Complainant is DreamWorks Animation LLC of Glendale, California, United States of America, represented by HGF Law, United Kingdom of Great Britain and Northern Ireland.
Respondent is Phoebus Morides of Limassol, Cyprus and Athens, Greece. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on October 10, 2012. On October 11, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 11, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the disputed domain name. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on October 16, 2012.
The Center verified that the Complaint together with the amended 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 October 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 6, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 8, 2012.
The Center appointed Ross Carson as the sole panelist in this matter on November 16, 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
Complainant is a world famous producer of computer generated animated films. In 1994, Steven Spielberg, Jeffrey Katzenberg and David Geffen formed “SKG Studio” but assigned its business to DreamWorks LLC (trading as DreamWorks SKG) in 1995. DreamWorks LLC, became a globally-renowned company with an extensive reputation for producing television series and feature films. In 2004 DreamWorks LLC spun off its animation division into a separately traded company. Complainant is an integral part of the animation business and is responsible for its intellectual property rights. Complainant's critically acclaimed films and box office hits include the Shrek and the Kung Fu Panda films that have grossed hundreds of millions of U.S. dollars around the world including in Greece and Cyprus.
Complainant's films are extensively previewed and advertised in each country before release. After their cinematic release the films are sold on DVD to the public. Complainant's name and trademark DREAMWORKS is prominently displayed in production and other credits in full-screen shots at the beginning of each of its films and videos, and on DVD packaging and in advertising. Complainant has developed a highly successful merchandising program featuring the central characters of its films. This merchandise includes books, magazines, stationery, posters, packaging, toys, clothing, confectionary, computer games and software and DVDs. Complainant collaborates with major brands including Kellogg's, Kinder and McDonalds to advertise its films and their characters.
Complainant is the owner of registrations of the trademark DREAMWORKS and the DREAMWORKS and Device trade marks (the device of a boy fishing from the moon) in numerous countries around the world including the following registered trademarks:
Community trademark registration ("CTM") No. 182220 for DREAMWORKS (applied for April 1, 1996 and registered September 28, 1998) for various goods and services in Class 9 (including photographic, cinematographic apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; recording discs; data processing equipment and computers; computer hardware and software; pre-recorded audio and video tapes, records and compact discs); Class 16 (paper, cardboard and goods made from these materials; printed matter photographs, stationery...newspapers, periodicals and books); Class 28 (games and playthings...electronic and computer games and game programs); and Class 41 (education...entertainment; sporting and cultural activities);
United Kingdom trademark registration No. 2007054 for DREAMWORKS (registered January 9, 1995) in various classes including Classes 9 and 41;
Greece trademark registration No. 122620 for DREAMWORKS (registered January 20, 1995) in various classed including Classes 9, 28 and 41; and DREAMWORKS and Device (registration No. 122621) registered in Classes 9, 28 and 41 for the same goods and services.
Cyprus trademark registration No. 41650 for DREAMWORKS (registered January 10, 1995) in Class 9; and No. 41651 for DREAMWORKS (registered January 10, 1995) in Class 41. The trade mark DREAMWORKS and Device is also registered in Classes 9 and 41, from February 2, 1995, under registration Nos. 41910 and 41911 respectively.
Complainant is the owner of numerous domain names for or including “dreamworks”. It is the registered proprietor of (registered in July 1998) which is connected to Complainant's main website. It owns numerous other domain names including and as well as others containing its film titles.
Respondent is the Registrant of the disputed domain name created on March 26, 2012.
Previous UDRP panels have found the trademark DREAMWORKS to be a very well-known trademark. See, DreamWorks L.L.C. v. Andy Xu, WIPO Case No. D2004-0667, "Every movie buff and most of the general public throughout the world, knows that DREAMWORKS is a trade mark associated with Steven Spielberg, in turn one of the world's most famous movie directors and producers." From the UDRP decision, Dreamworks Animation L.L.C. v. Michael lannou,WIPO Case No. D2009-1353, "The Panel has no hesitation in finding that the trade mark DREAMWORKS both alone or in conjunction with the device, is extremely well-known around the world including in Cyprus".
The disputed domain name was created on March 26, 2012, fourteen days after a case between Complainant and Respondent relating to the domain names and . See, DreamWorks Animation LLC v. Phivos Morides/ Phoebus Morides,WIPO Case No. D2012-0054 where the panel ordered that the disputed domain names and be transferred to Complainant.
