WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dreamworks L.L.C. v. Carol Maleti
Case No. D2003-0548
1. The Parties
The Complainant, Dreamworks L.L.C., is a Delaware corporation with principal offices in Universal City, California, United States of America, represented by Seyfarth Shaw of Los Angeles, California, United States of America.
The Respondent is Carol Maleti, of Santa Cruz, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name, , is registered with Melbourne IT trading as Internet Name Worldwide of Melbourne, Victoria, Australia.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 11, 2003. On July 14, 2003, the Center transmitted by email to Melbourne IT trading as Internet Name Worldwide a request for registrar verification in connection with the disputed domain name. On July 21, 2003, Melbourne IT trading as Internet Name Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and this proceeding began on July 24, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2003. The Response was filed with the Center on August 11, 2003.
The Complainant on August 15, 2003, requested permission to submit a supplemental filing but, per paragraph 12 of the Rules, the Panel did not find it needed supplementary filings from the parties in this proceeding.
The Center appointed Dennis A. Foster as the Sole Panelist in this dispute on August 26, 2003. 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
The Complainant, DreamWorks, L.L.C., is an enterprise widely known for its cinematic creations. The Respondent previously owned two other domain names, and , that are similar to the disputed domain name, . In an agreement dated January 28, 2002, the Respondent agreed to transfer the domain names, and , to the Complainant in exchange for US$250 and some promotional material. Also in this agreement, the Respondent promised never again to use the DREAMSWORKS trademark.
The Respondent registered the disputed domain name, , on May 31, 2002.
5. Parties� Contentions
A. Complainant
--The Complainant Dream Works, L.L.C. was formed in 1994.
--The Complainant owns numerous registrations of its DREAMWORKS trademark and service mark in the United States, the Respondent�s home country.
--The DREAMWORKS trademark has been prominently displayed in connection with film, theater, videocassette and DVD distribution worldwide.
--The Respondent previously registered other domain names containing the Complainant�s trademark, namely and , but agreed to assign these domain names to the Complainant in exchange for a payment and some marketing materials relating to DreamWorks.
--The disputed domain name does not resolve to an operating website, but is instead "parked" at .
--The disputed domain name uses a hyphen to split the Complainant�s DREAMWORKS mark into two words, followed by the acronym "LLC" and the top level domain indicator ".com." These elements do not render the disputed domain name dissimilar to the Complainant�s mark.
--The disputed domain name looks like, sounds like, and would be understood to be the Complainant�s trademark DREAMWORKS. The disputed domain name is thus sufficiently similar to the Complainant�s registered mark to satisfy the requirements of paragraph 4(a)(i) of the Policy.
--Not only has the Complainant never licensed or authorized the Respondent to use the disputed domain name, but the Respondent also has disavowed in writing any rights to the disputed domain name (Complaint Exhibit 7).
--Bad faith registration is shown by the registration of the disputed domain name in contravention of an undisputed agreement between the parties.
--Respondent�s parking of a famous domain name shows bad faith.
--The Respondent and its predecessor in interest have engaged in a pattern of abusive registrations in bad faith per paragraph 4(b)(ii) of the Policy.
--The evidence as a whole establishes that the Respondent has registered or acquired the domain name in bad faith primarily for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant for valuable consideration in excess of the Respondent�s documented out-of-pocket costs per paragraph 4(b)(i) of the Policy.
B. Respondent
--The disputed domain name, , is not the same as the Complainant�s DREAMWORKS trademark. If one uses a 5 point system:
1) dream
2) (dash)
3) works
4) (dash)
5) llc
One can see that only 40% of the domain name is being used.
--Works/dream are two common words in the English language.
--The disputed domain name is intended for a real estate venture.
