Complainant is Redbox Automated Retail, LLC d/b/a Redbox, United States of America (“United States”), represented by McDonald Hopkins LLC, United States.
Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland, / Alex Stanley, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2021. On August 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 27, 2021, 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 August 31, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Upon request of Complainant, the proceeding was suspended from September 3, 2021 to October 7, 2021, in order to pursue settlement regarding two domain names that were accordingly removed from the present dispute. Complainant filed an amended Complaint on October 12, 2021.
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 October 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 9, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 12, 2021.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on November 23, 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 BackgroundComplainant is a United States company. Since substantially before the registration of the disputed domain name, Complainant has offered products and services under its REDBOX mark, including rental and sale of movies and games and on-demand streaming content. Complainant has several registered trademarks for its REDBOX mark, including United States Registration Nos. 2,919,854 (registered January 18, 2005) and 2,988,869 (registered August 30, 2005). In addition to other means, Complainant offers its products and services to consumers via its official website, which is associated with the domain name
The disputed domain name was registered on July 21, 2021. The disputed domain name to resolves to a website offering services in competition with Complainant, with reference to a “RedBox TV” application.
5. Parties’ Contentions A. ComplainantComplainant contends that the (i) disputed domain name is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
In particular, Complainant contends that it owns the REDBOX mark, which it uses in connection with its various entertainment and related products and services.
Complainant contends that Respondent has merely added dictionary terms “tv” and “pro” to Complainant’s REDBOX mark in the disputed domain name. Complainant contends that Respondent has used the disputed domain name to set up a website meant to lure in customers looking for Complainant and its products and services offered under the REDBOX mark to offer a similarly named and competing application that is unconnected with Complainant, particularly as many are designed for use with a television. Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name registration or use of the disputed domain name. Rather, Complainant contends that Respondent has acted in bad faith in registering the disputed domain name and in setting up a website, when Respondent clearly knew of Complainant’s rights. Respondent has no affiliation with Complainant. Complainant has not authorized any activities by Respondent, nor any use of its trademarks thereby.
B. RespondentRespondent did not file a reply to Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThis Panel must first determine whether the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainant’s registered REDBOX mark, with the addition of the terms “tv” and “pro”.
Numerous UDRP panels have agreed that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, Inter-IKEA v. Polanski,WIPO Case No. D2000-1614; General Electric Company v. Recruiters,WIPO Case No. D2007-0584; Microsoft Corporation v. Step-Web,WIPO Case No. D2000-1500; and CBS Broadcasting, Inc. v. Y2K Concepts Corp.,WIPO Case No. D2000-1065.
The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThe Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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”.
Respondent did not submit a reply to Complainant’s contentions. Thus, Respondent did not allege or otherwise provide any information that would support a finding that Respondent has rights or legitimate interests in the disputed domain name.
Complainant has submitted evidence that Respondent uses the confusingly similar disputed domain name to resolve to a website offering competing entertainment services that are unfairly trading on Complainant’s REDBOX trademark with references to a “RedBox TV” application, an application which is neither authorized by or affiliated with Complainant. No disclaimer or explanation of the (lack of) relationship with Complainant is visible on Respondent’s website. In this context, Respondent’s use can neither be considered a bona fide of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s REDBOX trademark. Furthermore, there is no evidence that Respondent has been commonly known by the Disputed Domain Name.
Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name, which Respondent has not rebutted.
The Panel therefore finds that Respondent does not have rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThere are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, Respondent has used the disputed domain name to resolve to a website that offers services in competition with Complainant, with reference to various products and services associated with an unaffiliated “RedBox TV” application, which wholly incorporates Complainant’s REDBOX trademark without authorization. Respondent is thus attempting to create a likelihood of confusion with the Complainant’s REDBOX trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and “RedBox TV” application in order to trade on the goodwill of such trademark and attract Internet users, presumably for Respondent’s own commercial gain. See also Redbox Automated Retail, LLC v. Tariq Mehmood; Super Privacy Service LTD c/o Dynadot,WIPO Case No. D2018-2357 (where the UDRP panel found Complainant to have established “renown” in the REDBOX mark). In these circumstances, it is clear to the Panel that Respondent had Complainant’s widely-known REDBOX trademark in mind when registering the disputed domain name.
The Panel finds that Respondent registered and used the disputed domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy.
7. DecisionFor all 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
Lorelei Ritchie
Sole Panelist
Dated: December 7, 2021