WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Academy of Motion Picture Arts and Sciences v. 007 Promotions Case No. D2009-1523 1. The Parties
The Complainant is Academy of Motion Picture Arts and Sciences of Beverly Hills, California, United States of America, represented by Quinn Emanuel Urquhart Oliver & Hedges, LLP, United States of America.
The Respondent is 007 Promotions of Goa, India. 2. The Domain Names and Registrars
The disputed domain names , , , and are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2009. On November 11, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain names. On November 15, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response confirming that the 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” 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”).
On November 16, 2009, the Center received pre-commencement communications from the Respondent forwarding a Response to the Complaint. The Center acknowledged receipt, advising that the Center was still in the process of carrying out an administrative compliance verification on the Complaint to ensure that the filed Complaint met the requirements as set out in the Rules and the Supplemental Rules, after which, upon notification of commencement of proceedings, the Respondent would be given 20 days within which to file a Response.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 19, 2009. The Center verified that the Complaint together with the amendment to the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 10, 2009. The Respondent did not however submit any further response.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on December 16, 2009. 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 Pictures Arts and Sciences, a non-profit corporation founded in 1927. The Complainant has held an annual ceremony since 1929, named the “Academy Awards”, during which it confers an “Award of Merit”, known to the public as an “Oscar” in over twenty different categories of achievement. The ceremony is televised in over 200 countries including India. The 81st ceremony was held in 2009 and the 100th will be held 19 years from now.
The Complainant has registered the word “Oscar” as a trademark in certain jurisdictions, including the United States of America (where the earliest trademark cited by the Complainant, registration no. 1,096,990, was registered on July 18, 1978) and India (where the trademark cited by the Complainant, registration no. 386312, was registered on February 11, 1982). The Complainant has also registered the word “Oscars” as a trademark in the United States (where the trademark concerned, registration no. 1,528,890, was registered on March 7, 1989).
The Complainant has had long involvement in the motion picture industry and has conducted extensive advertising and generated media and public interest in its annual ceremony in the United States and other countries including India. The winner of the “Best Picture” award at the 81st ceremony was an Indian film: “Slumdog Millionaire”.
The Respondent registered the domain name which is not the subject of the present Complaint, on March 3, 2009. On March 26, 2009 the Complainant received an unsolicited email from the Respondent stating, in part, “When the OSCARS reaches the ‘magic 100' WHO will be the Centennial Best Actor? ... And the winner is ... www.O. FOR SALE. $US 25 Million”. The Respondent also offered for sale in a public online auction for the same sum.
The Complainant raised an in rem civil action against before the US District Court for the Eastern District of Virginia on April 29, 2009 and secured a default judgment ordering the transfer of the domain name to the Complainant on September 29, 2009.1
The Respondent registered the disputed domain names on the following dates:
- May 13, 2009
- May 21, 2009
- May 21, 2009
- July 13, 2009
- July 16, 2009
The Respondent offered the following disputed domain names for sale to the Complainant (and in some cases to other entities) in emails sent on the following dates:
- May 13, 2009
, , and - June 27, 2009
- July 1, 2009
and - July 13, 2009
- July 16, 2009
On July 20, 2009 the Respondent sent an email to the Complainant's representatives discussing the Respondent's view of the merits of the in rem civil action. This email invited the Complainant to “consider the Proposal to acquire the following Sites” and listed the disputed domain names along with the domain name . The Respondent's email contained the statement “Should you wish to take advantage of our generous Business Proposition, kindly provide us with your Offer for a Full & Final, out of Court Settlement for the entire collection of our ‘Oscar' Domain Names”. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain names are confusingly similar to trademarks in which it owns rights; that the Respondent has no right or legitimate interest in the disputed domain names; and that the disputed domain names were registered and are used in bad faith. B. Respondent
The Respondent asserts that it will be appealing the default judgment of the US District Court regarding and requests that the Panel bear this in mind when considering the present dispute. The Respondent is extremely critical of the Complainant's representatives' approach to pre-litigation correspondence and of their actings both in the litigation itself and in filing the present Complaint. The Respondent asserts that the Complainant's representatives have wrongfully accused the Respondent of “Extortion, Demands and Threat”.