Complainant had also filed a complaint against Respondent with the Hellenic Telecommunications and Post Committee ("EETT") which resulted in Decision No. 652/47 ("EETT Decision") transferring to Complainant. 5. Parties’ Contentions A. Complainant
A.1. Identical or Confusingly Similar
Complainant states that it is the registered owner of hundreds of trademark registrations for the trademarks DREAMWORKS and the DREAMWORKS and Device trademark (the device of a boy fishing from the moon) many of which have been registered for over a decade.
Complainant submits that the disputed domain name is confusingly similar to the Complainant’s DREAMWORKS trademarks. The disputed domain name contains the identical mark, DREAMWORKS, in its entirety. DREAMWORKS is the leading and dominant element of the disputed domain name. As the disputed domain name wholly incorporates Complainant’s DREAMWORKS trademark, this is sufficient to establish confusing similarity between Complainant’s trademark and the disputed domain name for the purposes of the Policy. This presumption is particularly true where the trademark is highly recognizable and famous, as in this case. See, Bayerische Motoren Werke AG v. bmwcarcom, WIPO Case No. D2002-0615; and Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768. The mark DREAMWORKS stands out in the disputed domain name and leads the public to think that the disputed domain name is somehow connected to the owner of the registered trademark, see Utensilerie Associate S.p.A. v. C & M,WIPO Case No. D2003-0159.
Complainant states that the addition of descriptive and generic words to Complainant’s trademark in the disputed domain name does not avoid confusingly similarity. As the panel stated in DreamWorks Animation LLC v. Phivos Morides/ Phoebus Morides, supra.:
"The Disputed Domain Names are clearly a combination of the DREAMWORKS element with descriptive and commonplace terms, namely ‘Europe’ and ‘worldwide’… DREAMWORKS remains the dominant element in the Disputed Domain Names. The addition of descriptive and commonplace terms does nothing to prevent the confusing similarity of the Disputed Domain Names with the Trade Marks".
The EETT Decision stated, concerning the domain name , that:
"The variable field of the said domain name ["dreamworkscorp] is similar in a way that may create confusion to the indication "DREAMWORKS" in which the Petitioner holds prior lawful trade mark (national and community), company name, and distinctive title rights. The addition of the suffix "corp" which refers to the word corporation cannot rule out consumer confusion"
Complainant further states that separate legal adjudicators have already found "worldwide" and "corp" to be non-distinctive, and have found that when used with DREAMWORKS the domain names containing them are confusingly similar to Complainant’s trademarks. This was the case in DreamWorks Animation LLC v. Phivos Morides/ Phoebus Morides, supra., and the EETT Decision, where the adjudicaters found: "worldcorp" is merely a combination of the suffixes Respondent registered earlier, "-worldwide" and "corp" and is not in itself any more distinctive than "worldwide" or "corp".
Complainant further submits that"-worldcorp" is a descriptive and commonplace term, which on its own is incapable of distinguishing any goods or undertakings. The term "worldcorp" is an abbreviation and is an entirely descriptive term used by businesses to describe themselves as a "worldwide corporation". The disputed domain name is clearly visually and aurally similar to Complainant’s registered trademarks and is conceptually identical to them. The trademark DREAMWORKS is a neologism, it does not directly describe anything. It is at most an allusive reference to works of the imagination. In ordinary English usage it has significance only because it is the trademark of Complainant. The concept behind the disputed domain name is the same as that of Complainant’s trademark, as it is a direct reference to the trademarks. The only addition, “worldcorp”, does not alter the concept for the disputed domain name, rather it emphasizes the connection to Complainant’s trademarks by suggesting that the disputed domain name is a globally accessible center for information on Complainant and its films. See, SAP A.G. v. Andrew Sparrow, WIPO Case No. D2001-0733. Complainant therefore submits that the disputed domain name is confusingly similar to Complainant’s trademarks and can only be used to denote an official website of Complainant.
Complainant states that the predominant element in the disputed domain name is DREAMWORKS, which is distinctive and eligible for protection per se, and is clearly isolable within the combination “dreamworks-worldcorp”. The additional term does not create new wording with a meaning of its own, within which DREAMWORKS would no longer be perceived as the trademark of the Complainant.
