Complainant is R Inc. of Lake Forest, California, United States of America, represented by Weeks, Kaufman, Nelson & Johnson, United States of America.
Respondent is Richard Salazar of Los Angeles, California, United States of America (“USA”). 2. The Domain Names and Registrar
The disputed domain names and are registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2011. On February 8, 2011, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the disputed domain names. On February 9, 2011, Melbourne IT Ltd. 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 Respondent of the Complaint, and the proceedings commenced on February 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 9, 2011.1 The Response was filed with the Center on March 3, 2011.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on March 17, 2011. 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 the owner of registrations for the word trademarks RED, RED ONE and RED CAMERA on the principal register of the United States Patent and Trademark Office (USPTO). The first in time registration for RED, registration number 3703504, is dated October 27, 2009, in international class (IC) 9, covering "camera lenses", with application for registration filed on February 11, 2009 (claiming date of first use and first use in commerce of August 31, 2007). RED ONE, registration number 3684568, dated September 15, 2009, is registered in IC 9, covering, inter alia, "digital cinema camera systems and accessories", with intent to use (ITU) filing date of May 19, 2006, with statement of use processing completed by the USPTO on July 16, 2009. RED CAMERA, registration number 3832668, dated August 10, 2010, is registered in IC 9, covering, inter alia, "digital cinematography equipment", with ITU filing date of February 11, 2009, and with statement of use processing completed by the USPTO on July 1, 2010.2
Complainant asserts numerous trademark registrations in jurisdictions other than the United States, but has not provided supporting documentation or information regarding such alleged registrations. The Panel does not take such alleged registrations into consideration.
Complainant asserts that it is the developer, manufacturer and seller of high resolution, HD digital cinema cameras, "including the famous RED ONE camera". Complainant further alleges that its "RED brand is famous throughout the film industry worldwide". Complainant has not provided evidentiary support for the alleged worldwide fame of its products. The Panel has not attempted to independently verify Complainant's claim through Internet search or otherwise.
According to the Registrar’s verifications, Respondent is registrant of the disputed domain names. According to those verifications, the record of registration for each of the disputed domain names was created on July 22, 2009.
Respondent has used the disputed domain names to direct Internet users to a website with homepage headed "HD Digital Imaging Technical Support". The homepage prominently provides the contact information for its operator as "contactus@". Prominently listed are the "RED ONE CLASS SCHEDULE", and a banner "Red One HD CAMERA Workshop Starts February 04, 2011. Sign up now." The stated tuition for the RED ONE class is US$899. In addition to information concerning RED ONE" courses, the homepage advertises its "RENTAL partner at Indie Rentals", and states "Their product line includes but not limited to: ARRI, RED ONE, Zeiss, Palomar Engineering… Please click here to rent from "INDIE RENTALS". At the bottom of the homepage is stated "HD DIGITAL IMAGING TECHNICAL SUPPORT & REDCAMERASUPPORT.COM are not affiliated with Red Digital Cinema Camera Co.”. The accompanying copyright notice is "Copyright©REDCAMERASUPPORT.COM".3
Complainant has asserted that Respondent demanded compensation for agreement to transfer the disputed domain names. Respondent has denied that.
The registration agreement in effect between Respondent and Melbourne IT Ltd. subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)). 5. Parties’ Contentions A. Complainant
Complainant alleges that it has rights in the trademarks RED, RED ONE and RED CAMERA as evidenced by registration at the USPTO. Complainant alleges that it has registrations for "said trademark in over 100 countries worldwide".
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names because Respondent does not have rights in the RED trademark, Respondent has not been commonly known by the disputed domain names, and there is no evidence that Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
Complainant argues that Respondent registered and has used the disputed domain names to trade on the "enormously successful goodwill" of Complainant, that its cameras and brand are famous worldwide, and that Respondent registered the disputed domain names for commercial gain. Complainant argues that Respondent is attempting to create initial interest in the disputed domain names and to create the impression among Internet users of an association with its trademark. Complainant further alleges that, after Complainant contacted Respondent, Respondent advised that it would be willing to transfer the disputed domain names only if Complainant "paid substantial compensation".
Complainant requests the Panel to direct the Registrar to transfer the disputed domain names to Complainant. B. Respondent
Respondent argues that the disputed domain names are based on common descriptive words such as "red" or "camera", and the disputed domain names "cannot be considered identical or confusingly similar because generic terms usually do not offer much trademark protection." Respondent points to the fact that numerous websites use the terms that it uses in the disputed domains. Respondent states that Complainant has never registered the specific combinations of terms used in the disputed domain names.
Respondent states that it is running a "legitimate education program that helps to teach students at a very low cost. We offer scholarships to minority and inner-city students unable to afford a camera education. The program also serves to offer opportunities to those who are currently unemployed by offering scholarships on a consistent basis. "Respondent further indicates that it has a right under the First Amendment to the U.S. Constitution to teach and educate students about cameras and technology and the art of filmmaking.
