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Guess who owns Netflix.news and Netflix.website – clue: definitely not Netflix

Attempt to snatch domains ends in weird twist

Netflix has failed in its attempt to shut down two namesake domain names, in the most peculiar circumstances.

The video streaming giant paid $750 to take two domains – Netflix.news and Netflix.website – through the Uniform Rapid Suspension System (URS). If successful, the domains would have been suspended for the duration of their registration period.

But the entertainment goliath lost both cases because neither owner had made use of the domains to host a website. You can't suspend something that doesn't exist.

That leaves the current owners in the peculiar situation where they are allowed to keep their domain – so long as they don't use it.

Both of the separate decisions were made by the same panelist – David J. Steele. In his decision, Steele notes that neither case met the "bad faith" factor that is necessary to find against the domain. To find "bad faith," a domain must have been "registered and is being used in bad faith." Steele noted the "is being used" element was not true in either case.

Steele also made an interesting distinction in both cases – that the domain ending itself was relevant to the decision.

"Historically, the top-level domain name (TLD), for example ".com" or ".net," has been viewed as irrelevant to the confusingly similar analysis ... However, for the same reasons that prior decisions ignored the TLD string, the addition of new TLDs to the domain name space now require consideration of the TLD string's significance.

"These new TLDs contain descriptive, generic, and even geographical terms, which may affect the analysis of whether the domain name is identical or confusingly similar to a complainant's mark."

Nay, neigh, nay

In other words, if Netflix tried to suspend the domain "netflix.horse," it would have a far weaker case than if it tried to do the same thing for "netflix.video" (in fact, Netflix did use the URS for Netflix.video and won).

Despite noting that, Steele agreed that the ending ".website" was close to Netflix's trademarks since it is an online service, so found that it did infringe on its marks.

However, when it came to Netflix.news, Steele appeared persuaded by the owner's claims that he plans to use the domain as a fan site.

"I registered this domain with the intention of creating a fan site, with news and updates on the Complainant's service. I have all intention of proceeding while respecting the Complainant's marks, and will not confuse the public as to my site's ownership," said the unnamed Canadian representing Masterclass Media.

Who am I to judge? says the arbitrator. If the owner says he's going to use the domain as a non-commercial fan site then it's not up to him as the panelist to decide whether that's true, even if, as he notes, "the respondent has failed to put into the record any facts which support his claim."

This fair-mindedness also extends to the owner of Netflix.website, who somewhat bizarrely claimed not to own the domain any longer, even though the Whois records for the domain clearly show that he does.

"This fact could suggest that Respondent was obfuscating his control over and use of the domain name – but such a conclusion would be speculative, and would not provide clear and convincing evidence that Respondent's passive holding of the domain name establishes that the domain name is being used in bad faith," wrote Steele.

Further adding to the unusual nature of the decisions, Steele then quotes his own decision over Netflix.website – made just three days earlier – as precedent in the Netflix.news case. His decision the previous week meant that "the passive holding of a domain name could support, by clear and convincing evidence, that a domain name is being used in bad faith."

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