Sole Panelist
Date: June 11, 2019