Complainant is Swank Motion Pictures, Inc. of St. Louis, Missouri, United States of America, represented by Bryan Cave LLP, United States of America.
Respondent is Belize Domain WHOIS Service Lt of Belize, Wisconsin, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Intercosmos Media Group d/b/a directNIC.com. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2010. On August 25, 2010, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the disputed domain name. On the same day Intercosmos Media Group d/b/a directNIC.com 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” 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 Respondent of the Complaint, and the proceedings commenced on August 26, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 15, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 16, 2010.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on September 21, 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
Complainant is an international company that specializes in non-theatrical distribution of motion pictures for public performance. Specifically, Complainant provides public performance licensing rights and licensed movies to non-theatrical markets such as cruise lines, United States colleges and universities, K-12 public schools and libraries, American civilian and military hospitals, motor coaches, Amtrak trains, correctional facilities, and other markets such as parks, art museums and businesses. Complainant is a distributor for major studios such as Walt Disney Pictures, Paramount Pictures, Warner Bros., Sony Pictures, Universal Pictures, Dreamworks Pictures, New Line Cinema, Lionsgate, MGM, Miramax Films, HBO, and others. Complainant has obtained several trademark registrations in the United States, where Respondent lists its address of record, including Registration No. 964840 for SWANK (issued 1973); No. 3802050 for SWANK MOTION PICTURES (issued 2010), among others. In addition to its registered marks, Complainant relies on common-law use of its marks, for which it has submitted evidence dating from at least the 1940s.
Complainant asserts to maintain an active presence on the Internet through the domain name . Complainant uses this domain name to connect to a website through which it informs potential customers about its SWANK and SWANK MOTION PICTURE marks and services.
The disputed domain name was registered on July 9, 2005. Respondent has no affiliation with Complainant. Respondent has, over the years, provided sponsored links from the website associated with the disputed domain name to websites that describe or advertise goods or services that are unaffiliated with Complainant or Complainant’s services. These include competing products as well as adult-only video products which Complainant considers to be tarnishing to its reputation. Complainant has not authorized these links, nor the use of its trademarks therewith. 5. Parties’ Contentions A. Complainant
Complainant contends that (i) is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions in this proceeding. 6. Discussion and Findings A. Identical or Confusingly Similar
This Panel must first determine whether is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name is identical to the Complainant’s trademark SWANK MOTION PICTURES, omitting the spaces (which can not be used in domain names) and adding the generic top-level domain (“gtld”) “.com”, which need not be taken into account when assessing whether a domain name is identical or confusingly similar to a trademark.
The Panel also finds the disputed domain name to be confusingly similar to the Complainant’s previously registered trademark SWANK, as it directly incorporates such trademark and merely adds the words “motion pictures”, which describe Complainant’s business, and the “.com” gtld.
The Panel finds that the added words would be perceived by Internet users as descriptive of a website where they could find information about Complainant’s motion picture services and products. This is particularly so since Complainant is known for, and indeed has a registered trademark to cover, its motion picture services and products. Complainant has even registered several trademarks that include descriptive words, such as the abovementioned trademark SWANK MOTION PICTURES. So, consumers would expect to find information offered by Complainant on such a website.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, Microsoft Corporation v. Step-Web,WIPO Case No. D2000-1500 (transferring ); General Electric Company v. Recruiters,WIPO Case No. D2007-0584 (transferring ); CBS Broadcasting, Inc. v. Y2K Concepts Corp.,WIPO Case No. D2000-1065 (transferring ).
This Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial 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”.
Respondent did not reply to the Complaint, however, and no evidence has been presented to this Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain name. Rather, as mentioned in section 4 of this Panel’s decision, Respondent has used the disputed domain name to divert Internet users via sponsored links, to websites that are unaffiliated with Complainant or Complainant’s services.
Therefore, this Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph 4(a)(ii) of the Policy which Respondent has not rebutted. C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] 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 [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in section 4 of this Panel’s decision, Respondent has provided sponsored links from the website to which the disputed domain name refers to websites that describe or advertise goods or services that are unaffiliated with Complainant or Complainant’s services. These include competing products as well as adult-only video products which Complainant considers as tarnishing its reputation. Complainant has not authorized these links, nor the use of its trademarks therewith. Hence, Respondent is trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain.
Furthermore, the Panel finds that as shown by numerous decisions in which domain names were transferred from Respondent, Respondent has engaged in a pattern of registering domain names in violation of the UDRP, in accordance with paragraph 4(b)(ii).
Therefore, this Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with 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 disputed domain name be transferred to Complainant.
Lorelei Ritchie
Sole Panelist
Dated: September 30, 2010
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