Complainant states that members of the public, when reading or hearing the disputed domain name will be led to believe that the disputed domain name is owned by, or relates to, Complainant and points towards a website where Complainant's films and services are advertised. Complainant submits that DreamWorks L.L.C. v. Andy Xu, WIPO Case No. D2004-0667 and SAP A.G. v. Andrew Sparrow, supra., support its submission. In SAP v. Andrew Sparrow the UDRP panel ruled that the combination of a famous and distinctive trademark and a descriptive word - "world" - was sufficient to establish a confusing similarity to the trademark for the purpose of the Policy.
Complainant further states that the disputed domain name links into a website which advertises and promotes "Dreamworks Corp. Worldwide" ("DCW"). DCW offers entertainment, film production, animation and new media services, goods and services that are identical to those for which Complainant’s registered trademarks are registered in Classes 9 and 41, and for which goods and services of Complainant are well-known. Respondent's use of Complainant’s trademark DREAMWORKS in the disputed domain name and on the website associated with it is therefore use in respect of goods and services for which Complainant has pre-existing and identical rights covered by its trademark registrations.
A.2. No Rights or Legitimate Interests in Respect of the Disputed Domain Name
Complainant states that it first became aware of Respondent on about June 6, 2011, when it discovered the registration of linked to a website advertising “DreamworksCorp Worldwide” and “DreamworksCorp Europe”, offering goods and services identical to those for which Complainant’s trademarks are registered. According to the website, “DreamWorks Corp. Worldwide” was based in London, and was the "leading company in Entertainment, Film Productions & New Media." The company's principals were the Chairman, Phivos Apolion Morides, and "his collaborator" Lydia Rodas. Respondent, on the website, claimed to have been operating under the name “Dream Group Worldwide” since 2001, and to have been using "DreamWorks Corp Europe" since January, 2011. At that time, the website was still under construction.
Complainant states that its solicitors wrote to Respondent to try to resolve this matter. After they wrote to Respondent, the domain name was registered (on August 25, 2011) and used with the previously described website. On January 13, 2012, the Complainant filed a complaint at WIPO. The resulting decision, dated March 6, 2012, ordered the transfer of the domain names and to Complainant is reported as DreamWorksAnimation LLC v. Phivos Morides/ Phoebus Morides,WIPO Case No. D2012-0054, hereinafter referred to as the “Morides Decision”.
Complainant further states that Respondent registered the disputed domain name on March 26, 2012, less than three weeks after the publication of the Morides Decision and after Complainant filed a UDRP case against a company controlled by Respondent relating to the domain name with the EETT.
Respondent linked the disputed domain name to the website advertising “Dreamworks Corp.Worldwide (also operating through “”). On discovery of this registration, Complainant's representative wrote to the Registrar asking for the website to be taken down. It was temporarily removed but was restored.
Complainant states that the website associated with the disputed domain name has been substantially developed but it continues to advertise DREAMWORKS CORP, ® WORLDWIDE and Dreamworks Corp Europe (the "Dreamworks' Businesses") as businesses operated by Respondent. It has also changed the main branding on the Website from DREAMM to DREAM, for example "Dream Pictures",“Dream Music", "Dream TV" and "Dream Entertainment". Respondent has therefore continued to use Complainant’s trademark DREAMWORKS in business names and in the disputed domain name in connection with film, television, music, entertainment and online media, the goods and services that are identical to those for which Complainant is famous, and for which Complainant’s trademark DREAMWORKS is registered, despite numerous objections from Complainant.
Complainant states that although Respondent is well-aware (not least from the Morides Decision and the EETT Decision) that he is not entitled to use the trademark DREAMWORKS in connection with his business, he is continuing to use the disputed domain name and the content of the associated website to trade off the reputation associated with Complainant and its DREAMWORKS trademark, and to suggest that Respondent is licensed, authorized or approved by Complainant when there is no such connection.
Complainant states that its DREAMWORKS trademark was registered and used in all relevant territories for at least 15 years before the registration of the disputed domain name on March 26, 2012. Respondent cannot have acquired any prior rights to the sign ”Dreamworks” or the sign to those of Complainant. Respondent was aware of Complainant's rights in Complaint’s DREAMWORKS trademark before the application to register the disputed domain name was made because the trademark is so well-known and refers to the findings in the WIPO case DreamWorks L.L.C. v. Andrew Xu,WIPO Case No. D2004-0667; the Morides Decision and the EETT Decision. In both of the cases concerning Respondent, the adjudicators have confirmed that Complainant’s trademark DREAMWORKS has a reputation and goodwill and Respondent has deliberately sought to trade off it.