Respondent argues that it is an educational program that is not competing with Complainant, that its program is heavily subsidized and suffers a loss, and that "Respondent has never asked for any compensation because we run our program like a co-op. We are in the process of seeking non-profit status. We have never asked for support from complainant in any way shape or form. Respondent argues that there are disclaimer notices on its homepage and that it does not use RED marketing information. "We do not give the impression that our program is endorsed by RED or has permission from RED. The language is explicit and clear and as plain as day. There are no prominent logos nor endorsements of any sort."
Respondent indicates that Complainant was unwilling to discuss an appropriate remedy, although Respondent offered to transfer the domain names to Complainant and license them back. 6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center notified Respondent of the Complaint and commencement of the proceedings, and Respondent filed a Response. The Panel is satisfied that Respondent received adequate notice of these proceedings and was afforded a reasonable opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which 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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief. A. Identical or Confusingly Similar
Complainant is the holder of registrations at the USPTO for the trademarks RED, RED ONE and RED CAMERA, and has provided evidence to the USPTO of use of those trademarks in commerce in the United States. Although Respondent has asserted that its use of the terms embodied in Complainant’s trademarks constitutes descriptive use of those terms, it has not specifically challenged Complainant’s rights based on registration at the USPTO. The Panel determines that Complainant has rights in the trademarks RED, RED ONE and RED CAMERA.
Respondent has registered the domain names and . Each of these domain names directly incorporates trademarks of Complainant. The disputed domain name incorporates RED and RED CAMERA, and adds the word “support”. A manufacturer and distributor of cinematography equipment would be expected by Internet users to provide “support” for that equipment. Internet users would reasonably associate the disputed domain name with Complainant and its products. The disputed domain name incorporates RED and RED ONE and adds the term “camera”. A manufacturer and distributor of cinematographic equipment, including cameras, would be expected by Internet users to use the term “camera” to identify its products, and such Internet users would reasonably associate that disputed domain name with Complainant. The Panel finds that the disputed domain names are confusingly similar to Complainant’s trademarks.
The Panel determines that Complainant holds rights in trademarks, and that the disputed domain names are confusingly similar to those trademarks. B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“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 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.” (Policy, paragraph 4(c))
Complainant has argued that Respondent has failed to establish rights or legitimate interests in the disputed domain names because Respondent was not commonly known by the disputed domain names, does not have rights in the trademarks used in the disputed domain names, and because Respondent has not made legitimate noncommercial or fair use of the disputed domain names. Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain names.
Respondent has not alleged that it is commonly known by the disputed domain names, nor that it has trademark rights in the terms used in those disputed domain names. Respondent has used the disputed domain names in connection with a website that specifically refers to Complainant's products with which it was obviously aware when it registered the disputed domain names. Respondent should have anticipated that Complainant might object to its registration and use of the disputed domain names, and the Panel does not consider that Respondent made a bona fide offering of services prior to notice of a dispute.
Respondent’s principal argument is that it is making fair use of Complainant's trademarks in the disputed domain names.4 That is, Respondent is arguing that it is using Complainant's trademarks for the purpose of fairly identifying and/or describing the products of Complainant that are the subject of Respondent’s educational classes. This is a claim for a type of "nominative fair use". Respondent and Complainant are both based in California, USA. The Ninth Circuit Court of Appeals recently re-articulated its standards for application of the nominative fair use doctrine in relation to domain names in Toyota v. Tabari (9th Cir. 2010) 610 F.3d 1171. The Court restated the three-pronged test: (1) whether the product or service is readily identifiable without use of the trademark; (2) whether more of the trademark is used than is reasonably necessary, and (3) whether the third party user has falsely suggested association with the trademark owner. The Court in Toyota v. Tabari suggested modification of the burden of proof requirements: once a party accused of infringement and asserting nominative fair use has demonstrated that it used the trademark-protected term to refer to trademark-identified goods, the burden shifts to the trademark owner to demonstrate likely Internet user confusion as to the sponsor of the relevant website (610 F.3d at 1183).
The Policy places the burden of proof on a complaining party to establish that a respondent lacks rights or legitimate interests in a disputed domain name. A complaining party must ordinarily make out a prima facie case of lack of rights or legitimate interests, including absence of a fair use defense, before a responding party must establish a defense. It does not therefore appear to this Panel that the rule in Toyota v. Tabari should alter the process of analysis typically used by panelists under the Policy.
In the instant proceeding, Respondent has demonstrated that the disputed domain names refer to Complainant's trademark-protected products. Further to Toyota v. Tabari, the burden shifts to Complainant to demonstrate that Respondent’s use of the disputed domain names creates a likelihood of confusion as to the source or sponsorship of Respondent’s website.
