Netflix, Inc. just lost a complaint filed under the Uniform Rapid Suspension System (URS) on the domain name Netflix.website
I have read through the short decision several times and still don’t understand it
The domain owner said he doesn’t even own the domain.
The domain which was had a website about Netflix service was found to be inactive when the Examiner David J. Steele, Esq. looked at it, yet he found in favor of the domain holder
Here are the highlights:
“At the outset, it is necessary to resolve the contentions raised by Respondent that he is not the registrant of the domain name and that the domain name has expired. Respondent’s entire response is:
I am not the registered owner of this domain. Ownership has long expired. Contact Godaddy. Netflix.website was a help forum for television and movie fans. It was in no way associated with Netflix as stated on the page. Apart from that the domain was used to run basic site testing and has since expired and is not under ownership.
The URS Policy (“Policy”) and Rules require that URS complaints be commenced against a “Respondent,” a defined term which means the “holder of a domain name registration.” See Rules, para. 1.
Respondent’s contentions that he is not the registrant of the subject domain name, and that the domain name has expired, are contradicted by the verification provided to the Forum by the registry. Specifically, the registry identified:
Registrant Name: Kevin O’Shea
Registrant Organization: Kevin O’Shea
Regarding Respondent’s contention that the domain name “has long expired,” the registry stated that the domain name’s expiration date is: 2016-09-24
Having weighed the verification provided by the registry against Respondent’s unsupported allegations, I am satisfied that the proceeding has been properly commenced against the correct respondent for the subject domain name.
Turning to the substantive issues raised in the Complaint, URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.
[URS 220.127.116.11] The registered domain name(s) is/are identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
Complainant owns numerous valid trademark and service mark registrations of national effect for its NETFLIX mark in over 100 jurisdictions throughout the world. These registrations evidence Complainant’s rights for the purposes of the Policy. [URS 18.104.22.168(i)].
Complainant is currently using its NETFLIX mark in connection with, among other goods and services, numerous online services.
Evidence of use by Complainant of its NETFLIX mark is a screenshot of Complainant’s website. From the evidence submitted, it is clear that Complainant’s services include “TV shows & moves streamed instantly over the Internet” and that these services are delivered, in part, from Complainant’s own website.
The NETFLIX mark is unquestionably famous within the meaning of 15 U.S.C. 1125(c).
The subject domain name, netflix.website is identical to Complainant’s famous mark. The incorporation of a trademark in its entirety into a domain name is sufficient to establish that the domain name is identical or confusingly similar to the trademark at issue.
I find that the subject domain name netflix.website is identical or confusingly similar to Complainant’s NETFLIX mark.
Determined: Finding for Complainant
Registrant has no legitimate right or interest to the domain name.
Complainant contends that Respondent has no trademark or other intellectual property rights to the Disputed Domain Name or the NETFLIX mark, and is senior to Respondent’s registration and use by many years. Complainant further contends that “[t]here is no evidence that Registrant was commonly known as ‘Netflix’ prior to registration of the Disputed Domain Name.” Complainant also contends that “Complainant is not aware of any company affiliated with Registrant called ‘Netflix.’” Lastly, Complainant contends that “Registrant is not using the Disputed Domain Name for any bona fide offering of goods or services, or for any legitimate noncommercial or fair use. The domain name is currently not active.”
Respondent replies, “I am not the registered owner of this domain. Ownership has long expired. Contact Godaddy. Netflix.website was a help forum for television and movie fans. It was in no way associated with Netflix as stated on the page. Apart from that the domain was used to run basic site testing and has since expired and is not under ownership.”
As discussed above, Respondent’s contention that he is not the registrant is unsupported by the facts of this case. Respondent admits that the domain name was used as “… a help forum for television and movie fans.”
Respondent has not submitted any evidence that he is commonly known by the disputed domain name. Similarly, Respondent has not submitted any evidence that Respondent plans to use the disputed domain name for a legitimate noncommercial or fair use. Respondent has not submitted any evidence supporting any of the other articulated defenses in the Policy.
Respondent is not making a legitimate or fair use of the domain name without intent for commercial gain to misleadingly divert consumers. In view of Complainant’s famous mark, Respondent’s use of a domain name that is confusingly similar to Complainant’s mark, to operate a website that provides similar or related services to those offered by Complainant was clearly made to misleadingly divert consumers from Complainant’s netflix.com website.
In view of Complainant’s famous trademark, any unprotected commercial use by Respondent of the netflix.website domain name would violate Complainant’s rights. This prior use by Respondent evidences a lack of legitimate rights or interest to the domain name.
Respondent does not have any legitimate right or interest to the domain name.
Determined: Finding for Complainant
The domain name(s) was registered and is being used in bad faith:
Registrant has 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 documented out-of pocket costs directly related to the domain name; or
Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site 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 Registrant’s web site or location or of a product or service on that web site or location.
Respondent’s admission, that the domain name was previously used as “… a help forum for television and movie fans” supports that the domain name was used in bad faith.
However, Complainant states in its Complaint that the “Registrant is not making use of the Disputed Domain Name.” Complainant further submits a screenshot evidencing that the subject domain name is not being used.
Complainant next argues that,
While passively holding a domain name does not necessarily constitute bad faith, the circumstances of this case – namely, the fame of Complainant’s mark as a result of seventeen (17) years of continuous, exclusive, and extensive use, combined with Registrant’s passive holding – compel a finding that Registrant is using netflix.website in bad faith.
The language of the Policy requires that Complainant show, by clear and convincing evidence, that the domain name was registered and is being used in bad faith. Extending Complainant’s argument, the circumstances of this case establish, by clear and convincing evidence, that the domain name is being used in bad faith.
Complainant’s argument is not without merit nor should it be dismissed as being outside the bounds of the Policy.
Numerous decisions under the UDRP have shown that the passive holding of a domain name can constitute a domain name being registered and used in bad faith. Further, this Examiner can envision numerous hypotheticals where a registrant’s passive holding of a domain name would support, by clear and convincing evidence, that a domain name is being used in bad faith. Complainant’s argument must be considered: Is there clear and convincing evidence that Respondent’s passive holding of the domain name establishes that the domain name is being used in bad faith?
Complainant explains that the NETFLIX mark is famous and has been used continuously, and extensively, for many years. It is beyond question that Respondent was aware of the NETFLIX mark when he registered the domain name, and when he used it to host “… a help forum for television and movie fans.”
Respondent’s reply states that, “I am not the registered owner of this domain. Ownership has long expired. Contact Godaddy.” However, this fact is plainly contradicted by the registry verification which shows that Respondent is still the listed owner. This fact could suggest that Respondent was obfuscating his control over and use of the domain name – but such a conclusion would be speculative, and would not provide clear and convincing evidence that Respondent’s passive holding of the domain name establishes that the domain name is being used in bad faith.
In sum, after carefully considering the evidence before me, I find that the evidence is not clear and convincing that the domain name is being used in bad faith.
Determined: Finding for Respondent
A complainant’s failure to establish any one of the above three elements by clear and convincing evidence must result in a decision rejecting the complainant’s requested relief. “If the Examiner finds that any of the standards have not been satisfied, then the Examiner shall deny the relief requested, thereby terminating the URS proceeding…” URS, para. 8.6.
After reviewing the parties’ submissions, the Examiner determines that the Complainant has NOT demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name be RETURNED to the control of Respondent: netflix.website