The Respondent contends that it is developing “fair commercial enterprise and entrepreneurial opportunities within the Internet” along the same lines as numerous websites which use the name “oscar” and/or the digits “100” in many ways that “bear no likeness in the line of business” to the Complainant. The Respondent asserts that the combinations of words in the disputed domain names are “ingenious and innovative” and are “genuinely brought together in a totally innocent capacity”. It submits that the Complainant's attempts to seek transfer of the disputed domain names “would be tantamount to unfair commercial development”.
The Respondent asserts that Reverse Domain Name Hijacking is “prevalent in the Internet industry when Lawyers become engaged in utilising any legal remedy to overpower the Domain name holder”. The Respondent states that “smears brought by the Plaintiff Lawyers” are an attempt to “avoid being seen using Reverse Domain Hijacking”. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in Paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant asserts that each of the disputed domain names are confusingly similar to its OSCAR and OSCARS registered trademarks. For the purposes of comparison, the Panel will disregard the top level domain of each of the disputed domain names, as is customary in decisions under the Policy, on the grounds that a top level domain is not a distinguishing feature and is insufficient to dispute identity or confusing similarity. Having done this, it is immediately apparent that the disputed domain name is identical to the Complainant's OSCARS trademark, and the Panel so finds.
The disputed domain names , ,and reproduce the Complainant's OSCARS trademark in its entirety and merely add the word or term “100th” or “loo” as a prefix or suffix to this. In the Panel's view these words or terms, being generic and whether as prefixes or suffixes, are insufficient to distinguish the disputed domain names from the Complainant's trademark. Accordingly, the Panel finds that , and are confusingly similar to the Complainant's OSCARS trademark.
With regard to the disputed domain name , the Panel finds that the figure zero or “0” is visually similar to the letter “O”, particularly as this is placed next to the letters “scars” where, in the Panel's view, it produces a strong visual impression of the word “Oscars” which renders it similar in appearance to the Complainant's OSCARS trademark. This close and indeed confusing similarity to the trademark is coupled with a suffix consisting of the number “100” which, being generic, does nothing to distinguish the domain name from the evident impression of the Complainant's trademark. Accordingly, the Panel finds that is also confusingly similar to the Complainant's OSCARS trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case against the respondent. Here, the Complainant notes that following various searches in trademark databases the Respondent does not appear to hold any intellectual property rights over a mark containing the term “Oscars” and furthermore that there is no evidence that the Respondent is commonly known by any of the disputed domain names. The Complainant also states that it has not authorised the Respondent to use its OSCARS trademark. The Panel is satisfied that this constitutes a prima facie case. Paragraph 2.1 of the Overview of WIPO Panel Views on Selected UDRP Questions provides: “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 UDRP”.
The Respondent's submissions do not specifically address the question of its rights or legitimate interests in respect of the domain names. As far as the Panel can determine, the Respondent asserts that in registering the disputed domain names it was engaging in some form of entrepreneurial activity. It is not clear what this activity was, or was intended to be, and the Respondent does not respond to the assertions of the Complainant regarding its lack of apparent rights in the term “Oscars” other than by way of simple denials or general accusations against the Complainant's representatives. The only entrepreneurial activity which the Panel can identify with regard to the disputed domain names is the offering of these to the Complainant as part of a settlement package in the in rem civil action; this could not be described as a use in connection with a bona fide offering of goods or services as contemplated by paragraph 4(c)(i) of the Policy and, given that the Respondent is evidently seeking a commercial settlement to a “business proposition” in its email to the Complainant of July 20, 2009 it cannot be described as a non-commercial use as contemplated by paragraph 4(c)(iii) of the Policy,
The essence of the Respondent's position, so far as the Panel can identify it from the voluminous annexes produced by the Respondent which predominantly relate to the in rem civil action, appears to be that there are numerous websites on the Internet using domain names incorporating the term “Oscar” or “Oscars” which do not in any way infringe the Complainant's intellectual property. That may be so, but the fact that others may have rights or legitimate interests in connection with their use of a name or term in a domain name does not of itself confer any rights or legitimate interests upon the Respondent, nor does it absolve the Respondent of the requirement to address the Complainant's prima facie case. In these circumstances, the Panel finds that the Complainant has proved that the Respondent has no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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 web site or location or of a product or service on your web site or location”. (Policy, paragraph 4(b)).
