WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION IMAX Corporation v. Paul Walsh Case No. D2010-0195 1. The Parties
The Complainant is IMAX Corporation of Mississauga, Ontario, Canada, represented by Kilpatrick Stockton, LLP, United States of America.
The Respondent is Paul Walsh, of “Monte-Carlo, Monaco, Romania”. 2. The Domain Name and Registrar
The disputed domain name is registered with Go China Domains, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2010. On February 10, 2010, the Center transmitted by email to Go China Domains, Inc. a request for registrar verification in connection with the disputed domain name. On the same day, Go China Domains, Inc. 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”).
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 February 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 4, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 5, 2010.
The Center appointed Ross Wilson as the sole panelist in this matter on March 11, 2010. 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 a Canadian corporation which since 1970 has been operating large screen, immersive motion picture systems. It now has over 400 IMAX theatres in 44 countries and has sold in excess of 800 million tickets since its inception. It also has a strong Internet presence. For example, in 2008 its website had over 5.3 million visitors. In the past seven years the Complainant has spent over USD 30 million in advertising and promotion conducted in connection with its marks.
The Complainant has numerous IMAX trademarks. The first was registered in September 1972.
The Respondent registered the disputed domain name on July 14, 2009. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is exactly the same as its trademark IMAX. Its IMAX marks were registered well in advance of the registration of the disputed domain name and consequently the Respondent was not making bona fide use because of its constructive knowledge of the well known IMAX mark.
Based on its research the Complainant asserts that there is no evidence that the Respondent has ever used the trademark or has been commonly known as or anything similar.
The Complainant considers that the Respondent registered the disputed domain name in bad faith due to its belief that the Respondent would have been aware of the well-known mark through the Complainant's advertising and promotion and would have been aware of its trademark rights. In fact, the Complainant considers that it would be inconceivable that the Respondent did not know about the Complainant.
In addition, the Complainant asserts that the Respondent is not making any legitimate noncommercial use of the dispute domain name. The Respondent is intentionally seeking Internet consumers who are searching for information about the Complainant and is relying on confusion from the fact that consumers would intuitively type in the Complainants' name coupled with the Top Level Domain “.info” in order to learn about the Complainant or its movies and services.
The Complainant contends that the Respondent is using the disputed domain name to operate a sponsored results or “pay per click” site to derive profits. Such use shows the Respondent's bad faith intent to profit. Also, the Respondent's home page offers to sell the disputed domain name sale by displaying the offer: “the domain may be for sale by its owner” that leads to a page that proclaims (IMAX.INFO) is for sale”. The offer indicates that the Respondent wants to trade on the goodwill of the Complainant which is further evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy, as follows:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant provided evidence that it has registered rights in the trademark IMAX.
The disputed domain name consists of the Complainant's trademark in full together with the suffix gTLD “.info”. As previously held by numerous panels the suffix only indicates that the domain name is registered under that gTLD and is not distinctive.
Also, it has been held in many previous cases that incorporating a trademark in its entirety is typically sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see The Stanley Works and Stanley Logistics Inc. v. Camp Creek Co. Inc.,WIPO Case No. D2000-0113 and World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306).
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is identical or confusingly similar to the trademark in which it has demonstrable rights. The Complainant therefore has satisfied the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out how a respondent can demonstrate rights to or legitimate interests in a disputed domain name. In this case, the Respondent has chosen not to file any submission or evidence to demonstrate its rights or legitimate interests in the disputed domain name. In this situation, paragraph 14(b) of the Rules allows the Panel, in the absence of exceptional circumstances, to draw such inferences from the absence of a Response from the Respondent as it considers appropriate.
The Respondent has chosen to use a domain name that contains the Complainant's trademark in its entirety without authorisation by the Complainant. As a consequence, the disputed domain name infers a website related to the services of the Complainant. Instead, the website links to a commercial website with numerous sponsored links including IMAX theatres and competitor theatre sites not connected with the Complainant.
The evidence provided by the Complainant indicates that the Respondent has used the Complainant's trademark in the disputed domain name to attract Internet users to an active website to generate revenue. Clearly, no rights or legitimate interests derive from this type of use of another's trademark. The act of redirecting Internet users to other websites by using the reputation and goodwill of the Complainant's trademark does not constitute bona fide offering of goods and services (see Fox News Network, LLC v. Warren Reid,WIPO Case No. D2002-1085, Madison Square Garden L.P., Radio City Trademarks, LLC v. Great Camanoe Investments Ltd / Belize Domain Names Whois Service Lt,WIPO Case No. D2007-0819, Lance Armstrong Foundation v. Chris Angeles,WIPO Case No. D2005-0888, Baudville, Inc. v. Henry Chan,WIPO Case No. D2004-0059 and Sanofi-aventis v. Milton R. Benjamin,WIPO Case No. D2005-0544).
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain name. Moreover, the Complainant has denied having any connection with the Respondent or providing any authorisation at all.
Despite the opportunity through this dispute process, the Respondent has chosen not to rebut the Complainant's case or assert any rights in the disputed domain name.
Based on the above, the Panel considers the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name which the Respondent has not rebutted. The Panel is satisfied that the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
For the purposes of determining if there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the disputed domain name as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.
The Panel considers that the Complainant has made a case that the Respondent has registered and used the disputed domain name in bad faith. Evidence shows that the Respondent is attempting to confuse Internet users by attracting them to a website to gain “click-through” revenue. The format of the site strongly suggests that the Respondent obtaines “click-through” revenues from the site which implies improper use of the Complainant's mark for commercial purposes (see Nintendo of America, Inc. v. P, Jerry Radl, and Fusion Media Solutions, Inc.,WIPO Case No. D2001-1020).
The Complainant has provided evidence that the Respondent must have known of the IMAX trademark because the website associated with the disputed domain name contains sponsored links including competitive theatre booking services, Avatar links and links to IMAX theatres. In Ford Motor Company and Land Rover Ltd. v. Institution,WIPO Case No. DBIZ2001-00045 the panel found that any use of a well-known name will inevitably be associated with the complainants and as such must have been known to or foreseen by the respondent. In that case bad faith was found.
In Royal Bank of Canada v. Henry Chan,WIPO Case No. D2003-0031 the panel found that by using disputed domain names to redirect Internet users to websites that host links to external websites, including websites of complainant's competitors, the respondent has registered and used the disputed domain names in bad faith. The panel stated that such use of the contested domain names shows the intention of disrupting the Complainant's business and/or for the purpose intentionally attempting to attract for commercial gain internet users to its websites, by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation or endorsement of its websites. Such activity represents bad faith as envisaged by paragraph 4(b)(iv) both in respect to registration and use of the disputed domain name.
Noting that the Respondent has not rebutted any of the Complainant's claims, the Panel considers that there has to be a strong probability that the Respondent's awareness of the Complainant's business was the motivation for registering and using the disputed domain name. Also, the Panel considers the Respondent's choice of the word Imax was not merely coincidental but was a deliberate action to gain some sort of commercial advantage.
On the basis of the above, the evidence provided by the Complainant, the false address used when the Respondent registered the disputed domain name, the Panel is satisfied that the Respondent's conduct falls within paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the Complainant has demonstrated that the disputed domain name was registered and used in bad faith. 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 the Complainant.
Ross Wilson
Sole Panelist
Dated: March 25, 2010
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