Complainant is Plex, Inc. of Los Gatos, California, United States of America (“United States”), represented by Hickman Palermo Becker Bingham LLP, United States.
Respondent is Bruno Dupoint, Global Transit Network of Cypress, California, United States. 2. The Domain Name and Registrar
The disputed 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 March 1, 2019. On March 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 4, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 6, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 6, 2019.
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 Respondent of the Complaint, and the proceedings commenced on March 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 31, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 1, 2019.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on April 16, 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
Complainant is a provider of computer software and online services in the field of digital media management. Complainant sells, supports and selectively grants licenses to use or distribute software under the mark PLEX for Mac, PC, Android, iOS, and other various platforms. The basic function of this software is to permit consumers, such as home users of PCs, with a means of organizing and viewing an electronic program guide of all videos that are stored on their home systems, across multiple devices, or that they have viewed or might want to view on external services. The end user license agreement that Complainant supplies with PLEX Media Server software and the terms of service that Complainant provides on its website, permit use of PLEX Media Server only on an individual basis or within a home for use by family members. Complainant contends that it has used PLEX as a trademark since at least as early as August 2008, and has offered a PLEX-branded app on IOS since at least mid-2010, expanding its mobile presence to Android and Windows Phone in the following two years. Complainant also owns and uses the domain names and .
Complainant owns the trademark PLEX which is registered in the United States, the European Union, and elsewhere. The registrations cover digital media management software for use in playing, organizing, indexing, searching, and transcoding digital video, audio, and images. Complainant’s registrations include United States Registration No. 4521345 for the mark PLEX, registered April 29, 2014, and United States Registration No. 4521387 for the mark PLEX with design, registered April 29, 2014.
The disputed domain name was registered on September 16, 2018. At the time of filing of the dispute, the disputed domain name resolved to a website indicating that the website was under construction. Currently, the disputed domain name resolves to a login page of an apparently active website offering services competitive with the Complainant. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademark, that Respondent has no rights or legitimate interests in respect of the disputed domain name and that the disputed domain name has been registered and is being used in bad faith. B. Respondent
Respondent did not submit a response to the Complaint. 6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
Paragraph 15(a) of the Rules instructs the Panel to decide a complaint “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. A. Identical or Confusingly Similar
Complainant has demonstrated that it has registered trademark rights in the mark PLEX. The disputed domain name incorporates Complainant’s mark in its entirety. The addition of the descriptive term “cloud” and the Top-Level Domain “.pro” do not add any distinguishing features.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademarks. B. Rights or Legitimate Interests
Complainant must establish a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to Respondent to come forward with evidence demonstrating rights or legitimate interests in the disputed domain name. If Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, Complainant is typically deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Complainant contends that Respondent is not an authorized reseller, distributor, or other channel partner of Complainant or otherwise affiliated with Complainant. Complainant has never authorized or otherwise condoned or consented to Respondent’s registration of the disputed domain name. There is no evidence in the record suggesting that Respondent is commonly known by the disputed domain name.
Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent is using the disputed domain name in a manner that suggests that Respondent’s website is a valid and authorized source of Complainant’s PLEX-branded media services offered via a cloud, when in fact it is unauthorized and unlicensed. The disputed domain name misleads end users as to the source of the services available via the domain and suggests an affiliation between Respondent and Complainant, which does not exist.
The website at the disputed domain name is inactive as of February 28, 2019. The home page of the website states “Sorry, we’re doing some work on the site”. The record also indicates that Respondent owns and/or operates a Facebook account using the name “Plex Cloud”. The “About Us” section describes the “Plex Cloud” service as follows: “Plex Cloud offer VPS and dedicated services optimized for an incredible plex media experience. all servers come with full automation to add media”. Currently, the disputed domain name resolves to a login page of an apparently active website offering services competitive with the Complainant. Thus, Respondent is using the PLEX mark and disputed domain name to offer media streaming services that are competitive to Complainant’s services. In addition, even if Respondent owns a validly licensed copy of genuine PLEX Media Server software, the end-user license agreement and terms and conditions to which Respondent would have agreed prohibit the kind of service that Respondent attempts to offer via the disputed domain name.
The record indicates that the disputed domain name and the website located at the domain is being used to attract users based on Complainant’s reputation in the mark PLEX in order to sell media services that appear to be associated with Complainant, but actually generate revenue for Respondent.
In addition, Respondent registered the disputed domain name through a privacy shield to hide his identity. There is no evidence that Respondent is commonly known by the disputed domain name.
The Panel finds that Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
By registering the disputed domain name incorporating Complainant’s trademark, Respondent has demonstrated a knowledge of and familiarity with Complainant’s trademark. The evidence of record indicates that Respondent has registered the disputed domain name to take advantage of Internet traffic generated by an apparent affiliation with or connection to Complainant.
As also set out more fully above, the Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website selling services competitive with Complainant by creating a likelihood of confusion with Complainant’s mark for Respondent’s own pecuniary gain or to disrupt the business of Complainant.
Accordingly, the Panel finds that Respondent has registered and used the disputed domain name 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 Complainant.
Lynda J. Zadra-Symes
Sole Panelist
Date: May 1, 2019
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