It is clear from the history of this case that the disputed domain names were registered by the Respondent over the period when the in rem civil action was pending. The Panel infers from this that the Respondent registered the disputed domain names with the Complainant's rights in mind. The Respondent has repeatedly offered the disputed domain names for sale to the Complainant and on three occasions has done so on the day of registration of the domain name concerned. Many of the Respondent's email communications are expressed as general offers to all parties having an interest but there is little doubt in the Panel's mind, taking the correspondence as a whole and considering the timing of the registrations, that the Respondent was deliberately targeting the Complainant in the various communications. As such, the Panel considers that the Respondent's attempt to characterise the offers as an approach to a variety of interested parties is of little significance. This does not cure the Respondent's evident bad faith intent.
In its email to the Complainant of July 20, 2009 the Respondent invited the Complainant to acquire the disputed domain names from the Respondent as part of an out of court settlement which would also include the domain name . The Panel infers from these circumstances that the Respondent registered the disputed domain names with the intention of improving its position vis à vis the Complainant in the then ongoing litigation between the Parties. In the Panel's view this is a further indication of registration and use in bad faith.
Furthermore, it is evident from the wording of the Respondent's email of July 20, 2009 that it was seeking a financial settlement from the Complainant for the purchase of all of the domain names as a package. Given that it is not disputed that the Respondent had previously offered the domain name to the Complainant for USD25,000,000 it is reasonable to infer that the Respondent was anticipating offers which would be well in excess of its documented out of pocket costs directly related to the domain names, in the manner contemplated by paragraph 4(b)(i) of the Policy.
The Panel has noted that several of the Respondent's email communications to the Complainant were marked “WITHOUT PREJUDICE” and that some, notably that of July 20, 2009, were evidently written in contemplation of an extra-judicial settlement of the in rem civil action. As such, the rules of civil procedure for the jurisdiction concerned might have precluded the email's consideration in the determination of the in rem action. The position is however different in cases under the Policy for the reasons expressed in numerous cases such as, for example, McMullan Bros., Limited, Maxol Limited, Maxol Direct Limited Maxol Lubricants Limited, Maxol Oil Limited Maxol Direct (NI) Limited v. Web Names Ltd,WIPO Case No. D2004-0078.
The consensus view on “without prejudice” communications is now clearly expressed in paragraph 3.6 of the Overview of WIPO Panel Views on Selected UDRP Questions which provides: “Evidence of offers to sell the domain name in settlement discussions is admissible under the UDRP, and is often used to show bad faith. This is because…panels are competent to decide whether settlement discussions represent a good faith effort to compromise or a bad faith effort to extort”. For completeness, the Panel notes that in this administrative proceeding neither party has sought to withhold settlement correspondence from the Panel in terms of any “without prejudice” tag. In particular, a copy of the email of July 20, 2009 was included by both Parties in their respective submissions without any additional qualification or restriction.
In all of these circumstances, the Panel finds that the disputed domain names have been registered and used in bad faith in violation of the Policy. D. Reverse Domain Name Hijacking
It is not completely clear from the Respondent's submissions as to whether the Respondent is making a claim of reverse domain name hijacking against the Complainant or more of a general observation. Furthermore, the Respondent has provided no grounds for such a claim. In any event, and for completeness, the Panel declines to make a finding of reverse domain name hijacking as the Complainant has succeeded in this dispute. 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 names , , , and be transferred to the Complainant.
Andrew D. S. Lothian
Sole Panelist
Dated: December 23, 2009
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