The Ninth Circuit Court in Toyota v. Tabari observed that domain names consisting of the trademark term alone, plus a generic top level identifier (gTLD), are presumptively confusing to Internet users. The Court further noted that this type of third-party usage is uncommon. The Court referred to other types of domain names that may also be presumptively confusing:
“Sites like trademark-USA.com, or will also generally suggest sponsorship or endorsement by the trademark holder; the addition of “e” merely indicates the electronic version of a brand, and a location modifier following a trademark indicates that consumers can expect to find the brand's local subsidiary, franchise or affiliate. See Visa Int'l Serv. Ass'n v. JSL Corp., No. 08-15206, 2010 WL 2559003, 610 F.3d 1088 (9th Cir. June 28, 2010). For even more obvious reasons, domains like or we-ar affirmatively suggest sponsorship or endorsement by the trademark holder and are not nominative fair use. …
When a domain name making nominative use of a mark does not actively suggest sponsorship or endorsement, the worst that can happen is that some consumers may arrive at the site uncertain as to what they will find. But in the age of FIOS, cable modems, DSL and T1 lines, reasonable, prudent and experienced internet consumers are accustomed to such exploration by trial and error. They skip from site to site, ready to hit the back button whenever they're not satisfied with a site's contents. They fully expect to find some sites that aren't what they imagine based on a glance at the domain name or search engine summary. Outside the special case of , or domains that actively claim affiliation with the trademark holder, consumers don't form any firm expectations about the sponsorship of a website until they've seen the landing page-if then. This is sensible agnosticism, not consumer confusion. See Jennifer E. Rothman, Initial Interest Confusion: Standing at the Crossroads of Trademark Law, 27 Cardozo L.Rev. 105, 122-24, 140, 158 (2005). So long as the site as a whole does not suggest sponsorship or endorsement by the trademark holder, such momentary uncertainty does not preclude a finding of nominative fair use.” (610 F.3d 1179)
In the instant proceeding, Respondent could not readily identify Complainant's cinematographic equipment without using Complainant's trademarks. Respondent has used the disputed domain names to identify the trademark-identified products. Respondent has satisfied the first prong of establishing nominative fair use.
Respondent specifically - and prominently - used a contact e-mail address incorporating Complainant's trademark on Respondent's website, which it certainly did not need to do, that heightened the possibilities for Internet user confusion. Respondent has used more of Complainant's trademarks than is necessary, and in so doing has acted to create Internet user confusion.
Respondent has taken Complainant's trademarks RED ONE and RED CAMERA and combined them with "camera" and "support" respectively. As noted in the discussion of confusing similarity, the term "camera" is precisely what Complainant is selling, and is a term that Internet users would expect to find in combination with its trademark as an official designator of Complainant's own website. Virtually all vendors of products provide a "support" tab or link on their website, and Internet users would have a firm expectation that Complainant would use that term as part of its official website identifier. In the view of the Panel, Respondent registered and has used the disputed domain names domain names to engender confusion with Complainant as the sponsor or source of its website.
Respondent's website refers Internet users to a source of specifically listed rental products that compete with the products of Complainant. Third-party use of an owner’s trademark to advertise competing products is generally not considered fair use. This supports a finding that Respondent’s use of the disputed domain names is not fair use.
The Panel determines that Complainant has established that Respondent has not made nominative or other fair use of the disputed domain names.
The Panel concludes that Complainant has successfully established that Respondent lacks rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include "(i) circumstances indicating that [the respondent has] registered or [the respondent has] 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 [the respondent's] documented out-of-pocket costs directly related to the domain name, or; (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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] web site or location or of a product or service on [respondent’s] web site or location”.
The Panel first notes that Complainant's dates of filing for registration of its trademarks preceded registration by Respondent of the disputed domain names. Under US trademark law, the filing of an application for registration constitutes constructive use, and establishes exclusive rights in the trademark from the filing date, contingent on registration (15 USC §1057(c)). Complainant established rights in trademarks prior to registration by Respondent of the disputed domain names. Also, because it is evident that Respondent used the disputed domain names to refer to Complainant's products, Respondent was aware of Complainant's trademarks when it registered the disputed domain names.
The evidence on the record of this proceeding is insufficient to draw a conclusion that Respondent registered the disputed domain names for the purpose of selling them to Complainant.
Respondent registered and has used the disputed domain names to direct Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant's trademarks regarding Complainant as the source, sponsor, affiliate or endorser of Respondent's website.
The Panel determines that Respondent registered and has used the disputed domain names in bad faith within the meaning 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 domain names, and , be transferred to the Complainant.
Frederick M. Abbott
Sole Panelist
Dated: March 26, 2011
1 Respondent requested and the Center granted an extension for filing the Response from March 2 to March 9, 2011.
2 Complainant and its counsel did not provide copies of certificates of registration and/or USPTO registration status information. Complainant and its counsel furnished only registration numbers and dates. Important date information was stated inaccurately, necessitating that the Panel undertake a review of documents relating to Complainant on the USPTO database. That review provided information sufficient to generally support Complainant's action.
3 The foregoing description of Respondent's website addressed by the disputed domain names is based on screenshots dated February 4, 2011 provided by Complainant. Respondent has since modified the homepage content to elaborate on its disclaimer and to change the contact information e-mail address. Panel visit of March 26, 2011.
4 The website identified by the disputed domain names evidences a commercial nature, including indication of student fees for attending courses. This is not "noncommercial" use.
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