Complainants are the affiliated companies Technicolor SA and Technicolor Trademark Management SAS of Issy les Moulineaux, France, represented by MEYER & Partenaires, France.
Respondent is Bucks Laboratories of Slough, Berkshire, the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with Easyspace Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2010. On September 16, 2010, the Center transmitted by email to Easyspace Ltd. a request for registrar verification in connection with the disputed domain name. On September 17, 2010, Easyspace Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 22, 2010.
The Center verified that the Complaint as amended 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 September 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 14, 2010.
The Center appointed Richard G. Lyon as the sole panelist in this matter on October 27, 2010. The Panel finds that it was properly constituted and has jurisdiction over this administrative proceeding. The Panel has submitted his 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
Complainants and their affiliated companies, most of them based in France, provide products and services for creation, management, production, delivery, and access of video for communications media and entertainment industries. Complainants and predecessor companies named Technicolor date back to 1914, and one of the Complainants holds several registered trademarks in the United Kingdom the principal feature of which is the word Technicolor. Complainants hold many similar trademarks registered in other countries around the world. The first TECHNICOLOR trademark identified in the Complaint was registered in 1929. The group’s principal website is .
Respondent is a company based in the United Kingdom that provides laboratory services such as negative processing and copying features, trailers, and commercials to the motion picture industry. Respondent’s managing director and another of Respondents employees are listed in the contact details for the disputed domain name furnished by the registrar.
Respondent registered the disputed domain name in April 2000. The disputed domain name has never resolved to an active website; the Wayback machine and annexes filed with the Complaint indicate that the content on the webpage was a registrar-supplied page of hyperlinks, with subjects unrelated to Complainant, Respondent, or their respective businesses.
Complainant sent Respondent a cease-and-desist letter on May 20, 2010. Respondent’s counsel replied in two letters dated June 17, 2010, denying several of Complainants’ factual and legal assertions. In one of these letters Respondent’s counsel stated “Our client would be happy to transfer the [disputed domain name] . . . in respect of a payment that properly reflects the loss of our client’s right to use this URL, the registration fees paid to date, our client’s legal fees in dealing with this matter and our client’s inconvenience in dealing with this matter. Our client believes an appropriate sum is £5,000 (plus Value Added Tax if applicable.)”
Further correspondence failed to resolve the matter, and Complainants commenced this proceeding. 5. Parties’ Contentions Complainant contends as follows:
Complainants or their predecessor companies have held registered trademark rights in TECHNICOLOR for decades. The disputed domain name differs from Complainants’ marks only by the addition of the letter “U,” and is therefore confusingly similar to those marks. The fact that Respondent, a British company, has used the British spelling of the word “colour” makes confusing similarity even more likely.
Complainants have never authorized Respondent to use their marks and Respondent has never been known commonly by the word Technicolor. Use of the disputed domain name for a parking page is not legitimate under the Policy. Respondent never used the disputed domain name for provision of any goods and services in the ten years since registration.
Respondent, itself in a business serving the movie and related industries, cannot credibly deny knowledge of Complainants’ marks at the time of registration. The TECHNICOLOR marks are internationally famous and well known to anyone in the movie business. Complainants submit a document from Respondent’s website that quotes one of Respondent’s principals as expressly acknowledging Complainants and their marks, and identifying Respondent as a niche competitor of Complainants.
Complainants cite two activities as use in bad faith: Respondent’s offer to sell the disputed domain name, quoted above, for an amount far excess of its direct cost relating to registration of the disputed domain name, and ten years of non-use of a close variant of Complainants’ famous trademark can be deemed use in bad faith under the “warehousing” doctrine first enunciated in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Anticipating a possible defense based upon the ten-year lapse of time between the registration of the disputed domain name and commencement of this proceeding, Complainants argue that it is now well established that there is no laches or estoppel defense in Policy proceedings.
