The Complainants are Panavision International, L.P., and Panavision Inc. of Woodland Hills, California, United States of America, represented by Bryan Cave, LLP, United States of America.
The Respondent is Reserved for Customers, MustN of Taipei, Taiwan, province of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2012. On January 31, 2012, the Center transmitted by email to Moniker Online Services, LLC. a request for registrar verification in connection with the disputed domain name. On February 1, 2012, Moniker Online Services, LLC. 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 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 1, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 15, 2012.
The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on March 19, 2012. 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 Complainants in this administrative proceeding are Panavision International, L.P., and Panavision Inc (the “Complainant”). The Complainant, along with various affiliates and licensees, is a provider of high specification cinematographic equipment used in the motion picture, television and related industries. The Complainant’s goods and services are offered under the mark PANAVISION.
The Complainant is the registered proprietor of numerous trade mark registrations in Taiwan, province of China and the United States of America for the PANAVISION mark and other related marks, including:
Mark
Territory
Registration Number
Date of Registration
Class of Goods/ Services
PANAVISION
Taiwan
49978
01.12.1971
Nice Class Code 196
PANAVISION
Taiwan
50711
01.01.1972
Nice Class Code 662
PANAVISION
Taiwan
433721
01.03.1989
Nice Class Code 090
PANAVISION
Taiwan
893241
01.06.2000
Nice Class Code 011
PANAVISION (Stylised)
United States
627,362
22.05.1956
Int. Class 9
PANAVISION
United States
845,014
27.02.1968
Int. Class 16
PANAVISION
United States
834,705
05.09.1967
Int. Class 9
The Complainant is also the registered proprietor of trade mark registrations for the PANAVISION mark and other related marks in many other countries and regions throughout the world, including Algeria, Argentina, Australia, Austria, the Bahamas, Bangladesh, Bermuda, Plurinational State of Bolivia, Bosnia & Herzegovina, Brazil, Canada, Chile, China, Colombia, Croatia, Cyprus, the Czech Republic, Congo, Denmark, the Dominican Republic, Ecuador, Egypt, El Salvador, Fiji, Finland, Germany, Gibraltar, Greece, Guatemala, Honduras, Hong Kong, China, Hungary, Iceland, India, Indonesia, Islamic Republic of Iran, Ireland, Israel, Italy, Jamaica, Japan, Jordan, Kenya, Kuwait, Liechtenstein, Macedonia, Malaysia, Malta, Mexico, Monaco, Montenegro, Myanmar, Namibia, New Zealand, Nigeria, Norway, Pakistan, Panama, Paraguay, Peru, Portugal, Puerto Rico, the Republic of Korea, Romania, Russian Federation, Sarawak, Serbia, Singapore, Slovakia, Slovenia, South Africa, Spain, Sri Lanka, Sweden, Switzerland, Tangier, Thailand, Trinidad & Tobago, Tunisia, Turkey, United Kingdom of Great Britain and Northern Ireland, Uruguay, Bolivarian Republic of Venezuela, the British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland and Zimbabwe.
The Complainant operates a website via the domain name and is also the registrant of numerous other domain names incorporating the PANAVISION mark.
The Complainant’s trade mark rights in the PANAVISION mark have been well recognised in a number of previous UDRP proceedings (see Panavision, Inc., Panavision International, L. P. v. Roomwithnet Systems (I) P.Ltd./ Eyecircus Studio Pvt.Ltd,WIPO Case No. D2005-0521 for example). 5. Parties’ Contentions A. Complainant Identical or Confusingly Similar
The Complainant submits that the disputed domain name is identical or confusingly similar to the PANAVISION mark in which it has registered and unregistered trade mark rights as it contains the word “Panavision” in its entirety.
The Complainant submits that the only differences between the disputed domain name and its PANAVISION mark is the addition of the “.net” suffix in the disputed domain name. The Complainant submits that this variation is irrelevant due to its functionality with regard to domain names in general and that it does not serve to distinguish source. Rights or Legitimate Interests
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name for the following reasons:
- the Respondent intentionally chose to register a domain name that is identical or confusingly similar to its PANAVISION mark for the purpose of taking advantage of the Complainant’s reputation and goodwill on the basis that it registered the disputed domain name with the intention and knowledge that its actions would (i) deceive, mislead and divert a large number of consumers seeking the Complainant’s goods and services (ii) misdirect the Complainant’s customers to various websites that offer directly competing goods and services; and (iii) tarnish and dilute the Complainant’s valuable and well-known mark;
- the Respondent is not associated with the Complainant and has never sought nor received authorisation or a license to use the Complainant’s PANAVISION mark;
- the Respondent does not directly sell or offer for sale any goods or services from the website at the disputed domain name and is unable to demonstrate that it has ever made any bona fide offering of goods or services under the PANAVISION marks; and
- the Respondent is not and has never been commonly known as “Panavision” or by the disputed domain name. The Domain Name Was Registered and Is Being Used in Bad Faith
The Complainant submits that through use of the disputed domain name the Respondent is intentionally attempting to divert, for commercial gain, Internet users to one or more of the Complainant’s competitors’ websites in order to confuse and mislead consumers. Such conduct is designed to disrupt and harm the Complainant’s business by diverting potential users away from the Complainant and its authentic goods and services and toward the goods of the Complainant’s competitors.
