Complainant is DreamWorks Animation L.L.C. of Glendale, California, United States of America (“U.S.”), represented by Seyfarth Shaw of Los Angeles, California, U.S.
Respondent is African American Film Network of Bakersfield, California, U.S. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2013. On August 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 23, 2013, the Registrar transmitted its verification response by email to the Center confirming Respondent as the registrant and provided 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 4, 2013. In accordance paragraph 5(a) of the Rules, the due date for Response was September 24, 2013. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 25, 2013.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on September 27, 2013. 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 paragraph 7 of the Rules. 4. Factual Background
Complainant states that its “predecessor-in-interest and licensees, including DreamWorks L.L.C., have produced and/or distributed numerous commercially-successful and critically-acclaimed live action motion pictures, including Road to Perdition, Minority Report, A Beautiful Mind, A.I. Artificial Intelligence, Cast Away, The Legend of Bagger Vance, Gladiator, American Beauty, Amistad, Saving Private Ryan, Deep Impact, Catch Me If You Can, Seabiscuit, Collateral, Munich, Dreamgirls, Transformers, and Sweeney Todd, the Demon Barber of Fleet Street, among others”. Complainant further states that “[l]ive action films produced and/or distributed by Complainant’s predecessors-in-interest and licensees have grossed many hundreds of millions of dollars in the United States through theatrical and television exhibition and videocassette and DVD distribution, and have been viewed by many hundreds of millions of persons in the United States”.
Complainant further states that “its predecessors-in-interest have also produced and/or distributed numerous animated films, including Spirit, Stallion of the Cimarron, Shrek, Shrek 2, Shrek the Third, Shrek Forever After, Chicken Run, Antz, The Road to El Dorado, Prince of Egypt, Madagascar, Madagascar: Escape 2 Africa, Madagascar 3: Europe’s Most Wanted, Over the Hedge, Flushed Away, Bee Movie, How to Train Your Dragon, Puss in Boots, Megamind, Kung Fu Panda, Kung Fu Panda 2, Rise of the Guardians, The Croods, and Turbo, among others”. Complainant further states that “[a]nimated films produced and/or distributed by Complainant and its predecessors-in-interest have grossed many hundreds of millions of dollars in the United States through theatrical and television exhibition and videocassette and DVD distribution, and have been viewed by many hundreds of millions of persons in the United States”.
Complainant further states that in March 2011, it announced that it would release a film titled Turbo in June 2013, that the film was released in July 2013, and that the film grossed approximately USD125 million worldwide in the first weeks following its release.
Complainant further states that it owns numerous trademark registrations for DREAMWORKS in the U.S., including the following (which was supported by a copy of the relevant certificate of registration): U.S. Registration Number 2,457,467 for DREAMWORKS for use in connection with, among other things, “prerecorded video tapes containing motion pictures” (registered June 5, 2001; first used on commerce in August 1996). This mark and the others identified by Complainant are referred to hereafter as the “DREAMWORKS Trademark”. Complainant also states (and provided a copy of the relevant certificate of registration) that it owns U.S. Registration Number 4,384,541 for the mark DREAMWORKS TURBO RACING LEAGUE and design for use in connection with, among other things, “computer game software for wireless and electronic mobile devices” (registered on August 13, 2013; first used in commerce on May 16, 2013).
The Disputed Domain Name was created on March 24, 2013.
According to Complainant, the website associated with the Disputed Domain Name previously “resolved to a website that exactly replicated Complainant’s official website at … [which was] achieved by a process known as ‘framing’”. Complainant further states that after it made repeated attempts to contact Respondent about the Disputed Domain Name, the website associated with the Disputed Domain Name “began to resolve to the website of the African American Film Association”. 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the DREAMWORKS Trademark because it contains the DREAMWORKS Trademark plus the title of Complainant’s most recent film.
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Complainant has never licensed or authorized Respondent to use the “DREAMWORKS” mark in the disputed domain name”; “[t]here can be no bona fide offering of goods or services here because Respondent obviously knew of Complainant’s ‘DREAMWORKS’ mark and its Turbo film when Respondent adopted the disputed domain name and used it to resolve to a website with an embedded link to Complainant’s website”; “[t]he disputed domain name has resolved to the website of the African American Film Association only since sometime after Respondent received Complainant’s protest letter, precluding any claim that the disputed domain name has been used ‘in connection with a bona fide offering of goods or services’ from a time ‘before any notice of the dispute’”; and Respondent is identified as “African American Film Network,” not “Dreamworks Turbo”.
