The Complainant is Redbox Automated Retail, LLC of Oakbrook Terrace, Illinois, United States of America (“United States”), represented by Neal, Gerber & Eisenberg, United States.
The Respondent is Tariq Mehmood of Multan, Punjab, Pakistan; Super Privacy Service LTD c/o Dynadot of San Mateo, California, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc.; the disputed domain name is registered with Dynadot, LLC (the “Registrars”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) regarding the disputed domain name on October 16, 2018. On October 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name . On October 16, 2018, 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 October 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 13, 2018. On October 31, 2018, the Complainant submitted an amended Complaint, asking to add the disputed domain name .
On November 8, 2018, the Center received an email from a third party offering to transfer the disputed domain name to the Complainant. On November 9, 2018, the Center notified the Parties that if they wish to explore settlement options, the Complainant should submit a request for suspension by November 16, 2018. On November 15, 2018 and November 16, 2018, the Complainant submitted two emails refusing to settle. The Respondent did not submit any Response by the specified due date. On November 14, 2018, the Center notified the Parties that it would proceed with panel appointment.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on November 22, 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.
On December 11, 2018 the Panel considered the Complainant’s request and requested the Center to obtain registrar verification for the additional domain name (“Additional Domain Name”), having the Center transmitted by email to Dynadot a request for registrar verification in connection with the Additional Domain Name. On December 13, 2018, the Registrar transmitted by email to the Center its verification response disclosing that Super Privacy Service LTD c/o Dynadot is listed as the registrant and providing the contact details.
On December 24, 2018 the Panel issued the Procedural Order No. 1 accepting on a preliminary basis the Complainant’s request of the Additional Domain Name and ordering the Complainant to file a consolidation request before December 28, 2018 and the Respondent to submit any comments to the Additional Domain Name before January 2, 2019.
The Complainant filed a request to consolidate the proceeding so as to include the Additional Domain Name on December 27, 2018. No reply was received by the Respondent as to the consolidation request. 4. Factual Background
The Complainant exploits the rental and sale of movies and games business as well as offers on-demand streaming of movies and entertainment content since 2002 in the United States.
It is the owner of the following, amongst others (Annex 6 to the Complaint), trademark registrations before the USPTO:
- No. 2,919,854 for REDBOX, filed on January 8, 2003 and registered on January 18, 2005, in class 09;
- No. 4,988,910 for REDBOX, filed on October 3, 2012 and registered on June 28, 2016, in classes 41 and 42;
- No. 4,672,047 for REDBOX.COM, filed on May 19, 2011 and registered on January 13, 2015, in classes 09, 35 and 41.
The disputed domain names, and were registered, respectively on August 1, 2017 and October 4, 2018. Presently they both redirect Internet users to the webpage available at , where the download of an application for streaming free live TV channels is offered. 5. Parties’ Contentions A. Complainant
According to the Complainant, its REDBOX trademark is well-known in the United States in relation to the rental and sale of movies and games, having provided more than 5 billion rentals, sales, downloads and transmissions across that country since 2002.
The Complainant further asserts to have obtained an enormous success and reputation as being considered “the best entertainment deal on the planet”, currently charging USD 1.75 per rental, having the REDBOX trademark acquired considerable recognition, distinctiveness and valuable goodwill.
The Complainant further indicates having sent two warning letters to the Respondent, the first on September 5, 2018 and the second on September 17, 2018 (Annexes 10 and 11 to the Complaint), having then filed this case on October 4, 2018, the same date of the registration of the second disputed domain name, having the Complainant then sent the Respondent a third letter, on October 24, 2018 (Annex 12).
According to the Complainant, its counsel has received “unsigned letters, emails”, “emails from test accounts” refusing to cease the use of the disputed domain names and engaging in evasive tactics to conceal the Respondent’s identity.1
The disputed domain names, under the Complainant’s view, reproduce its well-known REDBOX trademark, with the addition of the generic term “tv”, which describes the type of streaming service being offered on the Respondent’s websites.