Complainant further states that Respondent does not have any connection with Complainant or any company licensed or authorized by Complainant to use Complainant’s trademark (or any of the Complainant's DREAMWORKS trade marks) in connection with any business. Complainant has never otherwise permitted Respondent to use Complainant’s trademark (or any of Complainant's DREAMWORKS trademarks) or to apply for any domain name incorporating the trademark DREAMWORKS. Respondent is not commonly known by the disputed domain name .
Complainant submits that Respondent does not and has never had any rights to use Complainant's trade or service marks (whether registered or otherwise) including the sign in any capacity or for any purpose anywhere in the world.
Complainant further submits that Respondent has never used the disputed domain name or made demonstrable preparations to use the disputed domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
Complainant states that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name
Complainant further states that Respondent's use of Complainant’s DREAMWORKS trademark in connection with the “www.” website has caused confusion in the market place and continued use of the disputed domain name will cause further confusion.
A.3. Registration in Bad Faith
Complainant states that its DREAMWORKS trademark was registered and used in all relevant territories for at least 15 years before the registration of the disputed domain name on March 26, 2012. Respondent cannot have acquired any prior rights to the sign DREAMWORKS or the sign to those of Complainant. Respondent was aware of the Complainant's rights in Complaint’s DREAMWORKS trademark before the application to register the disputed domain name was made because the trademark is so well-known and here points to the findings in DreamWorks L.L.C. v. Andrew Xu,WIPO Case No. D2004-0667; paragraph 11 of the Morides Decision and the EETT Decision. In both of the cases concerning Respondent, the adjudicators have confirmed that Complainant’s trademark DREAMWORKS has a reputation and goodwill and Respondent has deliberately sought to trade off it.
A.4. Use in Bad Faith
Complainant submits that Respondent is using the disputed domain name , the Dreamworks Businesses and the content of the website at the disputed domain name to confuse members of the public into believing that his business is connected to, or authorized or approved by, Complainant when this is not the case.
Complainant further submits that Respondent's use of the disputed domain name and the contents of the website to which the disputed domain name resolves are interfering with the lawful trade of Complainant. It is diverting traffic and interested customers from Complainant's own official websites. It is interfering with Complainant's legitimate trade and its reputation by offering products and services that are substantially inferior to those of Complainant. Members of the public are therefore confused by the registration and use of the disputed domain name into believing that Respondent and its business are licensed, authorized or approved by Complainant. This is clear evidence that the registration and use of the disputed domain name is in bad faith in line with paragraph 4(b)(iv) of the Policy.
Complainant states that Respondent has deliberately chosen to use the mark DREAMWORKS as the dominant feature of the disputed domain name to ensure its appearance on Internet searches where Internet users are looking for Complainant. Respondent is therefore using the disputed domain name to compete with Complainant's legitimate trade and advertisement of its own goods and services on its own website. Respondent has blatantly further infringed Complainant's rights by registering and using the disputed domain name after the Morides Decision and the EETT Decision. This is clear evidence that registration and use of the disputed domain name was and is made in bad faith in line with paragraph 4(b)(iii) and 4(b)(iv) of the Policy. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the disputed domain name registered by Respondent 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.
Complainant is the owner of well over a hundred trademark registrations for or including DREAMWORKS registered throughout the world including those listed in section 4, above,
Complainant's name and trade mark DREAMWORKS is prominently displayed in production and other credits in full-screen shots at the beginning of each of its films and videos and on DVD packaging and in advertising. Complainant has developed a highly successful merchandising program featuring the central characters of its films. The merchandise includes books, magazines, stationery, posters, packaging, toys, clothing, confectionary, computer games and software and DVDs. Complainant collaborates with major brands including Kellogg's, Kinder and McDonalds to advertise its films and their characters.
