The Complainant is Netflix Inc., United States of America (“United States”), represented by Coates IP, United States.
The Respondent is WhoisGuard, Inc., Panama / Siddharth Sethi, Canada. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2020. On December 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 8, 2020, 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 the Complainant on December 10, 2020 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 December 10, 2020. 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 December 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2021. On December 31, 3030, the Respondent requested an extension to file a response in relation to the ongoing COVID-19 condition. On January 4, 2021, the Center granted an extension of 10 days taking into account the stated reasons for that request. The Response was filed with the Center on January 15, 2021 (Canada time). The Center appointed Nick J. Gardner as the sole panelist in this matter on February 5, 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 an entertainment company founded in 1997, and located in California, United States. The Complainant operates a video streaming service under the name NETFLIX. The Complainant has over 195 million members in over 190 countries. Extensive evidence has been filed as to the nature and success of the Complainant’s business and the critical acclaim and awards it has won. For present purposes it suffices to note that it is very successful and extremely well known. The Complainant holds numerous registrations around the world for NETFLIX as a trademark, including for example United States Trademark Registration No. 2,552,950, registered March 26, 2002. These are referred to collectively in this decision as the NETFLIX trademark. The Disputed Domain Name was registered on September 3, 2017. It does not resolve to a website with any textual content but resolves to a page (the “Respondent’s Webpage”) which provides an animated colour burst effect which concludes with a blank coloured screen. Clicking on the page results in the animation repeating and a change of colour. 5. Parties’ Contentions A. Complainant The Complainant’s contentions can be summarized as follows. The Disputed Domain Name is identical to its NETFLIX Trademark. The Respondent has no rights or legitimate interests in the term “netflix”. In consequence the Complainant alleges that the Disputed Domain Name was registered and is being used in bad faith. The Complainant says NETFLIX is a coined term and the Respondent must have known of the Complainant and its business when he registered the Disputed Domain Name. It says the deliberate registration of a domain name identical to a well-known trademark, when the trademark has no other independent meaning itself establishes bad faith. It also relies upon correspondence (discussed below) where the Respondent sought to sell the Disputed Domain Name, as further evidence of bad faith. B. Respondent The essence of the Response is to say that “net” and “flix” are two independent words and the Respondent is at liberty to use those as his own property. He says: “The homepage hosts a personal noncommercial project of the respondent, comprised of active javascript code which changes colour of the background upon the clicking or tapping of a finger. The current active homepage bears no markings of the Complainant’s trademark anywhere on the page nor are any site visitors redirected to a page that tarnishes the Complainant’s trademark or infringes on any of the markings owned by the Complainant”. He goes on to make the point that many of the Complainant’s trademarks postdate his acquisition of the Disputed Domain Name. He suggests that the Complainant is guilty of Reverse Domain Name Hijacking (“RDNH”). As best the Panel can understand his case on this issue he suggests this case is analogous to various other cases he cites where RDNH has been found after a Complaint was filed following an unsuccessful attempt to purchase the domain name at issue (see further the discussion below). The Respondent denies that the Disputed Domain Name was registered and is being used in bad faith. He says the correspondence he received about purchasing the Disputed Domain name was from an unidentified individual by the name of Steve who failed to identify himself as a representative of the Complainant. The Respondent says he replied on November 24, 2020 to merely gauge the interest of the anonymous party and to get a free evaluation of the Respondent’s personal property, the Disputed Domain Name. He relies upon a precedent set by the Supreme Court of Ontario, the jurisdiction under which he resides (Tucows.Com Co. v. Lojas Renner S.A., 2011 ONCA 548). The Respondent also disputes the Complainant’s claim that the Respondent is attempting to sell the Disputed Domain Name at a highly inflated price. He says it has never been put on the public market for sale. He says his statement about “receiving other offers from other parties” in the email correspondence with Steve, were “mere fabrications to keep the Anonymous Internet Individual (“Steve”) at bay”. He says that on November 29, 2020, the individual named Steve offered the Respondent “$2K” for the Disputed Domain Name and stated no actual currency for the “$2K” monetary value in the email correspondence. He goes on to say that the Complainant explicitly states that “USD 2’000” was offered, which the Respondent says “is a complete fabrication of the truth”. The Respondent says these facts show that there was no intent of acquiring the Disputed Domain Name for the primary purpose of selling, renting or otherwise transferring the registration to the Complainant, or to a competitor of the Complainant. The