The Complainant is Paramount Pictures Corporation, of Los Angeles, California, United States of America ("United States"), represented by RGC Jenkins & Co., United Kingdom of Great Britain and Northern Ireland ("United Kingdom").
The Respondent is Adrian White of Kent, United Kingdom. 2. The Domain Names and Registrar
The disputed domain names:
are registered with GoD, LLC 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 8, 2015. On September 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 10, 2015, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 18, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 9, 2015.
The Center appointed Edoardo Fano as the sole panelist in this matter on October 16, 2015. 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.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), "to employ reasonably available means calculated to achieve actual notice to Respondent". Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent.
The language of the proceeding is English, being the language of the Registration Agreement as per paragraph 11(a) of the Rules. 4. Factual Background
The Complainant is Paramount Pictures Corporation, a widely known movie production studio and distribution which celebrated its centenary in 2012. In October 2012 the Complainant communicated to the press its plans to build a PARAMOUNT theme park, called "The London Paramount Theme Park" in the region of Kent, very close to the Respondent's address. The news coverage was wide and going on until this year and the Theme Park is promoted at the website "".
The Complainant owns several trademarks, among which:
- Community Trademark Registration No. 5202395 for PARAMOUNT, registered on July 2, 2007;
- United Kingdom Trademark Registration No. 2633984 for LONDON PARAMOUNT, registered on January 25, 2013;
- Community Trademark Registration No. 11171337 for LONDON PARAMOUNT, registered on May 6,, 2013.
The Complainant provided evidence in support of the above.
The disputed domain names , , , and were registered on March 31, 2015. At the time of filing of the Complaint, the disputed domain names resolved to commercial parking websites with sponsored links, some of them operating in the same field as the Complainant.
On May 22, 2015 the Complainant sent a letter to the Respondent requesting the voluntary transfer of the disputed domain names. The Respondent did not reply. 5. Parties' Contentions A. Complainant
The Complainant states that the disputed domain names , , , and are confusingly similar to its trademarks, being PARAMOUNT the distinctive element of the disputed domain names and of the Complainant's trademarks, while the phrases "London Bookings", "London Properties", "London Property", "London Rooms" and the misspelled phrase "London Them Park" are only descriptive.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names since it has not been authorised by the Complainant to register the disputed domain names or to use its trademarks within the concerned websites, nor are the websites offering bona fide goods for sale.
The Complainant submits that the Respondent has registered and is using the disputed domain names in bad faith, since they were registered with the only purpose to disrupt the business of the Complainant and attracting Internet users for commercial gain by creating confusion with the Complainant's trademarks. B. Respondent
The Respondent has made no reply to the Complainant's contentions and is in default. In reference to paragraphs 5(e) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record.
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences by the panel, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy,WIPO Case No. D2003‑0109; SSL INTERNATIONAL PLC v. MARK FREEMAN,WIPO Case No. D2000-1080; ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al.,WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A.,WIPO Case No. D2007‑0288). 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements, which a complainant must satisfy in order to succeed:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(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. A. Identical or Confusingly Similar
The Panel finds that the Complainant is the owner of the trademarks PARAMOUNT and LONDON PARAMOUNT both by registration and acquired reputation and that the disputed domain names , , , and are confusingly similar to the trademarks PARAMOUNT and LONDON PARAMOUNT.
Regarding the addition of the generic words "bookings", "properties", "property", "rooms" and the misspelled generic wording "them park", the Panel notes that it is now well established that the addition of generic terms to a domain name does not necessarily distinguish the domain name from a trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti,WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003‑0709; America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713). The addition of the words "bookings", "properties", "property", "rooms" and the misspelled wording "them park" does not therefore prevent the disputed domain name from being confusingly similar to the Complainant's trademark, also considering that all these generic words refer to a recent initiative of the Complainant, that is the creation of a Theme Park to be called "London Paramount Theme Park".
It is also well accepted that a generic Top-Level Domain ("gTLD") suffix, in this case ".com", may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v. V,WIPO Case No. D2000-0607).
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain names are confusingly similar to the Complainant's trademarks, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Respondent has failed to file a Response in accordance with the Rules, paragraph 5.
The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. It asserts that the Respondent is not using the disputed domain names for a legitimate non-commercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain names. However, the Respondent has not presented any evidence of any rights or legitimate interests he may have in the disputed domain names.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that "for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the respondent has] registered or 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that [the respondent 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 respondent has] engaged in a pattern of such conduct; or
(iii) that [the respondent has ] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] web site 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 respondent's] website or location or of a product or service on [the respondent's] web site or location."
Regarding the registration in bad faith of the disputed domain names, the reputation of the Complainant's trademark PARAMOUNT is clearly established and the Panel finds that the Respondent knew that the disputed domain names , , , and are confusingly similar to the Complainant's trademarks PARAMOUNT and LONDON PARAMOUNT at the time of registration. This is also confirmed by the fact that the generic words added to the Complainant's trademarks PARAMOUNT and especially LONDON PARAMOUNT in the disputed domain names, namely "bookings", "properties", "property", "rooms" and the misspelled "them park", all refer to the "London Paramount Theme Park" that the Complainant plans to build very close to the Respondent's location, as recently advertised in local and national press all over the United Kingdom.
Regarding the use in bad faith, the websites at the disputed domain names are pages with several "pay per click" links, possibly automatically generated, some of them referring to the business activity of the Complainant in relation to the "London Paramount Theme Park".
Therefore, the Panel considers that this use of the websites associated with the disputed domain names must be considered to be in bad faith, on the one hand because of the "pay per click" links, even in the case where they are automatically generated because they are referring to one of the business activities of the Complainant and are therefore likely to create confusion. On the other hand Internet users are drawn to the Respondent's websites due to the initial interest confusion. See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraphs 2.6 and 3.8.
All of the above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain names in order to attract, for commercial gain, Internet users to its websites in accordance with paragraph 4(b)(iv) of the Policy.
The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain names in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names , , , and be transferred to the Complainant.
Edoardo Fano
Sole Panelist
Date: October 30, 2015
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