Numerous UDRP panels have found that Complainant’s DREAMWORKS trademarks are well known and distinctive of Complainant in relation to its goods and services. See, DreamWorks L.L.C..v. Andy Xu, WIPO Case No. D2004-0667, "Every movie buff and most of the general public throughout the world, knows that DREAMWORKS is a trade mark associated with Steven Spielberg, in turn one of the world's most famous movie directors and producers." And from the UDRP decision, Dreamworks Animation, L.L.C. v. Michael lannou,WIPO Case No. D2009-1353, "The Panel has no hesitation in finding that the trade mark DREAMWORKS both alone or in conjunction with the device, is extremely well-known around the world including in Cyprus".
The disputed domain name is comprised of Complainant’s trademark DREAMWORKS and the descriptive words “world” and “corp”. A domain name is confusingly similar to a trademark when it includes the trademark in its entirety, even if one or more generic terms is added in the disputed domain name. As the panel stated in the Morides Decision:
"The Disputed Domain Names are clearly a combination of the DREAMWORKS element with descriptive and commonplace terms, namely ‘Europe’ and ‘worldwide’... DREAMWORKS remains the dominant element in the Disputed Domain Names. The addition of descriptive and commonplace terms does nothing to prevent the confusing similarity of the Disputed Domain Names with the Trade Marks".
The EETT Decision stated, concerning the domain name that:
"The variable field of the said domain name [“”] is similar in a way that may create confusion to the indication ‘DREAMWORKS’ in which the Petitioner holds prior lawful trade mark (national and community), company name, and distinctive title rights. The addition of the suffix ‘corp’ which refers to the word corporation cannot rule out consumer confusion".
The inclusion of the top level domain descriptor “.com” in the disputed domain names does not affect a finding of confusing similarity. UDRP panels have repeatedly held that the specific top level of the domain name such as “.org”, “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar under the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525 (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name); and Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429 (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Complainant has proven on a balance of probabilities that the disputed domain name is confusingly similar to Complainant’s trademarks for or including DREAMWORKS. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s DREAMWORKS trademark.
Complainant has been using its DREAMWORKS trademark since at least 1995 to promote its goods and services. Previous UDRP panels have found the trademark DREAMWORKS to be a very well-known trademark. See, DreamWorks L.L.C. v. Andy Xu, WIPO Case No. D2004-0667, "Every movie buff and most of the general public throughout the world, knows that DREAMWORKS is a trade mark associated with Steven Spielberg, in turn one of the world's most famous movie directors and producers". And from the UDRP decision, Dreamworks Animation L.L.C. v Michael lannou,WIPO Case No. D2009-1353, "The Panel has no hesitation in finding that the trade mark DREAMWORKS both alone or in conjunction with the device, is extremely well-known around the world including in Cyprus". Respondent appears to have registered or acquired the disputed domain name over fifteen years after Complainant’s DREAMWORKS trademark became well known throughout the world, including in Greece and Cyprus. Previous UDRP panels have found that in the absence of any license or permission from a complainant to use well-known trademarks, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed. See LEGO Juris A/S v. DomainPark Ltd, David Smith, A Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138.
The disputed domain name was created on March 26, 2012, fourteen days after the decision in a case between Complainant and Respondent relating to the domain names and , where the panel found: “The Respondent does not assert that he owns rights in ‘Dreamworks’ or uses ‘Dreamworks’ himself, or that he registered the Disputed Domain Names on behalf of any other entity. The Respondent has never claimed to be affiliated with any company of a similar name.” DreamWorks Animation LLC v. Phivos Morides/ Phoebus Morides,WIPO Case No. D2012-0054. Respondent has not filed any submissions or Response in this case.
Respondent has therefore continued to use Complainant’s trademark DREAMWORKS in business names and in the disputed domain name in connection with film, television, music, entertainment and online media, goods and services that are identical to those for which Complainant is famous, and for which Complainant’s trademark DREAMWORKS is registered, despite numerous objections from Complainant.
There is no evidence that Respondent has ever been known by or used the trademark DREAMWORKS in association with its own goods or services. Respondent uses Complainant’s DREAMWORKS trademark as the only distinctive element in the webpage titled “DREAMWORKS CORP.WORLDWIDE”. However, Respondent otherwise uses “Dreamm Group”; “Dreamm”; and “dream” as its brand names. The use of Complainant’s DREAMWORKS trademark as the distinctive element of the disputed domain name and title of the webpage to which the disputed domain name resolves is not a bona fide use of the disputed domain name, as the distinctive element of the disputed domain name is confusingly similar to Complainant’s DREAMWORKS trademark. See, Swarovski Aktiengesellschaft v. Christine Jil,WIPO Case No. D2011-0981. UDRP panels have stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the [holder of the mark]”. Drexel University v. David Brouda,WIPO Case No. D2001-0067.
