WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Somos Next, LLC v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / Bang Napi
Case No. D2021-2525
1. The Parties
Case No. D2021-2525
1. The Parties
The Complainant is Somos Next, LLC, United States of America (“United States”), represented by Holland & Knight, LLP, United States.
The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Bang Napi, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <flixlatino.online> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2021. On August 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 12, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 12, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 16, 2021.
The Center verified that the Complaint together with 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 August 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2021.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on September 20, 2021. 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 Complainant is a provider of Spanish language audiovisual content online. The Complainant owns several trademark registrations for FLIX LATINO, inter alia, U.S. registration number 4646815 registered on November 25, 2014, and U.S. registration number 6084647 registered on June 23, 2020. The Complainant has used its trademarks for more than six years in connection with television broadcasting, film, and television video-on-demand services.
The Domain Name was registered on December 10, 2020. At the time of drafting this decision, the Domain Name resolved to an error page. However, when the Complainant filed the Complaint, the Respondent was using the Domain Name in connection with film and television on-demand services.
5. Parties’ Contentions
The Complainant provides evidence of trademark registrations, and states that the trademarks are well known and highly regarded throughout the state of Florida, the United States and globally. The Complainant argues that the Domain Name is identical to the Complainant’s trademark as the Domain Name incorporates the Complainant’s Trademark in its entirety, with the addition of the generic Top-Level Domain (“gTLD”) “.online”.
The Complainant asserts that the Respondent is not authorized to use the Complainant’s trademark. The Respondent is not commonly known by the Domain Name. The Respondent cannot establish rights in the Domain Name as it has not made any use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. On the contrary, the Respondent has used the Domain Name to resolve to a copycat website that may contain pirated films and TV shows. The webpage is designed to look like the Complainant’s website and deceive consumers into believing the parties are affiliated to the extent that it says “Copyright © 2021 FlixLatino”.
The Complainant argues that by registering the Complainant’s trademark in the Domain Name, the Respondent was seeking to create a likelihood of confusion with the trademark to attempt to attract Internet users on its website for commercial gain and capitalize on the Complainant’s trademark rights and reputation. There is no other plausible explanation for the Respondent’s decision to register and use the Complainant’s mark in connection with similar services. Moreover, the Respondent’s website fails to provide accurate contact information. The contact information appears to be false.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established rights in the trademark FLIX LATINO.
The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name is identical to the Complainant’s trademark. For the purpose of assessing under paragraph 4(a)(i) of the Policy, the Panel may ignore the gTLD “.online”; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
The Panel finds that the Domain Name is identical to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register the Domain Name containing the Complainant’s trademark or otherwise make use of its mark. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired unregistered trademark rights. The Respondent’s use of the Domain Name to resolve to a copycat website is clearly not bona fide, but rather evidence of bad faith. Furthermore, the nature of the Domain Name, being identical to the Complainant’s trademark, carries a high risk of implied affiliation with the Complainant. See WIPO Overview 3.0, section 2.5.1.
The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Domain Name is identical to the trademark FLIX LATINO. The Respondent seems to have been aware of the Complainant when it registered the Domain Name, as the Domain Name has resolved a webpage offering similar services as the Complainant. The Panel agrees with the Complainant that the Respondent by registering the Complainant’s trademark in the Domain Name was seeking to create a likelihood of confusion with the trademark to attract Internet users on its website for commercial gain and capitalize on the Complainant’s trademark rights and reputation.
Moreover, there is no evidence of any actual or contemplated good faith use by the Respondent, and the Respondent has taken active steps to conceal its identity by listing inaccurate/false contact details. The fact that the Respondent has not replied to the Complainant’s contentions, and used a privacy protection service to hide the Respondent’s identity, further point to bad faith.
For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of 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 Domain Name <flixlatino.online> be transferred to the Complainant.
Date: September 22, 2021