Respondent disputes the relevance of Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 panel decision as an argument that passively holding a domain is found to be in bad faith. He says the Complainant fails to list the other reasons that played a role in that decision by the Panel, which do not hold true in this proceeding. He says that the Disputed Domain Name was never passively held, as there has been active usage. He also says he has not taken any steps to conceal his identity and that communication was open throughout and he has not provided false contact details. He says none of these factors (which were relevant in the Telstra case, supra) hold true in this proceeding. Finally the Respondent says that the Disputed Domain Name was not registered to primarily disrupt the complainant’s business. He says there is no activity on the webpage linked to the Disputed Domain Name to suggest that the Respondent was actively disrupting the complainant’s business. He says he registered the Disputed Domain Name for personal, noncommercial use, and points out the market capitalisation of the Complainant on the NASDAQ stock market has grown from USD75.44 billion USD on September 3, 2017 to USD224.3 billion USD on January 14, 2021. He says this shows the Respondent’s activity had no effect on the Complainant’s business. 6. Discussion and Findings Preliminary Matters The Panel notes this is a case where one Respondent (“WhoisGuard, Inc.”) appears to be a privacy or proxy service. The Panel in this case adopts the approach of most previous UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows: “Panel discretion In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed. Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.” In the present case the Panel considers the substantive Respondent to be Siddharth Sethi and references to the Respondent are to that person. Substantive Matters To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that: (i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; (iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has rights in the NETFLIX trademark. It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.store”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429. Accordingly the Panel finds that the Disputed Domain Name is identical to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests The Panel finds the NETFLIX trademark is, on the evidence before the Panel, a term in which the Complainant has developed a significant reputation. Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name: (i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the NETFLIX trademark. The Complainant has prior rights in the NETFLIX trademark which precede the Respondent’s acquisition of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455). The Respondent in effect says that (iii) above applies. He says the way the Respondent’s Webpage behaves (see description above) is the result of “a personal noncommercial project of the respondent”. The Panel agrees that its behaviour is noncommercial – there is no indication of any advertising links or other commercial activity. The Panel does not however accept that the activity in question is “legitimate”. The Panel does not accept the Respondent’s argument that “net” and “flix” are two ordinary English words and that he was at liberty to adopt them in conjoined for his own use. Whist the words are ordinary English words (arguably – “flix” is a colloquial abbreviation for films) but in conjoined form they create a coined term that has no dictionary meaning and which on the evidence uniquely refers to the Complainant and its services. The Response is singularly silent as to whether or not the Respondent knew of the Complainant and why he wanted to use the term “netflix” in association with the gTLD “.store” for his claimed “personal noncommercial project”. The Panel considers that it is inconceivable that the Respondent did not know of the Complainant given its fame and reputation, and that he deliberately chose the Disputed Domain Name because it corresponded to the Complainant’s name and trademark. The obvious reason for doing so is because he hoped he would be able to make money by selling the Disputed Domain Name to the Complainant. Conversely if the Respondent really wanted a domain name to showcase a “personal noncommercial project” why choose a name that corresponded to such a well-known third party and why choose the gTLD “store” which is not obviously suitable for such a project. Taken as a whole the Panel concludes that the manner in which the Respondent’s Webpage behaves is likely intended to provide an argument that the Disputed Domain Name has been put to genuine use and hence a defence to the present Complaint. The Panel does not consider that creating a preemptive defence to an anticipated complaint amounts to a legitimate noncommercial or fair use. Accordingly the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith. In the present circumstances the evidence as to the extent of the reputation the Complainant enjoys in the NETFLIX trademark, lead the Panel to conclude the registration and use were in bad faith. Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises: (i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location. In the present circumstances the Panel agrees with the Complainant that it is more likely than not that the Respondent identified that the Disputed Domain Name was available, was well aware of the Complainant and its business, and anticipated that if he purchased the Disputed Domain Name it would be of value to the Complainant and he would be able to resell it to the Complainant at a profit. He cannot sensibly have thought any third party would be able to use the Disputed Domain Name commercially. It seems likely the Respondent realised his actions might render him liable to either legal action or a UDRP complaint and he proceeded in a low key manner by not advertising the Disputed Domain Name for sale and by creating the Respondent’s Webpage. He presumably hoped that in due course the Complainant would become aware of the Disputed Domain Name and approach him. That strategy succeeded. On November 23, 2020 he received an email from a named individual at an identified law firm based in Seattle saying he had a client interested in the Disputed Domain Name and enquiring as to whether it was for sale. The Respondent is incorrect to say the individual was “unidentified”. The client was unidentified although the Respondent must have considered it was likely to be the Complainant. An exchange of emails followed in which the Respondent asked for an offer to be made. An offer of USD 2,000 was made to which the Respondent replied on December 2, 2020 “$2,000 is not what I would take. I have had higher offers prior. Unless your client is willing to go up considerably, we unfortunately have no deal here then”. The Respondent now admits there were no other offers. The Respondent now argues that the individual did not identify the currency of the offer (as it was sent as “$2K”), but the Respondent’s response asking for a higher offer instead of seeking a clarification on the currency supports that the Respondent likely read it as USD 2,000 when he received this offer. The Panel considers it more likely than not that the Respondent will have realised the unidentified client was the Complainant and was seeking to elicit a considerably higher offer. The Panel does not accept the Respondent’s present explanation that he was just trying to keep the individual “at bay”. He was clearly trying to elicit a higher offer. Noting the nature of the Disputed Domain Name the Panel does not consider there was likely to be any other party that could legitimately use the Disputed Domain Name and the Respondent will have known this was the case. Taken as a whole the Panel considers the Respondent’s actions fall squarely within paragraph 4(b)(i) of the Policy and this correspondence supports that conclusion. The Panel has considered each of the points that the Respondent has made and does not consider they alter this analysis. Its reasons are as follows. It does not matter that the Respondent has not actively offered the Disputed Domain Name for sale. It is not uncommon for opportunistic registrants of domain names which include a third party trademark to wait until they are approached, realising that actively offering to sell the domain name may make a UDRP case against them easier. Similarly it does not matter that the Disputed Domain Name has not been used commercially (see the Panel’s analysis above). A debate about whether or not the present case is materially the same as the one in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 is ultimately irrelevant. Registration of a domain name which corresponds to a complainant’s trademark, with an intention of selling the domain name to the complainant itself establishes bad faith. See for example the previous UDRP panel’s analysis in Viceroy Cayman Ltd. v. Anthony Syrowatka,WIPO Case No. D2011-2118 as follows: “All this means that Respondent most likely knew or must have known of Complainant's VICEROY trademark, properties, and hotel and resort services before the registration of the disputed domain names. In other words, Respondent registered the disputed domain names with Complainant's VICEROY mark in mind, i.e. in bad faith. (…) Given that Respondent demanded USD 10,000 per domain name transfer to Complainant, the Panel concludes that Respondent registered the disputed domain names primarily for the purpose of selling their registrations to Complainant, who owns the VICEROY marks, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the disputed domain names, which is a circumstance of registration in bad faith pursuant to Policy paragraph 4(b)(i)”. The Canadian legal authority the Respondent identifies appears to hold that a domain name is personal property and may allow a Canadian court to assert jurisdiction in appropriate circumstances. The Panel does not understand the relevance of this case – it does not provide any reason that prevents the Panel proceeding to make a finding. Given the Panel’s finding above it does not need to reach a conclusion as to whether the Respondent also intended to disrupt the business of the Complainant. The Panel does however consider it was likely the Respondent identified that sooner or later the Complainant would become aware of the Disputed Domain Name and consider it would be of value to the Complainant. It is entirely irrelevant that some of the Complainant’s trademarks postdate the date the Disputed Domain Name was registered. Many of its trademarks predate that date and it is clear the Complainant was extremely well known at the date the Disputed Domain Name was registered. As noted above at no point does the Respondent say he was unaware of the Complainant when he registered the Disputed Domain Name. The Respondent’s arguments about RDNH appear to be based on cases where a UDRP complaint was filed following a failed negotiation to buy a domain name. However those cases involve factual scenarios where the complainant’s case was without merit. That is not the case here. The Panel declines to make a finding of RDNH. Accordingly, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled. 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 Nick J. Gardner
Sole Panelist
Date: February 23, 2021
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