The Panel finds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names.
It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a domain name. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in a domain name or domain names. Once this showing is made, the evidentiary burden shifts to the respondent to demonstrate its rights or legitimate interests in the domain name. See Deutsche Telekom AG v. Britt Cordon,WIPO Case No. D2004-0487 where the panel stated,“A number of WIPO cases have established that, by virtue of paragraph 4(c) of the Policy, once a Complainant establishes a prima facie case that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent.” In this case, Respondent was given the opportunity by way of Response to demonstrate any rights or legitimate interests in the disputed domain names pursuant to paragraph 4(c) of the Policy. However, Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy.
Under the circumstances, the Panel finds that Complainant has proven on a balance of probabilities that Respondent does not have any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain name has been registered and used in bad faith.
C. 1. Registered in Bad Faith
Complainant’s DREAMWORKS trademark was registered and used in all relevant territories for at least 15 years before the registration of the disputed domain name on March 26, 2012. Respondent cannot have acquired any prior rights to the term DREAMWORKSto those of Complainant as Respondent did not commence business until 2002. Respondent must have been aware of Complainant's rights in Complaint’s DREAMWORKS trademark before the application to register the disputed domain name was effected on May 26, 2012, because the trademark was so well-known as stated in the findings in the WIPO case, DreamWorks LLC v Andrew Xu,WIPO Case No. D2004-0667; see also paragraph 11 of the Morides Decision and the EETT Decision. In both of the earlier cases in which Respondent registered a domain name incorporating “dreamworks” as the distinctive element, the adjudicators confirmed that Complainant’s trademark DREAMWORKS has a reputation and goodwill and Respondent has deliberately sought to trade off it.
C.2. Domain Name Used in Bad Faith
Paragraph 4(b)(ii) of the Policy provides that the following circumstances, in particular but without limitation shall be evidence of the registration and use of the domain name in bad faith: “you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided you have engaged in a pattern of such conduct.”
The Panel infers from the evidence submitted by Complainant and not denied by Respondent that Respondent was aware at the date of registration or acquisition of the disputed domain name of the substantial value of Complainant's DREAMWORKS trademark, and the demand for Complainant's goods and services, and registered or acquired the disputed domain name to prevent Complainant from reflecting its trademark in a corresponding domain name.
Respondent has shown a pattern of registering domain names which have been found to be confusingly similar to Complainant’s well known DREAMWORKS trademark.
Complainant first became aware of the Respondent on or about June 6, 2011, when it discovered the registration of the domain name attached tothe website “www.”. According to that website, Respondent’s “DreamWorks Corp. Worldwide” was based in London, and was the "leading company in Entertainment, Film Productions & New Media." The company's principals were the Chairman, Phivos Apolion Morides, and "his collaborator" Lydia Rodas. They claimed to have been operating under the name Dream Group Worldwide since 2001, and to have been using "DreamWorks Corp Europe" since January, 2011. At that time, the website was still under construction. Complainant's solicitors wrote to the Respondent to try to resolve this matter. After they wrote to Respondent, he registered the domain name (on August 25, 2011) and used it in connection with the same website.
The current case is the third case between Complainant and Respondent or a company Respondent operates involving domain names incorporating “dreamworks” as the distinctive part of a domain name registered by Respondent or Respondent’s company.
The first UDRP case involving Complainant and Respondent relating to domain names in which “dreamworks” is the distinctive element is DreamWorks Animation LLC v. Phivos Morides/ Phoebus Moides,WIPO Case No. D2012-0054 commenced on January 13, 2012, relating to two domain names: and . The two domain names resolved to a website which was under construction that advertised ”Dreamworks Corp Worldwide” and “Dreamworks Corp Europe”. That website offered goods and services identical to those for which Complainant’s DREAMWORKS trademarks are advertised. The panel ordered that the disputed domain names be transferred to Complainant on March 6, 2012.