Respondent did not file a formal Response in this proceeding. The Panel however will consider the arguments set forth in Respondent’s replies to Complainants’ cease-and-desist letter. These are:
Respondent “has owned the [disputed domain name] for some time” without objection by Complainants. Respondent has not used the disputed domain name to divert customers, so there has been no infringement of Complainants’ rights. The spelling of the disputed domain name defers from the word used in Complainants’ corporate name and trademarks. 6. Discussion and Findings
Unlike civil litigation in the United States of America, failure to respond in a Policy proceeding does not constitute an admission of any pleaded matter or result in the Policy equivalent of a default judgment. WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”), paragraph 4.6; The First Baptist Church of Glenarden v. Melvin Jones,WIPO Case No. D2009-0022; Stanworth Development Limited v. E Net Marketing Ltd.,WIPO Case No. D2007-1228; Western Research 3000, Inc. v. NEP Products, Inc.,WIPO Case No. D2004-0755 (“The Policy requires the Complainant to prove each of the three [Policy] elements” (emphasis in original)). Complainants have the burden of proof to demonstrate each of the required Policy elements:
(i) [Respondent’s] domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) [Respondent has] no rights or legitimate interests in respect of the domain name; and
(iii) [Respondent’s] domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar.
Complainants have plainly established this Policy element. Complainants hold many registered trademarks for TECHNICOLOR. Rarely if ever does the addition of a single letter not render a domain name confusingly similar to a mark, and it certainly does not do so here. If anything the fact that the one-letter addition makes the disputed domain name a variant spelling of the same English word makes confusion even more likely. B. Rights or Legitimate Interests.
Paragraph 4(a)(ii) requires Complainants to prove a negative, that Respondent lacks rights or legitimate interests in the disputed domain name. This is usually accomplished by Complainants’ setting out a prima facie showing that Respondent lacks such rights or interests, which shifts the burden of production to Respondent to demonstrate the contrary. See WIPO Overview, paragraph 2.1.
Complainants have made the requisite prima facie showing here. Complainants have not authorized Respondent to use their TECHNICOLOR marks, and nothing in the record indicates that Respondent has been commonly known by that word. Use for a parking page, without more, is not legitimate for purposes of paragraph 4(a)(ii). Even if, as appears to be the case, none of the references on the parking page is to products or services competitive to those of Complainant, Respondent still has used Complainants’ mark without authority for commercial gain.
Many years of use likewise does not alter this conclusion on the facts of this case. While, as Complainants argue, there is no laches or estoppel defense in a Policy proceeding,1 prolonged use for a legitimate business sometimes may bring a respondent within the safe harbors of paragraphs 4(c)(i) or 4(c)(ii) of the Policy. Ten years’ passive use for a parking page does not shelter Respondent here. Particularly is that so when Respondent was well aware of Complainants and their marks at the time of registration. Complainants have carried their burden of proof under this Policy element. C. Registered and Used in Bad Faith.
Complainants have provided proof of two uses of the disputed domain name that fit squarely within the non-exclusive examples of ”evidence of the registration and use of a domain name in bad faith” set out in paragraph 4(b) of the Policy.
The first is Respondent’s offer to sell the disputed domain name “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 [Respondent’s] documented out-of-pocket costs directly related to the domain name.” Policy, paragraph 4(b)(i). Respondent’s notion that its UKP 5000 offer properly reflects “the loss of [Respondent’s] right to use” the disputed domain name does not overcome Complainants’ showing for several reasons. No fair reading of “out-of-pocket costs’ can include lost opportunity value or an allocated amount for Respondent’s “inconvenience.” And Respondent has furnished the Panel no evidence of “out-of-pocket costs” of any kind.
Ten years’ passive use in this case is under well-established Policy precedent also bad faith use for Policy purposes. Three of the five bases cited in the seminal Telstra case obtain here:
“The particular circumstances of this case which lead to this conclusion [of bad faith use] are:
“(i) the Complainant’s trademark has a strong reputation and is widely known, . . .,
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,
v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.”
Add to this the undenied and undeniable facts that the parties are competitors and that Respondent knew of Complainants and their marks at the time of registration, and bad faith use is clearly established.
Paragraph 4(a)(iii) is conjunctive; both registration and use in bad faith must be proven.2 Ample ground exists for an inference of bad faith at the date of registration. As noted, the parties are competitors and Complainants’ marks are famous. Respondent’s choice of varying the spelling of “color” in the disputed domain name to capture the British spelling of the same word strongly suggests deliberate copying. Bad faith in registration has been proven. 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.
Richard G. Lyon
Sole Panelist
Dated: October 29, 2010
1 See, e.g., Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091; The E.W. Scripps Company v. Sinologic Industries,WIPO Case No. D2003-0447.
2 For the reasons stated in Eastman Sporto Group LLC v. Jim and Kenny,WIPO Case No. D2009-1688, the undersigned Panel rejects the “unitary concept” approach to paragraph 4(a)(iii) that some panels have recently advanced. That approach, needless to say, would not aid Respondent in this proceeding.
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