Complainant is Miramax Film NY, LLC of Santa Monica, California, United States of America, represented by CSC Digital Brand Services AB, Sweden.
Respondent is Roland Gieffer of Paris, France. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with 1&1 Internet AG (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 12, 2016. On February 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 18, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On February 19, 2016, the Center informed the Parties that the Complaint had been submitted in English and that according to the concerned registrar, the language of the registration agreement for the Disputed Domain Name is French. The Center requested Complainant to provide: (1) satisfactory evidence of an agreement between Complainant and Respondent to the effect that the proceeding should be in English; or (2) submit the Complaint translated into French; or (3) submit a request for English to be the language of the administrative proceeding. On February 22, 2016, Complainant submitted a request for English to be the language of proceeding. Respondent did not reply.
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 in English and French, and the proceeding commenced on March 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 21, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 22, 2016.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on April 4, 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, Miramax Film NY, LLC, is the parent company of Miramax, LLC, a global film and television studio headquartered in Santa Monica, California, United States of America, which produces numerous film and television projects.
Through its subsidiary Miramax, LLC, Complainant is the holder of, inter alia, the following registered trademarks:
- MIRAMAX, word mark, registered with the EUIPO under No. 001794361 on February 12, 2004 in classes 9, 16, 35, 38, 41 and 42;
- MIRAMAX, word mark, registered with the EUIPO under No. 012741121 on August 22, 2014 in classes 9, 14, 16, 18, 21, 25, 28 and 41.
Complainant has used the MIRAMAX trademark since at least 2001 for a wide range of products and services related to entertainment.
The Disputed Domain Name was registered on October 6, 2015, and has been used to redirect to the Complainant's website. The Panel notes that the Disputed Domain Name now refers to an error page. 5. Parties' Contentions A. Complainant
Complainant considers the Disputed Domain Name to be confusingly similar to trademarks and service marks in which it claims to have rights. Complainant argues that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to Complainant, Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to Complainant, Respondent has not been commonly known by the Disputed Domain Name. Complainant claims that the Disputed Domain Name was registered and used in bad faith. Complainant claims that Respondent is using the Disputed Domain Name to fraudulently pose as Complainant for purposes of launching a phishing attack. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings 6.1. Language of the proceeding
As the Complaint was not filed in the language of the Registration Agreement and the Parties did not agree on the language of the administrative proceeding, the Panel may decide on the language of the administrative proceeding, having regard to the circumstances of the administrative proceeding. Indeed, paragraph 11(a) of the Rules reads: "Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding".
The Panel is satisfied that both parties speak and write English. From the record, it appears that emails sent from an address linked to the Disputed Domain Name are in English. Therefore, the Panel finds that this shows that Respondent has a sufficient understanding of English.
Accordingly, the use of the English language in the proceeding would not be prejudicial to the interests of Respondent, whereas it would be a disadvantage for Complainant to be forced to translate the Complaint. Therefore, the Panel decides to use the English language in the present proceeding (See e.g., The Dow Chemical Company v. Hwang Yiyi,WIPO Case No. D2008-1276, decision according to which, "where [a] respondent can clearly understand the language of the complaint, and the complainant would be disadvantaged by being forced to translate, the language of proceedings can remain the language of the complaint, even it is different to the language of the registration agreement"). 6.2. Substantive elements of the Policy
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus for Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
i. the Disputed Domain Name 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 Panel will deal with each of these requirements in turn. A. Identical or Confusingly Similar
To prove this element, Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant has clearly established that there are MIRAMAX trademarks in which it has rights. The trademarks have been registered and used in various countries.
The Disputed Domain Name reproduces Complainant's trademark MIRAMAX in its entirety, adding a hyphen and the generic term "production". The Panel is of the opinion that the mere addition of non-distinctive text and a hyphen to a complainant's trademark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy (See Karen Millen Fashions Limited v. Akili Heidi,WIPO Case No. D2012-1395, where the domain name was held to be confusingly similar to the KAREN MILLEN trademark; Belstaff S.R.L. v. Jason Lau, Sharing,WIPO Case No. D2012-0783, where the domain name was held to be confusingly similar to the BELSTAFF trademark; Lime Wire LLC v. David Da Silva/C,WIPO Case No. D2007-1168, where the domain name was held to be confusingly similar to the LIME WIRE trademark, especially with addition of the word "download" because users typically download complainant's software). The addition of the word "production" may even add to the confusing similarity, taken into account Complainant's film and television production services provided under its MIRAMAX trademark.
Accordingly, Complainant has made out the first of the three elements of the Policy that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant has the burden of establishing that a respondent has no rights or legitimate interests in respect of a domain name.
Prior decisions under the Policy have established that it is sufficient for a complainant to make a prima facie showing that a respondent has no rights or legitimate interests in a domain name in order to place the burden of production on a respondent. See, Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
The Panel notes that Respondent has not apparently been commonly known by the Disputed Domain Name and that Respondent does not seem to have acquired trademark or service mark rights. Respondent's use and registration of the Disputed Domain Name was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent existed.
In addition, the Panel is of the opinion that Respondent is not "making a legitimate noncommercial or fair use of the domain name[s], without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue". Policy, paragraph 4(c)(iii). It appears that Respondent has been trying to impersonate the Complainant by using the Disputed Domain Name to redirect to Complainant's website. The Complainant provides a copy of at least one email sent from an address linked to the Disputed Domain Name, which includes the MIRAMAX trademark and even mentions the address of Complainant's registered offices. According to the Panel, this email constitutes at least an indication of phishing.
Finally, the Panel notes that Respondent did not respond to the Complaint.
Therefore, the Panel finds that Complainant has established that Respondent has no rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
Complainant must prove on the balance of probabilities that the Disputed Domain Name was both registered in bad faith and is being used in bad faith. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052.
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use are the registration of a domain name primarily for the purpose of disrupting the business of a competitor and the use of the domain name with the intention to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the respondent's website or location. The passive holding of a domain name can constitute bad faith use, especially when combined with other factors such as the respondent preventing a trademark or service mark holder from reflecting its mark in a corresponding domain name, the failure of the respondent to respond to the complaint, inconceivable good faith use, etc. See, e.g., Telstra Corporation Limited, supra; Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763.
In the present case, given the notoriety of Complainant's trademark, it is inconceivable to this Panel that Respondent was unaware of Complainant and its trademark rights when it registered the Disputed Domain Name.
In addition, the Panel finds that the undisputed allegation of phishing and the evidence submitted in support of phishing, combined with the likelihood of confusion, is sufficient evidence of bad faith. The fact that the Disputed Domain Name was routed to an inactive website after the Complaint was filed is further evidence of bad faith usage. It seems likely, as Complainant alleges, that Respondent intentionally attempted to deceive consumers into providing personal and financial information, believing that Respondent was associated with the bona fide services offered by Complainant (See Accor v. SANGHO HEO / Contact Privacy Inc.,WIPO Case No. D2014-1471).
According to the Panel, this evidences bad faith registration and use pursuant to paragraphs 4(b)(iv) of the Policy.
Finally, by failing to respond to the Complaint, Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate.
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used 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 Disputed Domain Name be transferred to Complainant.
Flip Jan Claude Petillion
Sole Panelist
Date: April 18, 2016
Full & Egal Universal Law Academy