Complainant is Plex, Inc., United States of America (“United States”), represented by Baker Botts L.L.P., United States.
Respondent is Fran Branner, United States, self-represented.
The disputed domain name <cineplex.io> is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2020. On September 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 1, 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 Complainant on September 3, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 4, 2020.
The Center verified that the Complaint, together with the amended Complaint, satisfied the formal requirements of the .IO Domain Name Dispute Resolution Policy (the “.IO Policy”), the Rules for .IO Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IO 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 September 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 28, 2020. No Response was received by the Response due date, therefore on September 29, 2020, the Center notified the Parties of Respondent’s default. Respondent contacted the Center on September 29, 2020.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on October 1, 2020. 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.
Complainant is the owner of registrations for the word trademark (Including service mark) PLEX on the Principal Register of the United States Patent and Trademark Office (USPTO), including registration number 5,704,452, registration dated March 19, 2019, in international classes 41 and 42, covering, inter alia, providing use of non-downloadable online software in the field of media management for use instreaming audio and video content. Complainant is the owner of various additional registrations for the word, and word and design/device, trademark PLEX in Australia, Canada, the European Union, and other countries.
Complainant provides computer software and online services in the field of consumer digital media. Its software allows consumers to organize and share digital media across multiple devices, including digital media streamed from various licensing content providers. Complainant operates a web platform at <plex.tv> that allows consumers to stream content with or without registering as a subscription services member of “PLEX”. According to Complainant, its computer software applications have been downloaded and installed by “millions of end users”.
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. The Registrar reports April 25, 2020 as the registration date of the disputed domain name.
Respondent used the disputed domain name to direct Internet users to a webpage and site headed with “Cineplex Support”, and which invited users to create a “Plex” account. According to Respondent, its invitation redirected Internet users to the authorized PLEX platform where an account would be established using the typical registration procedure maintained by Complainant. However, Respondent and its Cineplex website also requested that the Internet user grant permission to Respondent to access the Internet user’s PLEX account. According to Complainant, Respondent was using the Cineplex website to obtain login information from “unwitting users” and that Respondent used that information to obtain PLEX services for free. According to Respondent, it was only acting to provide a support guide. Respondent also appeared to be inviting these same Internet users to Respondent’s “library”.
As of the date of this determination, Respondent has removed from the website identified by the disputed domain name the content regarding Complainant and its trademark referenced in the preceding paragraph.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the .IO Policy. The .IO Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and/or use (.IO Policy, paragraph 4(a)).
Complainant alleges that it owns rights in the trademark PLEX and that the disputed domain name is confusingly similar to that trademark.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent is operating a phishing site intended to maliciously collect login information from unwitting users; (2) the content on Respondent’s website is solely directed towards deceiving Internet users, with no legitimate purpose; (3) Respondent has not been commonly known by the disputed domain name, and; (4) Respondent is not making legitimate noncommercial or fair or use of the disputed domain name because it is conducting malicious phishing by using Complainant’s trademark in the disputed domain name and on its website without consent or authorization from Complainant.
Complainant alleges that the disputed domain name was registered and is being used in bad faith because: (1) Respondent’s use of the disputed domain name at the least confuses consumers regarding an association between Respondent and Complainant that does not exist; (2) Respondent’s sole purpose in encouraging Internet users to register through its platform is to allow Respondent to access the user accounts with Complainant; (3) Respondent has used Complainant’s trademark to attract Internet users for commercial gain to Respondent’s website by suggesting that Respondent is associated with Complainant.
In its informal submission, Respondent contends that it used Complainant’s trademark in the course of providing a guide, and that an Internet user is re-directed from its website to Complaint’s login authentication system. According to Respondent it is a movie club and adopted the disputed domain name to reflect that, not to impersonate Complainant.
Paragraph 4(a) of the .IO Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and/or use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered or is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.