- Respondent registered and is using the Disputed Domain Name in bad faith because, inter alia, “[t]here is no reasonable explanation for Respondent’s ‘framing’ of Complainant’s website except that the Respondent seeks to exploit the reputation and goodwill of the Complainant’s marks by attracting Internet traffic to Respondent’s website or to mislead customers to believe that the Complainant is in some way associated with the Respondent’s website” (internal punctuation and citation omitted); “Respondent has also completely ignored Complainant’s counsel’s letter and subsequent e-mails requesting transfer of the disputed domain name to Complainant”; and Respondent has engaged in a pattern of conduct by registering the domain names , and , which, like the Disputed Domain Name, utilize framing. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (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. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the DREAMWORKS Trademark. This finding is consistent with other decisions under the Policy. See, e.g., Dreamworks Animation, L.L.C. v. Michael lannou,WIPO Case No. D2009-1353 (“[t]he Panel has no hesitation in finding that the trade mark DREAMWORKS… is extremely well-known around the world”).
As to whether the Disputed Domain Name is identical or confusingly similar to the DREAMWORKS Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “dreamworksturbo”), as it is well-established that the top-level domain (i.e., “.com”) should be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2 (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark”).
Further, the addition of certain words, as here (that is, “turbo”), can “exacerbate[] the confusing similarity between the [Complainant’s] trademark and the Domain Name and increase[] the risk of confusion between the Domain Name and the… trademarks”. Costco Wholesale Corporation and Costco Wholesale Membership, Inc. v. Kenneth Terrill,WIPO Case No. D2010-2124 (citing Playboy Enterprises International, Inc. v. John Taxiarchos,WIPO Case No. D2006-0561 (citing Yellow Corporation v. MIC,WIPO Case No. D2003-0748 (“when a domain name is registered which is a well-known trademark in combination with another word, the nature of the other word will largely determine the confusing similarity”)).
Here, because the word “turbo” is associated with Complainant – and, indeed, is part of U.S. Registration Number 4,384,541, which includes both the DREAMWORKS Trademark as well as the word “turbo” – this word increases the confusing similarity between the Disputed Domain Name and Complainant’s trademark. See, e.g., Gateway Inc. v. Domaincar,WIPO Case No. D2006-0604 (finding the domain name confusingly similar to the trademark GATEWAY because the domain name contained “the central element of the Complainant’s GATEWAY Marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business”).
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that, inter alia, “Complainant has never licensed or authorized Respondent to use the “DREAMWORKS” mark in the disputed domain name”; “[t]here can be no bona fide offering of goods or services here because Respondent obviously knew of Complainant’s ‘DREAMWORKS’ mark and its Turbo film when Respondent adopted the disputed domain name and used it to resolve to a website with an embedded link to Complainant’s website”; “[t]he disputed domain name has resolved to the website of the African American Film Association only since sometime after Respondent received Complainant’s protest letter, precluding any claim that the disputed domain name has been used ‘in connection with a bona fide offering of goods or services’ from a time ‘before any notice of the dispute’”; and Respondent is identified as “African American Film Network”, not “Dreamworks Turbo”.
Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP”. WIPO Overview 2.0, paragraph 2.1.
Accordingly, as a result of Complainant’s allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant 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 registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
However, as Complainant has correctly observed, “the four criteria set forth in the Policy paragraph 4(b) are nonexclusive. In addition to these criteria, other factors alone or in combination can support a finding of bad faith” (Internal punctuation and citations omitted).
Here, the Panel agrees with the decision cited by Complainant, Deutsche Telekom AG v. Heihachi Ltd WHOIS-PROTECTION,WIPO Case No. D2010-1225, in which the panel found bad faith where the respondent was using a framing technique. In that case, the panel found “that there is no reasonable explanation for such use of the disputed domain name except that the Respondent seeks to exploit the reputation and goodwill of the Complainant’s marks by attracting Internet traffic to the Respondent’s website or to mislead customers to believe that the Complainant is in some way associated with the Respondent’s website”. The same applies here.
Accordingly, the Panel finds that Complainant has proven the third element 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.
Douglas M. Isenberg
Sole Panelist
Date: October 11, 2013
Full & Egal Universal Law Academy