The Complainant is Roku, Inc of Saratoga, California, United States of America, represented by Richard H. Butler, United States of America.
The Respondent is It’s So Easy Pty Ltd / Sharyn Webber of Townsville, Queensland, Australia, appearing pro se. 2. The Domain Name and Registrar
The disputed domain name is registered with Crazy Domains Pty Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2013. On February 28, 2013, the Center transmitted by email to Crazy Domains Pty Ltd a request for registrar verification in connection with the disputed domain name. On March 4, 2013, Crazy Domains Pty Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on March 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2013. The Response was filed with the Center on March 26, 2013.
The Center appointed Sebastian Hughes, Dan Hunter and Nicholas Weston as the Panelists in this matter on April 19, 2013. 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 A. Complainant
The Complainant is a company incorporated in the State of Delaware in the United States of America, and the owner of a registration in Australia for the trade mark ROKU (the “Trade Mark”), with a registration date of March 31, 2004. The Complainant owns a domain name incorporating the Trade Mark, , and operates a website relating to its business at that domain name. B. Respondent
The Respondent is, collectively, a company incorporated in Australia and an individual resident in Australia. C. The Disputed Domain Name
The disputed domain name was registered on September 8, 2010. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Trade Mark is registered and used by the Complainant in respect of its multi-media streaming players which are capable of displaying multi-media content through an audio/visual device such as a television.
The disputed domain name is identical to the Trade Mark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has not been authorised by the Complainant to use the Trade Mark and is not commonly known by the disputed domain name.
The Respondent is attempting for commercial gain to misleadingly divert consumers to the website to which the disputed domain name is resolved (the “Website”), which advertises a competing DIRECTV multi-media streaming device not produced by the Complainant. The advertisement on the Website is displayed in a large, coloured font with a bold clickable link to the official DIRECTV website. An image of the Complainant’s ROKU streaming player is shown directly next to the DIRECTV advertisement, which is likely to confuse consumers and lead them to believe that the DIRECTV product is the ROKU streaming player.
Although the Website contains a disclaimer, it is shown in text form and without a clickable link to the Complainant’s website. The disclaimer is in grey text in a smaller font and is more difficult to read compared to the bold and larger colour graphics shown in the advertisement for the DIRECTV streaming player. The disclaimer does nothing to alleviate the initial interest confusion generated by the disputed domain name itself.
The Website refers to a model of the Complainant’s ROKU streaming player from 2008, which has not been available for more than 2 years.
The disputed domain name was registered or is subsequently being used in bad faith. By using the disputed domain name, the Respondent is intentionally attempting to attract Internet users searching for ROKU streaming players to the Website, for commercial gain. The Respondent is creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the disputed domain name. The Respondent is capitalising on the Trade mark to profit by attracting Internet users to the Website, which features paid advertising. B. Respondent
The Respondent made the following submissions in the Response.
According to the Policy, the disputed domain name does not automatically belong to the Complainant, the registered owner of the Trade Mark. The Complainant is not the bona fide owner of the disputed domain name as the Complainant chose not to acquire the disputed domain name and did not file the Complaint until a substantial amount of time had elapsed.
The Respondent is using the disputed domain name in respect of the Website which is an information site providing positive content regarding the Complainant’s ROKU devices to the Australian public. The Website provides information and specifications relating to the Complainant’s ROKU devices in a constructive and helpful manner.
The Google AdSense algorithm used by the Respondent in respect of the Website displays advertisements relevant to the Internet user’s previous search terms. It is for this reason that the DIRECTV advertisement was displayed on the screen shot put into evidence by the Complainant. If, however, the relevant Internet user had, for example, previously searched for flights or accommodation, advertisements reflecting flights or accommodation would be displayed on the Website.
The disclaimer is provided in a clear and uniform text in prime position at the top of the home page on the Website.
The disputed domain name was not registered by the Respondent in an intentional attempt to attract commercial gain.
The Respondent is making a legitimate noncommercial fair use of the disputed domain name, without intent to misleadingly divert consumers for commercial gain, or to tarnish the Trade Mark at issue.
The disputed domain name was not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to any other person, in particular the Complainant. The Respondent has never offered the disputed domain for sale to the Complainant and the disputed domain name is still not for sale to anybody.
The Respondent requests the Panel to make a finding of reverse domain name hijacking. 6. Discussion and Findings
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain name by over 6 years.
The Panel finds that the disputed domain name, which contains the Trade Mark in its entirety, is confusingly similar to the Trade Mark.
The Panel therefore holds that the Complaint fulfills the first condition in paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to the Respondent of the dispute, the Respondent’s 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 (as an individual, business, or other organisation) has been commonly known by the domain name even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark 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 Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by over 6 years. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (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 has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has been used in respect of the Website which features prominently the Trade Mark, contains limited information regarding a previous version of the ROKU streaming device, and generates advertising revenue for the Respondent using the Google AdSense service. In all the circumstances of this case, such use does not amount to a bona fide offering of goods or services under the Policy.
The Respondent is not a reseller or distributor of the Complainant’s ROKU devices. Notwithstanding the use of the disclaimer on the Website, it cannot therefore be said that the principles in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, which suggest that, in certain limited circumstances, the use by a reseller or distributor of a third party’s trade mark in a domain name may amount to a bona fide offering of goods or services, apply. See also paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
Aside from the bare assertion in the Response, there has been no evidence adduced to show that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfils the second condition in paragraph 4(a)(ii) of the Policy. C. Registered or Subsequently Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant's name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location.
According to paragraph 3.5 of the WIPO Overview 2.0, a disclaimer, especially if it is sufficiently clear and prominent, may sometimes be found to support other factors indicating good faith or legitimate interest.
However, the existence of a disclaimer cannot by itself cure bad faith, when bad faith has been established by other factors. This is typically explained by UDRP and .auDRP panels with reference to the probability of Internet user "initial interest confusion" - by the time such user reaches and reads any disclaimer under the disputed domain name, any registrant objective of attracting visitors for financial advantage to its website through use of the trade mark in the domain name will generally have been achieved.
In all the circumstances of this proceeding, the Panel concludes that the Respondent has, without the authorisation or approval of the Complainant, registered the disputed domain name and set up the Website, in the guise of an information or commentary site relating to the Complainant’s ROKU devices, in order to attract Internet users to the Website and generate revenue using the Google AdSense service.
The Panel rejects the Complainant’s assertion that the disclaimer is less prominent than the advertisements featured on the Website, but such finding has no effect on the above determination regarding bad faith.
The Panel also notes that the Complaint is not founded on any allegation that the Respondent has offered for sale the disputed domain name to the Complainant or any other person.
The Panel would also note that the Respondent’s request for a finding against the Complainant of reverse domain name hijacking is wholly unsubstantiated and, in all the circumstances of this proceeding, unmeritorious. See also paragraph 4.17 of the WIPO Overview 2.0.
For the foregoing reasons, the Panel concludes that the disputed domain name has been registered or has subsequently been used in bad faith. Accordingly the third condition of paragraph 4(a)(iii) 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 be transferred to the Complainant.
Sebastian Hughes
Presiding Panelist
Dan Hunter
Panelist
Nicholas Weston
Panelist
Date: May 3, 2013
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