The .IO Policy generally conforms to the Uniform Domain Name Dispute Resolution Policy (UDRP). The Panel will rely on relevant UDRP jurisprudence for appropriate guidance, though cognizant of and taking into account the differences between the .IO Policy and the UDRP.
Respondent provided an informal response to the Complaint in this proceeding indicating that notice was received.
Complainant has provided evidence of rights in the trademark PLEX, including by registration at the USPTO and use in commerce. See Factual Background, supra. Respondent has not challenged Complainant’s assertion of rights. The Panel determines that Complainant has established rights in the trademark PLEX.
The disputed domain name <cineplex.io> directly incorporates Complainant’s PLEX trademark, preceded by the term “cine”. As Complainant has acknowledged in its Complaint, the term “cineplex” is used in the English language to refer to a movie theater complex where more than one film is shown.1 It is customary practice under the UDRP that incorporation of a trademark directly in a disputed domain name is sufficient to give rise to a finding of confusing similarity, even if surrounded by other terms.2 The first element test of confusing similarity is a limited one directed towards establishing standing, with more searching analysis of potential respondent defenses considered under the second and third elements. Nonetheless, consideration of factors other than direct incorporation is not foreclosed. In the present case, while an Internet user might not immediately associate “cineplex” with PLEX because of the visual difference, and because “cineplex” has its own distinct meaning, the website content affirms the confusing similarity because Respondent’s website makes substantial use of Complainant’s PLEX trademark in a manner directly associated with Complainant and it services. Respondent’s extensive use of Complainant’s trademark term PLEX on its website, putting aside issues of legitimate interest and bad faith, encourage an association between the disputed domain name and Complainant’s trademark, and for that reason the Panel finds the disputed domain name to be confusingly similar to Complainant’s trademark.
The Panel determines that Complainant has rights in the trademark PLEX and that the disputed domain name is confusingly similar to that trademark.
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has used the disputed domain name to direct Internet users to a website where Respondent directs those users to register on Complainant’s platform, while at the same time requesting permission to make use of those Internet user login credentials to access the users’ PLEX accounts.
Respondent’s suggestion that it is merely providing a guide for Internet users does not adequately explain why this would require it to be able to login to the Internet users PLEX account. Respondent’s reference to its movie club does not explain why Respondent would require access to third party PLEX accounts. The Panel is unable to find within Respondent’s explanations a basis for rights or legitimate interests in the disputed domain name on the part of Respondent.
The Panel determines that Respondent has failed to rebut Complainant’s prima facie showing of lack of rights or legitimate interests in the disputed domain name.
Paragraph 4(b) of the.IO Policy states that evidence of bad faith registration includes that “(iv) by [respondent] using the domain name, [it has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.3
Respondent has used Complainant’s PLEX trademark in the disputed domain name and prominently on its website to attract Internet users for what the Panel assumes to be some commercial purpose. The extensive references to PLEX on Respondent’s website convey some type of association with Complainant and its trademark, which an Internet user would fairly assume was authorized by Complainant. That is, an Internet user being asked by Respondent to make use of its PLEX login credentials would fairly assume that Complainant had authorized that form of access. But that access has not been authorized by Complainant. Respondent is taking advantage of Complainant’s trademark rights without its consent for commercial gain in a way that is likely to confuse consumers. This represents bad faith within the meeting of the .IO Policy.
The Panel determines that Respondent registered and is using the disputed domain name in bad faith.
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 <cineplex.io> be transferred to Complainant.
Frederick M. Abbott
Date: October 14, 2020
1 According to the Merriam-Webster online dictionary, “cineplex” is “used for a movie theater containing several auditoriums in one building”, at “https://www.merriam-webster.com/dictionary/Cineplex”.
2 According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, third edition (“WIPO Jurisprudential Overview 3.0”), para. 1.7, “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
3 Though not material to this proceeding, the .IO Policy differs in from the UDRP in so far as the requirements of bad faith registration “or” use are stated in the disjunctive.
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