Complainant is Universal City Studios LLC of Universal City, California, United States of America, represented by Manatt, Phelps & Phillips, LLP, United States of America.
Respondent is Vo Cong Danh of Vinh, Viet Nam. 2. The Domain Names and Registrar
The disputed domain names and are registered with BigRock Solutions Pvt Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2015. On November 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 21, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on November 26, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2015.
On December 15, 2016 Complainant requested the suspension of the proceeding for thirty days. On the same date the Center notified the Parties that the proceeding was suspended until January 14, 2016. On January 13, 2016 Complainant requested the proceeding be reinstituted.
On January 18, 2016 the Center notified the Parties that the proceeding was reinstituted and that the due date for Response was January 20, 2016. Respondent did not submit any response. Accordingly, the Center notified the Parties of the commencement of the panel appointment process on January 25, 2016.
The Center appointed Dietrich Beier as the sole panelist in this matter on January 29, 2016. 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, through its related companies and licensees, is one of the world’s oldest and leading film studios. It is in the business of producing, marketing, and distributing motion pictures, other entertainment-related goods and services, and a broad variety of related consumer products and services. Complainant is the owner of the Despicable Me/Minions motion picture franchise encompassing the film titles “Despicable Me”, “Despicable Me 2” and “Minions”, and the owner of the related trademarks covering an extensive range of goods and services branded under a series of DESPICABLE ME and/or MINION formative marks, including but not limited to DESPICABLE ME, DESPICABLE ME MINION MADE & Design, DESPICABLE ME MINION MAYHEM, MINIONS, and MINION RUSH. Minions are characters in the forementioned movies.
In particular, Complainant is the owner of, inter alia, several trademark registrations worldwide for the trademark MINIONS, such as German trademark 302014049071 MINIONS in classes 41, 09, 16, 18, 25, 28, 30, registered on January 6, 2015.
The disputed domain name was registered on September 15, 2015. The disputed domain name was registered on June 5, 2015. The movie “Minions” was released in Viet Nam on June 10, 2015.
The disputed domain names resolve to a website offering digital “wallpapers” that can be downloaded for use as the background on display screens on electronic and mobile devices, among other uses. 5. Parties’ Contentions A. Complainant
Complainant is of the view that the disputed domain names are confusingly similar to Complainant’s well-known and famous DESPICABLE ME/MINIONS family of marks, including but not limited to its registered MINIONS word marks.
Further, in Viet Nam - where Respondent is believed to be a resident and/or operate its principal place of business, and operate Respondent’s site - Complainant’s film “Despicable Me 2” was the biggest opening ever for an animated film, and it stands as the 26th highest grossing film of all time worldwide. Also, Complainant’s film “Minions” opened in Viet Nam on July 10, 2015 and earned over USD 4.1 million there in just over two months. The “Minions” film was so popular in Viet Nam, that VietJet, Viet Nam’s first privately owned airline, transformed its fleet of planes with various images and designs from the “Minions” film, and even featured “Minions” characters on board to greet passengers, present gifts and pose for photos on a special flight.
Complainant’s release of “Minions” is the fourth top grossing film worldwide in 2015. In just five months of being released, the “Minions” film alone has grossed over USD 1.1 billion, making it the tenth highest-grossing film of all time and the second highest-grossing animated film of all time.
Respondent’s addition of the term “wallpaper” to the disputed domain names does not distinguish the disputed domain names from Complainant’s famous MINIONS marks because “wallpaper,” being the term for images used as background screen displays for electronic and mobile devices, is merely descriptive of the type of goods Respondent offers and/or distributes on Respondent’s site.
Respondent has no rights or legitimate interests with respect to the disputed domain names. Complainant has been the exclusive owner of the Despicable Me/Minions franchise and related DESPICABLE ME/MINIONS family of marks throughout the world since at least 2010. Respondent has not been authorized or licensed by Complainant to use any of the DESPICABLE ME/MINIONS marks.
Respondent is not making a legitimate noncommercial or fair use of the disputed domain names. Respondent is using the disputed domain names solely to capitalize upon the reputation and goodwill of the DESPICABLE ME/MINIONS family of marks to divert Internet users who are fans of, or interested in, the Despicable Me/Minions film franchise to Respondent’s site. Respondent uses Respondent’s site to generate revenue by promoting and distributing Respondent’s goods that make unauthorized and infringing use of Complainant’s copyrighted “Despicable Me” and “Minions” images.
Respondent’s exploitation of Complainant’s famous DESPICABLE ME/MINIONS family of marks is to intentionally divert consumers from Complainant’s legitimate sites to Respondent’s site. From Respondent’s site, these deceived and misled customers then may view, download and/or use Respondent’s goods which infringe on Complainant’s rights, which demonstrates that Respondent has not made any use of, or any demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services.
Further, Respondent is not commonly known by the disputed domain names or any similar name.
The disputed domain names were registered and are being used in bad faith for several reasons. Respondent certainly had notice of Complainant’s DESPICABLE ME/MINIONS family of marks when it registered and used the disputed domain names.
There is no reasonable chance that Respondent chose the disputed domain names innocently or fortuitously. As demonstrated above, the Despicable Me/Minions franchise is among the most famous and successful entertainment properties of all time.
Accordingly, there is no question that Respondent had notice that the disputed domain names are identical or confusingly similar to Complainant’s DESPICABLE ME/MINIONS family of marks and the disputed domain names were registered and are being used in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant has established the fact that it has valid trademark rights for MINIONS in several classes. The disputed domain names are confusingly similar to these marks since the addition of “wallpaper” being the term for images used as background screen displays for electronic and mobile devices is of a purely descriptive nature and does not change the overall impression created by the dominating element “minions” and “minion”.
The Panel therefore considers the disputed domain names to be confusingly similar to the MINIONS trademarks in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Respondent has no rights or legitimate interests in the disputed domain names, since Respondent is not a licensee of Complainant nor has Complainant granted any permission or consent to Respondent to use its trademarks. Furthermore, Respondent has no rights or legitimate interests in the disputed domain names, since there is no indication that Respondent is commonly known by the name “minions” or “minion” or that Respondent is using the disputed domain names in connection with a bona fide offering of goods or services.
The Panel therefore finds that Respondent does not have rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
Due to the enormous success of the movie “Minions” and the related nature of the MINIONS mark as widely known, Respondent must have been aware of Complainant and its trademarks when registering the disputed domain names. Complainant has not authorized Respondent to make use of its mark. This Panel does not see any conceivable legitimate use that could be made by Respondent of these particular domain names without Complainant’s authorization.
The circumstances of this case, in particular the temporal relation of the registration of the disputed domain names to the release of the “Minions” movie shows bad faith at the time of registration and use of the disputed domain names by attempting to attract, for commercial gain, Internet users to its website or other online locations, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such website or location, or of a product or service on such website or location. The Panel therefore considers the disputed domain names to have been registered and used in bad faith in accordance with 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 names and be transferred to Complainant.
Dietrich Beier
Sole Panelist
Date: February 11, 2016
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