The Complainant is Tubi, Inc. c/o Fox Corporation, United States of America (“United States”), represented by Winterfeldt IP Group PLLC, United States.
The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Djaja Budi Kurniawan, Egghead Software, Indonesia.
The disputed domain name <tubitv.me> is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2021. On June 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 17, 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 the Complainant on June 19, 2021 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 June 22, 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 the Respondent of the Complaint, and the proceedings commenced on June 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 21, 2021.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on July 30, 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.
The Complainant is a wholly-owned subsidiary of Fox Corporation, founded in April 2014 and provider of ad-supported video on demand (“AVOD”) service to over 33 million monthly active users in the United States, Canada, Mexico, Australia and New Zealand, under the TUBI and TUBI TV trademarks.
The Complainant is the owner of the domain names <tubitv.com>, registered on February 25, 2014, <tubi.me>, registered on October 13, 2017 and <tubi.tv>, registered on November 8, 2011, amongst others (Annex 6 to the Complaint), as well as of the following, amongst others, trademark registrations (Annex 5 to the Complaint):
- United States Trademark Registration No. 4763028 for the mark TUBI TV, filed on April 25, 2014, registered on June 30, 2015, in class 38, claiming first use in commerce on April 4, 2014;
- United States Trademark Registration No. 5414516 for the mark TUBI, filed on May 3, 2017, registered on September 5, 2017, in class 38, claiming first use in commerce on July 13, 2017; and
- European Union Trademark Registration No. 18020920 for the word mark TUBI, registered on June 25, 2019 in international classes 9, 38, 41 and 42.
The disputed domain name <tubitv.me> was registered on June 5, 2020, and presently resolves to an active website providing subscription services for streaming movies and TV shows.
The Complainant asserts to be the world’s largest AVOD service with over 20,000 movies and television shows from nearly every major Hollywood studio, allowing millions of viewers an easy way to discover new content, available completely free under the TUBI TV and TUBI trademarks used in the United States since at least as early as 2014 and 2017 respectively, presently counting with over 33 million monthly active users in the United States, Canada, Mexico, Australia and New Zealand.
According to the Complainant the disputed domain name is being used in connection with a video streaming scam, in direct competition with the Complainant’s AVOD content provided under the TUBI and TUBI TV trademarks, based on purported access to streaming content. In spite of allegedly free services, when users click on the “Subscribe to Watch” option on the website available at the disputed domain name, they are redirected to a web page located at the subdomain <signup.slashstar.net> containing a web form to purportedly create an account by entering an email address and password, among other personal details, as well as a credit card number – purportedly users are not charged but the terms and conditions suggest the possibility of paid access plans, hidden “administrative fees” and other means by which users pay for certain access to the purported streaming content (Annex 8 to the Complaint).
Under the Complainant’s view, the disputed domain name is identical to its TUBI TV trademark, not taking into account the country code Top-Level Domain (“ccTLD”) “.me”.
Moreover, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) the Respondent has never been authorized by the Complainant to use the TUBI and TUBI TV trademarks in any manner;
(ii) the Respondent registered the disputed domain name well after the Complainant registered and used the TUBI TV trademark, having the Respondent wilfully adopted the Complainant’s trademark within the disputed domain name in an attempt to unfairly capitalize on the valuable goodwill the Complainant has built in its TUBI and TUBI TV trademarks;
(iii) the disputed domain name does not reflect the Respondent’s common name or tradename; and
(iv) the disputed domain name resolves to a website purportedly providing content that attempts to compete directly with the content provided by the Complainant under its TUBI and TUBI TV trademarks; collecting credit card information, and other personal and financial information, in order to ostensibly obtain access to the unauthorized and ostensibly illegal online streaming video-on-demand content, thus monetizing the disputed domain name by trading on the goodwill associated with the TUBI and TUBI TV trademarks, what does not characterize a bona fide offering of goods or services, nor a legitimate non-commercial or fair use of the disputed domain name.
Lastly, the Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith with actual knowledge of Complainant’s rights in the TUBI and TUBI TV trademarks, having registered the disputed domain name long after the Complainant had used and registered the TUBI and TUBI TV trademarks and domain names, monetizing the disputed domain name through a fraudulent content sharing site, and using the disputed domain name in connection with a website that purports to provide content and services in direct competition to those provided by the Complainant under its TUBI and TUBI TV trademarks, which constitutes no bona fide offering of goods or services nor any fair or legitimate non-commercial use of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainants:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain name.
In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
The Complainant has established its rights in the registered TUBI TV trademark.
The Panel finds that the disputed domain name reproduces the Complainant’s trademark entirely. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7).
The first element of the Policy has therefore been established.
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate a respondent’s rights to or legitimate interests in a disputed domain name. These circumstances are:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that the Respondent has never been authorized by the Complainant to use the TUBI and TUBI TV trademarks in any manner.
Also, the lack of evidence as to whether the Respondent is commonly known by the disputed domain name or the absence of any trademarks registered by the Respondent corresponding to the disputed domain name, corroborates the absence of any rights or legitimate interests in the disputed domain name.
Furthermore, the use made of the disputed domain name in connection with a website that allegedly offers free services, but subjects users to creating an account by entering an email address and password, among other personal details, as well as a credit card number subject to paid access plans, hidden “administrative fees” and other means by which users pay for certain access to the purported streaming content (Annex 8 to the Complaint) cannot characterize a bona fide offering of goods or services under the Policy.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
The second element of the Policy has therefore been established.
The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainants who are the owner of a trademark relating to the disputed domain name or to a competitor of the Complainants, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other location, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The registration and use of the disputed domain name in bad faith can be found in the present case in view of the fact that the Respondent in addition to using the disputed domain name in direct competition with the Complainant’s services, has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name.
For the reasons stated above, the Panel finds that the disputed domain name was registered and is being used in bad faith.
The third element of the Policy has therefore been established.
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 <tubitv.me> be transferred to the Complainant.
Wilson Pinheiro Jabur
Sole Panelist
Date: August 13, 2021