The second UDRP case involving Complainant and Respondent relating to a domain name in which “dreamworks” was the distinctive element involved the domain name . The case was commenced on January 12, 2012 before the EETT. In that case, the domain name was registered by a company operated by Respondent on November 21, 2003. The Respondent’s company was “Dreamworks Corporation Hellas S.A.” a Company incorporated in Greece 2002. According to the evidence of an investigator retained by Complainant, the records in the Greek Company Registry show that since its incorporation Mr. Phoebus Morides has been the company’s President and CEO. A notice of the company’s dissolution was published on August 24, 2011. Complainant requested the EETT panel to have the domain name deleted.. Respondent did not submit any response. On May 17, 2012, EETT ordered the deletion of the domain name in the name of Respondent’s company and transfer of the domain name to Complainant. The panel found:
“Additionally, the Respondent does not have any rights or legitimate interest in the said name. On the contrary, based on the documents submitted by the Petitioner, it is evidenced that the Respondent was founded in 2002 (FEK 9437/10-10-2002), i.e., after the Petitioner was incorporated and after its trademarks were registered and its movies were released in Greece and worldwide. The Respondent has not published any financial statement since 2005. On 5-9-2011 the Respondent was reported as having significant debts to the Greek State according to the relevant list published in the website of the Ministry of Finance that was submitted by the Petitioner. Furthermore, the domain name in question is not used today by the Respondent since the relevant website is inactive.”
The third UDRP case involving Complainant and Respondent relating to a domain name in which “dreamworks” is the distinctive element is the current case. Respondent persisted in registering domain names incorporating “dreamworks” as the distinctive element after receiving cease and desist letters from Complainant and after orders from a UDRP panel ordering the transfer of the domain names and . More particularly, Respondent registered the disputed domain name after receiving a cease and desist letter from Complainant advising Respondent of Complainant’s registrations of its well-known DREAMWORKS trademarks and requesting transfer of the domain name . Further, Respondent registered the disputed domain name after being served with the Petition by Complainant to EETT to have the domain name deleted from the register.
The Panel finds that Complainant has proven on a balance of probabilities that Respondent registered the disputed domain name in order to prevent Complainant from reflecting its trademarks in a corresponding domain name within the meaning of paragraph 4(b)(ii) of the Policy.
Paragraph 4(b)(iv) of the Policy provides that using a domain name to intentionally attempt to attract Internet users to your website for commercial gain by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of a respondent’s website constitutes evidence of bad faith use of a domain name.
The disputed domain name resolves to a webpage featuring the title “DREAMWORKS CORP. ® WORLDWIDE”. The distinctive portion of the title is “DREAMWORKS”, which is identical to Complainant’s well-known trademark which was registered and had been well-known for over fifteen years before the disputed domain name was registered. The webpage at the disputed domain name promotes goods and services similar to the goods and services covered by Complainant’s DREAMWORKS trademark registrations and offered and sold by Complainant in association with its trademark. The use of the recognized registered trademark as part of the title, the Panel finds likely leads the pubic to assume that Respondent is a permitted user of Complainant’s well-known trademark. Complainant’s evidence is that searches conducted by Complainant did not disclose any trademark registrations by Respondent relating to the term “dreamworks”. Respondent did not contest the results of Complainant’s trademark searches.
Respondent has not used the term “dreamworks” as its brand name for its goods and services but has used the terms ”DREAMM Group”; “dreamm”; and “dream” as brand names for its goods and services. Beneath the title “DREAMWORKS CORP. ® WORDWIDE” on the webpage at the dispute domain name, is a horizontal list of links including the terms “our dream”, “idreamm”, “dream movies”, “dream studios, “ur biz dream” “dream shop” and “dream jobs”. The links resolve to entertainment, film production, animation and new media services, goods and services that are identical to those for which Complainant’s DREAMWORKS trademarks are registered in Classes 9 and 41, and for which goods and services Complainant is well known. Respondent's use of Complainant’s trademark DREAMWORKS in the disputed domain name and on the webpage enables Respondent to draw Internet users to its websites for profit by misleading Internet users into believing that Respondent and its business are licensed, authorized or approved by Complainant.
The Panel finds that Complainant has proven on a balance of probabilities that Respondent has also used the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy, and that Complainant satisfies the requirement under paragraph 4(a)(iii) of the Policy. 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 disputed domain name, be transferred to Complainant.
Ross Carson
Sole Panelist
Date: December 1, 2012
Full & Egal Universal Law Academy