The Complainant also submits that the Respondent’s website hosted at the disputed domain name includes the message “This Domain Might Be For Sale!!! Please contact us for more information” and suggests that this is indicative that that the Respondent has acquired the disputed domain name for the purpose of selling or otherwise transferring it to the Complainant or a third party for valuable consideration in excess of its reasonable registration costs.
The Complainant notes that the Respondent has no apparent legitimate trade mark, service mark or other intellectual property right in or to the disputed domain name, or any other similar mark or name. The Complainant submits that in circumstances where a domain name is obviously connected to a particular product or service and the registrant is found to have no connection to that product or service, a registrant may be guilty of “opportunistic bad faith”. The Complainant relies on its long and continuous use of the PANAVISION mark and various trade mark registrations throughout the world as evidence that the Respondent would have been aware of the Complainant and its rights in the PANAVISION mark at the time of registration of the disputed domain name.
Finally, the Complainant cites a number of prior UDRP decisions in which the Respondent has been named as respondent and the majority of which have resulted in transfer of the relevant domain name. The Complainant submits that this is evidence of the Respondent’s “pervasive and continual violation of third party trademark rights in the registration of domain names” and in support of its submission that the Respondent has also operated in bad faith in relation to the disputed domain name.
The Complainant therefore submits that the Respondent has registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
For the Complainant to prevail it must establish each of the following elements of paragraph 4(a) of the Policy:
(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights;
(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.
Paragraph 5(e) of the Rules provides that if the Respondent fails to submit a Response (as in this case), in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. A. Identical or Confusingly Similar
The Complainant has established that it is the registered proprietor of a number of trade mark registrations for the mark PANAVISION in Taiwan, province of China, the United States of America and a variety of other territories throughout the world.
It is well established that the “.com” suffix is irrelevant for the purposes of the determining whether a disputed domain name is identical or confusingly similar to a trade mark or service mark in which a complainant has rights under paragraph 4(a)(i) of the Policy (see Bradford & Bingley Plc v. Registrant info@fashionID.com 987654321,WIPO Case No. D2002-0499). This principle clearly applies equally in the context of the “.net” suffix.
The Panel is therefore satisfied that the disputed domain name is identical to the Complainant’s PANAVISION mark. B. Rights or Legitimate Interests
The Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name as follows:
(1) the Complainant is the proprietor of a variety of registered trade marks for the word mark PANAVISION and other related marks;
(2) the Respondent has no license, permission or authorisation to use any of the Complainant’s marks;
(3) the Respondent does not directly sell or offer for sale any goods or services from the website at the disputed domain name and has failed to demonstrate that it has ever made a bona fide offering of goods or services under the PANAVISION mark; and
(4) the Respondent is not and has not been commonly known by the disputed domain name.
In these circumstances, the evidential burden of production moves to the Respondent to show that it does have some right or legitimate interest in the disputed domain name (see Sony Kabushiki Kaisha v. , WIPO Case No. D2000-1074).
The Respondent has failed to make any submissions to the contrary and, accordingly, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
It is clear to the Panel from the unchallenged evidence submitted that through use of the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's PANAVISION marks as to the source, sponsorship, affiliation, or endorsement of that website or of a product or service on that website or made available through it.
Whilst there is no evidence that the Respondent has offered to sell the disputed domain name to the Complainant or any other third party for valuable consideration that exceeds its own out of pocket expenses, the requisite elements for such a finding may be inferred from the circumstances, including the nature of the domain name, the manner in which it has been offered for sale and adverse inferences drawn from the Respondent’s failure to reply to the Complainant’s contentions (see Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.WIPO Case No. D2002-0787). The Panel considers that in all of the circumstances, the obvious inference from the inclusion of the message “This Domain Name Might Be For Sale!!! Please contact us for more information” on the Respondent’s website is that the Respondent registered the disputed domain name with a view to the sale, rental or other transfer of it for more than its own documented out of pocket expenses.
The evidence submitted of other UDRP proceedings involving the Respondent and following which the relevant panel has ordered transfer of the domain name, whilst not determinative, also tends to suggest that the registration of the disputed domain name was also made in bad faith.
For these reasons, the Panel considers that, pursuant to paragraph 4(b)(iv) of the Policy, the Respondent has registered and is using the disputed domain in bad faith. 7. Decision
For 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.
Charters Macdonald-Brown
Sole Panelist
Dated: March 22, 2012
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