WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Columbia Pictures Industries, Inc. v. Caribbean Online International Ltd.
Case No. D2008-0090
1. The Parties
The Complainant is Columbia Pictures Industries, Inc., Culver City, California, United States of America, represented by Bryan Cave, LLP, United States of America.
The Respondent is Caribbean Online International Ltd., Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name is registered with BelgiumDomains, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2008. On January 24, 2008, the Center transmitted by email to BelgiumDomains, LLC a request for registrar verification in connection with the domain name(s) at issue. On January 24, 2008, BelgiumDomains, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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 Respondent of the Complaint, and the proceedings commenced on January 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 17, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 18, 2008.
The Center appointed Luiz E. Montaury Pimenta as the sole panelist in this matter on February 25, 2008. 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
Complainant is an indirect subsidiary of Sony Pictures Entertainment, Inc. (“SPE”). SPE’s global operations encompass motion picture production and distribution; television products and distribution; digital content creation and distribution; worldwide channel investments; home entertainment acquisition and distribution; operation of studio facilities; development of new entertainment products, services and technologies; and distribution of filmed entertainment throughout the world.
Complainant and its predecessors in interest, and associated entities have been engaged in the development and provision of various entertainment products and services under the COLUMBIA PICTURES trademark since the early 1920s.
The Complainant is the registered proprietor of the following U.S. trademarks:
Registration No.
Mark
Class of Goods
Registration Dte
US 344,799
COLUMBIA & device
9
April 6, 19371
US 976,848
COLUMBIA PICTURES
9
January 15, 19742
US 831,471
COLUMBIA PICTURES & device
16
July 4, 19873
US 1,975,999
COLUMBIA & device
9
May 28, 19964
Complainant also asserts common law trademark rights in the COLUMBIA and COLUMBIA PICTURES marks by virtue of the well-known status of those marks. By virtue of its registered and common law rights in those trademarks and the extensive and lengthy use of them, Complainant asserts that they have acquired secondary meaning and consumer association identifying Complainant’s quality goods and services.
Complainant illustrates current use of the COLUMBIA PICTURES trademark in relation to production and/or distribution of successful motion pictures such as “The Da Vinci Code”, “Spider-Man 2”, “Gandhi”, “Tootsie”, “The Karate Kid”, “A few good Men”, “Ali”, “Men in Black” and “Casino Royale”.
In the absence of a Response, nothing is known about Respondent except that it is the registrant of the domain name in issue.
5. Parties’ Contentions
A. Complainant
Identical or Confusingly Similar
Complainant contends that the disputed domain name is virtually identical and confusingly similar to Complainant’s trademarks. The only differences between the disputed domain name and Complainant’s COLUMBIA PICTURES trademarks is that the domain name omits the “e” at its very end and contains the generic top-level domain “.com”. Complainant contends that the addition of the term “.com” is irrelevant as it is functional to domain names and that the omission of the letter “e” at the end of the domain does not significantly change the sight, sound or commercial impression conveyed by the domain name and thus also lacks legal significance. Complainant also asserts that Respondent’s use of a confusingly similar domain name seeks to exploit a common typing mistake of Internet users.
Rights or Legitimate Interests
Firstly, Complainant asserts that Respondent has no legitimate rights or legitimate interest whatsoever in the disputed domain name. Complainant also contends that Respondent intentionally and wrongfully chose to register a domain name virtually identical to the COLUMBIA PICTURES trade name solely to trade on Complainant’s notoriety and goodwill in that mark. Second, Complainant contends that in registering the domain name in issue Respondent intended and knew that its actions would deceive, mislead and divert a large number of consumers seeking Complainant’s goods and services. For example, consumers commonly expect to locate a company on the Internet by typing in its trade name or trademark into the address line of the browser. Cases both under the Policy (E. & J. Gallo Winery v. Hanna Law Firm,WIPO Case No. D2000-0615 and Sears, Roebuck and Co. v. Hanna Law Office,WIPO Case No. D2000-0669) are cited.
Third, Complainant contends that has not licensed or otherwise authorized Respondent to use the COLUMBIA PICTURES trademark in any way or manner. Fourth, Complainant asserts that Respondent has not and cannot demonstrate any use of the domain name in issue in connection with a bona fide offering of goods or services. In that respect, Complainant points to the website to which the domain name in issue resolves which misdirects consumers to other websites which offer goods and services which compete directly with Complainant’s goods and services.
Fifth, the Complainant says that Respondent cannot show that it has been commonly known by the domain name in issue. Further, Respondent has not sought or procured any registrations for any trade names, corporations, or trademarks for “Colombia Pictures” or the domain name itself with any Secretary of State or with the U.S. Patent and Trademark Office. Sixth, Respondent is not making legitimate non-commercial use of the domain name in dispute. To the contrary, Respondent’s registration and use of that domain name is a deliberate action by Respondent to (i) illegally trade upon Complainant’s goodwill to confuse, mislead, deceive and divert consumers; (ii) misdirect Complainant’s customers to the websites that offer directly competing goods and services; and (iii) intentionally tarnish and dilute Complainant’s marks.