In what it regards the absence of the Respondent’s rights or legitimate interests on the disputed domain names, the Complainant argues that:
(i) the Respondent has no legal relationship with the Complainant, nor has the Complainant consented to the Respondent’s registration or use of the disputed domain names;
(ii) the Respondent is not referred to or commonly known as the disputed domain names or , as well as does not have any trademarks relating to REDBOX or REDBOX TV;
(iii) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names since it is attempting to attract Internet users to its websites by creating a likelihood of confusion and trading on the Complainant’s trademark and goodwill, which cannot be considered a bona fide offering of goods and services, given that the Respondent is earning revenues from the advertisements displayed at the application offered at the disputed domain names for the streaming of free live TV channels;
(iv) given the renown of the REDBOX trademark in connection with movie rental services and streaming services provided by the Complainant, the Respondent would not have chosen the disputed domain names unless it was seeking to create an impression of association with the Complainant.
As to the registration and use of the disputed domain names the Complainant argues that the Respondent has registered and used the disputed domain names to promote and endorse a service intentionally trading on the well-known REDBOX trademark, being it not plausible that the Respondent innocently registered the disputed domain names without the clear intent to exploit the similarity between the disputed domain names and the Complainant’s trademark and services. B. Respondent
The Center received several emails from a third-party email address offering to transfer the disputed domain names to the Complainant. The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Request for consolidation - Addition of the second disputed domain name
The Complainant has requested that the disputed domain name be added to this dispute given that (i) the disputed domain name was registered hours after the beginning of these proceedings on October 4, 2018; (ii) it is used to redirect Internet users to the same webpage to which Internet users are redirected when accessing the disputed domain name and (iii) the registration of an identical domain name with the same content suggests that the disputed domain name is subject to common control and that consolidating these proceedings would be equitable, fair and procedurally efficient.
Section 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) establishes that “[w]here 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.”
All of the aforementioned criteria are present in this case and therefore this Panel accepts such request considering that it would be more procedurally efficient to have the two disputed domain names dealt with at the same procedure given that they relate to the same trademark, the same Respondent and revert to the same website, offering the same services. B. Identical or Confusingly Similar
The Complainant has established rights over the REDBOX trademark.
The addition of the acronym “tv” for television, which relate to the services provided by the Complainant, do not prevent a finding of confusing similarity with the Complainant’s REDBOX trademark.
For the reasons above, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademarks. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate the Respondent’s rights or legitimate interests in the disputed domain names. These circumstances are:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names 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 disputed domain names, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules.
The Complainant was able to make a prima facie case against the Respondent.
According to the evidence submitted by the Complainant, the Respondent has indeed not used the disputed domain names in connection with a bona fide offering of goods or services given that they have been used to offer and promote an application offering the free streaming of live TV channels. Such application however appear to have sponsored advertisements which would generate revenues to the Respondent.
Furthermore, the Complainant has indeed stated that the Respondent has no legal relationship with the Complainant, nor has the Complainant consented to the Respondent’s registration or use of the disputed domain names.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain names. D. Registered and Used in Bad Faith
In this case, both the registration and use of the disputed domain names in bad faith can be found pursuant to the Policy in view of the clear association between the Complainant’s trademark and the disputed domain names which expressly relate to the services provided by the Complainant.
Furthermore, and as already mentioned, the use made of the disputed domain names to generate revenues from the advertisements displayed at the application offered at the disputed domain names, cannot be considered a bona fide offering of goods or services.
Also, the address provided by the Respondent appear to be false one, having the Center not been able to contact the Respondent through such, and the absence of a reply to this procedure are further indicatives of the Respondent’s bad faith. Moreover, the use of a Privacy Service for the Additional Domain Name is a further indication of the Respondent’s attempt to conceal himself.
Additionally, taking into account all of the above, given the renown of the Complainant’s trademark, and the nature of the disputed domain names, there simply cannot be any actual or contemplated good faith use of the disputed domain names as this would invariably result in misleading diversion and taking unfair advantage of the Complainant’s rights (as in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
For the reasons above, the Panel finds that the Respondent has registered and used the disputed domain names in bad faith. 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 names and be transferred to the Complainant.
Wilson Pinheiro Jabur
Sole Panelist
Date: January 5, 2019
1 The Panel notes that the Complainant should have submitted such evidence for the Panel’s consideration, what would have contributed to the Panel’s better analysis of the case.
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