The Complainant is Redbox Automated Retail, LLC d/b/a Redbox of Oakbrook Terrace, Illinois, United States of America (“USA” or “United States”), represented by Neal, Gerber & Eisenberg, USA.
The Respondent is Ajay Sharma of Mathura, India. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2018. On October 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 17, 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. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 14, 2018.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on November 21, 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
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 in the United States:
- 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 name, registered on February 20, 2018, currently does not resolve to an active webpage but was used in the past to host a webpage offering the download of an application for streaming free live TV channels. 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 disputed domain name, under the Complainant’s view, reproduces its well-known REDBOX trademark, with the addition of the generic terms “tv”, which describes the type of streaming service being offered and “apk”, which describes the type of application being offered on the Respondent’s website.
In what it regards the absence of the Respondent’s rights or legitimate interests in the disputed domain name, 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 name;
(ii) the Respondent is not referred to or commonly known as the disputed domain name , 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 name since it is attempting to attract Internet users to its website 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 name 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 name unless it was seeking to create an impression of association with the Complainant.
As to the registration and use of the disputed domain name the Complainant argues that the Respondent has registered and used the disputed domain name 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 name without the clear intent to exploit the similarity between the disputed domain name and the Complainant’s trademark and services. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has established rights over the REDBOX trademark.
The addition of the generic terms “tv” and “apk”, which relate to the services provided by the Complainant, does not prevent a finding of confusing similarity with the Complainant’s REDBOX trademark.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. 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 name or a name corresponding to the disputed 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 disputed domain name, 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 name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
According to the evidence submitted by the Complainant, the Respondent has indeed not used the disputed domain name in connection with a bona fide offering of goods or services given that the disputed domain name has been used to offer and promote an application offering the free streaming of live TV channels. Such application appears 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 name.
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 name. C. Registered and Used in Bad Faith
In this case, both the registration and use of the disputed domain name 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 name which expressly relate to the services provided by the Complainant.
Furthermore, and as already mentioned, the apparent use made of the disputed domain name to generate revenues from the advertisements displayed at the application offered at the disputed domain name, cannot be considered a bona fide offering of goods or services.
Also, the absence of a reply to the cease-and-desist letter sent by the Complainant, prior to the filing of the present case (Annex 10 to the Complaint), as well as the absence of a reply to this procedure are further indications of the Respondent’s bad faith.
Additionally, taking into account all of the above, given the distinctiveness and renown of the Complainant’s trademark, and the nature of the disputed domain name, there simply cannot be any actual or contemplated good faith use of the disputed domain name 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 name be transferred to the Complainant.
Wilson Pinheiro Jabur
Sole Panelist
Date: December 5, 2018
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