WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Academy of Motion Picture Arts and Sciences v. domain leasing
Case No. D2003-0706
1. The Parties
The Complainant is Academy of Motion Picture Arts and Sciences, Beverly Hills, California, United States of America, represented by Quinn Emanuel Urquhart Oliver & Hedges, LLP, United States of America.
The Respondent is domain leasing, Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C.
3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") on September 6, 2003.
On September 9, 2003, the Center transmitted by email to OnlineNic, Inc. d/b/a China-C a request for registrar verification in connection with the domain name at issue.
The same day, OnlineNic, Inc. d/b/a China-C 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. OnlineNic, Inc. d/b/a China-C also mentioned that they did not receive a copy of the complaint and that the Respondent has not submitted in the Registration agreement for to the jurisdiction of the principal office of the Registrar for adjudication of disputes concerning or arising from the use of the domain name.
In response to a notification of September 18, 2003, by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on September 19, 2003.
The Center verified that the amended 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 the proceedings commenced on September 23, 2003.
In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on October 15, 2003.
The Center appointed Theda König Horowicz as the Sole Panelist in this matter on October 23, 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 is the Academy of Motion Picture Arts and Sciences in California, United States.
The Academy was founded in 1927, and is known for being active in the motion picture industry, notably for organizing the annual ACADEMY AWARDS ceremony (the "OSCARS ceremony") where it confers an "Award of Merit" known worldwide to the public as an "Oscar." The ceremony is internationally broadcasted on televison.
According to the official website of the Complainant "," the name "Oscar" has been used by the Academy since 1939.
The Complainant is the owner of U.S. OSCAR trademark registrations for various goods and services relating to the entertainment industry. The first U.S. OSCAR trademark was registered in 1978.
The domain name was registered on April 24, 2002, by domain leasing and linked to a web page offering the possibility to download a program. The users were then automatically drawn - either by clicking "Yes," "No" or by trying to close the window - to pornographic websites which do not contain any reference to the names "oscar" or "oscar tv."
The Complainant sent cease and desist letters to the Respondent on May 29, 2002, and January 9, 2003.
The Respondent renewed the domain name after the sending of the cease and desist letters by the Complainant and added the name "Oscar Tv Erotic Center" in all contact details for the said name.
5. Parties� Contentions
A. Complainant
The Complainant says that the domain name is identical or confusingly similar to the U.S. OSCAR trademarks in which it has rights, the addition of the noun "tv" and the extension ".com" not being sufficient to avoid a finding of confusing similarity.
The Complainant further states that the Respondent has no rights or legitimate interests in the domain name as:
- he does not have the permission to use the Complainant�s mark;
- he is attracting the users to adult sex websites and thus he is tarnishing the Complainant�s mark;
- the website does not have anything to do with "Oscar";
- he is not known by the domain name.
Furthermore, the Complainant alleges that the Respondent has registered and is using the domain name in bad faith as he chose a domain name incorporating the Complainant�s famous mark to draw Internet users to a pornographic website for commercial gain.
B. Respondent
The Respondent did not reply to the Complainant�s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs the Complainant to prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly similar
The Respondent�s domain name includes in its entirety the Complainant�s U.S. registered OSCAR trademarks which are famous worldwide. The Respondent�s domain name is thus confusingly similar to the Complainant�s trademarks. The addition of the term "tv" does not alter this conclusion, as the trademark OSCAR is clearly dominant in the disputed domain name. See Nokia Corporation v. N a.k.a. IBCC, WIPO Case No. D2000-0102; Viacom International Inc. v. Abraham Godong, WIPO Case No. D2001-0603.
The Complaint therefore meets the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or legitimate interests
The Complainant has described why the Respondent would not have rights or legitimate interests in respect of the domain name at issue. The Respondent has not taken the opportunity given to him under these proceedings to explain his reasons for registering . The Panel finds that the arguments invoked by the Complainant to deny the Respondent any rights or legitimate interests in respect of the domain name are sufficient.
Accordingly, the Complainant succeeds in establishing the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant has enumerated various reasons why the Respondent would have registered and used the domain name at issue in bad faith.
The Panel considers that the trademark OSCAR of the Complainant is known worldwide in relation to the entertainment industry as it is used by the Academy for the famous "OSCARS ceremony" which is internationally broadcast on television. Due to the use of the term "tv" in the domain name at issue, the Internet user may think that is linked to a website affiliated with the Complainant and the Internet user may thus visit the website for this reason. As alleged by the Complainant, it is therefore credible that the Respondent has chosen to register and to use the domain name with the bad faith intention of attracting Internet users to the numerous commercial pornographic websites to which the domain name was connected. See National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a , WIPO Case No. D2000-0118; Benetton Group SpA v. Domain for sale, WIPO Case No. D2001-1498.
The bad faith of the Respondent, domain leasing, is also illustrated by the fact that it added the name "Oscar Tv Erotic Center" in the contact details for the domain name after having received cease and desist letters from the Complainant, so as to try to justify the use of the trademark OSCAR in his domain name. The Panel notes that "Oscar Tv Erotic Center" is listed in the contact details at the same P.O. box address in Nassau, Bahamas as the Respondent. Nothing therefore proves that this Center exists.
The fact that the Respondent did not answer the cease and desist letters of the Complainant combined with his failure to file a response within the context of these proceedings also favor a finding of bad faith.
For these reasons, the Panel finds that the Complaint meets the requirements of paragraph 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be cancelled.
Theda König Horowicz
Sole Panelist
Dated: November 6, 2003
Full & Egal Universal Law Academy