6. Discussion and Findings
In order for the Complainant to prevail and have the disputed domain name, , transferred to it, the Complainant must prove the following per paragraph 4(a)(i-iii) of the Policy:
--the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
--the Respondent has no rights or legitimate interests in respect of the domain name; and
--the domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has exhibited a number of exemplary copies of its DREAMWORKS United States Federal trademark registrations. They include no. 2,326,951 dated March 7, 2000, in international class 28 for action toys, and no. 2,457,467 dated June 5, 2001, in international classes 9 and 41 for videotapes (Complaint Exhibit 3).
The disputed domain name, , is different only in that it contains two dashes and llc, which means limited liability company. It is now axiomatic under the Policy that the top level domain indicators such as ".com" do not count when analyzing for identity or confusing similarity. Similarly, it is also now widely recognized that punctuation additions, such as the two dashes in this case, make little difference in similarity and identity analysis. (See InfoS, Inc. v. Tenebaum Ofer, WIPO Case No. D2000-0075, April 27, 2000, where the panel found "The addition of a hyphen is not a distinguishing feature.." and the domain name was found identical to the trademark INFOSPACE). Furthermore, the Panel does not find that adding "llc" to the Complainant�s famous trademark saves the resulting domain name from being confusingly similar because the Complainant�s establishment is in fact a limited liability company.
The Panel therefore finds that the disputed domain name, , is confusingly similar to the Complainant�s DREAMWORKS trademark, and that the Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant states that it never licensed or authorized the Respondent to use its DREAMWORKS trademark. The Complainant also points out that, in an agreement with the Complainant dated January 28, 2002, and signed by the Respondent on February 14, 2002, the Respondent specifically agreed that it would not adopt the DREAMWORKS trademark in any future endeavor (Complaint Exhibit 7).
For its part, the Respondent has made no attempt to show what reasons it has for registering the disputed domain name. In particular, the Respondent has made no attempt to show any legitimate rights or interests in the disputed domain name per paragraph 4(c)(i-iii) of the Policy. The Respondent has only made a vague and, under the circumstances, incredible assertion that the disputed domain name is to be used in a real estate venture.
The Panel thus finds that the Complainant has proved that the Respondent has no legitimate rights or interests in the disputed domain name per paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant contends the Respondent registered and is using the disputed domain name in bad faith because it has "parked" the disputed domain name, i.e., has not used it, for an inordinately long period of time. The Complainant notably cites Telstra (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, February 18, 2000) in support of this contention, and the Panel agrees this is a broadly recognized Policy tenet. However, the Panel notes that the disputed domain name was registered on May 31, 2003, i.e., only a month or so before the Complainant initiated this proceeding. The Panel does not believe this is a sufficient period of non-use to warrant a finding of bad faith registration and use.
The Complainant also contends that the Respondent registered and is using the disputed domain name in bad faith because it specifically violated the parties� January 28, 2002 agreement (Complaint Exhibit 7) in which the Respondent promised never again to use the Complainant�s DREAMWORKS trademark. Even though this is not one of the non-exhaustive enumerated bad faith grounds under the Policy at paragraph 4(b)(i-iv), paragraph 15(a) of the Rules gives the Panel the discretion to find additional grounds for bad faith registration and use. The Panel believes the Respondent�s conduct in this instance warrants a bad faith finding. (See Herbalife International of America, Inc. v. , WIPO Case No. D2002-0101, April 13, 2002, where an agreement between the parties prohibiting one party from registering a trademark as a domain name led to a finding of bad faith).
The parties agree that the Complainant paid the Respondent US$250 and gave it some promotional materials in early 2002, in exchange for the Respondent transferring the and domain names to the Complainant and for the Respondent�s promise never again to use the Complainant�s DREAMWORKS trademark. Based on this precedent, the Complainant contends it is obvious the Respondent registered and is using the disputed domain name in bad faith in violation of paragraph 4(b)(iv) of the Policy. The Panel finds the Complainant�s contention most convincing and that the Respondent did indeed register the disputed domain name hoping to reap inordinate monetary benefit in violation of paragraph 4(b)(iv) of the Policy.
7. Decision
For all the above 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, DreamWorks, L.L.C.
Dennis A. Foster
Sole Panelist
Dated: September 10, 2003
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