Registered and Used in Bad Faith
Firstly, Complainant asserts that by its use of the domain name in issue, Respondent is intentionally diverting, for commercial gain, Internet users to one or more competing websites (some of which are third party “sponsors” and many of which presumably compensate Respondent for driving Internet traffic to their sites) in an effort to confuse and mislead consumers. Respondent’s mere act of typo-squatting presents ample evidence of bad faith.
Second, Complainant contends that Respondent’s conduct is designed to disrupt and harm Complainant’s business. Respondent utilizes an infringing and virtually identical domain name to divert potential users away from Complainant and its authentic goods and services.
Third, Respondent’s total lack of any legitimate trademark or other intellectual property right to support the domain name in dispute demonstrates bad faith in registering and using that domain name.
Fourth, because the COLUMBIA PICTURES trademark is so famous and well-known, Respondent must clearly have known from the outset that it could have no right to create or use a domain name incorporating that trademark.
These factors, Complainant says, point to circumstances falling within paragraphs 4(b)(iii), and (iv) of the Policy and are conclusive of Respondent’s registration and use of the domain name in issue in bad faith.
Finally, Complainant asserts that Respondent has been brought before WIPO and NAF arbitration forums on at least 16 prior occasions, in which it was found to have registered and used a domain name of a third party in bad faith in violation of the Policy.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith, Policy, paragraph 4(a).
A. Identical or Confusingly Similar
The Panel finds that is confusingly similar to the COLUMBIA PICTURES marks. The domain name differs from Complainant’s registered COLUMBIA PICTURES marks only in that it lacks the letter “e” at its very end, which is not enough to characterize it as distinct from Complainant’s trademarks.
The Panel finds that adding or removing letters to a domain name is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of Complainant.
The Panel finds that Complainant has established the first element of the Policy.
B. Rights or Legitimate Interests
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the domain name.
With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and has not used the domain name, or a name corresponding to it, in connection with a bona fide offering of goods or services. At the time the UDRP complaint was filed the domain name provided links to websites that were in direct competition with Complainant.
Moreover, the domain name as of the date of this decision still resolves to a page that displays links to Complainant’s competitors. This is not a bona fide use. TM Acquisition Corp. v. Sign Guards, NAF Case FA132439 (December 31, 2002) (finding that the respondent’s use of complainant’s marks to divert Internet users to a web site which displayed a series of links, some of which were links to sites of complainant’s competitors, was not a bona fide offering of goods or services).
A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. Morgan Freeman v. Mighty LLC,WIPO Case No. D2005-0263; Croatia Airlines d.d. v. Modern Empire Internet Ltd,WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
The Panel finds that Complainant has established the second element of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(b), a respondent has used and registered a domain name in bad faith if, inter alia, respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent’s website or other online location by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation or endorsement of respondent’s site or of a product or service offered on respondent’s site. Policy paragraph 4(b)(iv).
The Panel finds that Respondent registered the domain name in bad faith.
Complainant’s allegations of bad faith are not contested. The trademark registrations of record confirm Complainant’s allegations that it had long been using its COLUMBIA PICTURES marks when the domain name that is the subject of this Complaint was registered. The Panel finds persuasive Complainant’s allegation that the Respondent must have been aware of the Complainant’s rights in the mark and, further, that Respondent knowingly infringed the Complainant’s trademark when it registered the subject domain name.
Under the Policy, it is evidence of bad faith that, “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your web site or location.”, Policy paragraph 4(b)(iv). Respondent used Complainant’s known trademark in entertainment industry to attract users to Respondents’ website where there are offered links to Complainant’s competitors. This is evidence of the intention by Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondents’ website or of a product or service on Respondents’ website.
At the time the Complaint was filed and at the time of this Decision, the domain name resolves to a page that offers visitors links to sites of other companies, including Complainant’s competitors. Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan, WIPO Case No. D2004-0537 (“the Panel is persuaded that Respondent’s registration and use of the disputed domain name for re-directing Internet users, particularly customers and potential customers of Complainants, from Complainants’ website to the website of OfficeMax, a company which directly competes with Complainants, constitutes bad faith and use. Prior WIPO UDRP decisions also support this conclusion.”) See also E, Inc. v. Ult. Search, Inc.,WIPO Case No. D2001-1319 (“registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy.”).
Accordingly the Panel finds that Complainant has made out bad faith registration and use of the domain name by Respondent.
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 transferred to Complainant.
Luiz E. Montaury Pimenta
Sole Panelist
Dated: March 10, 2008.
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