The Complainant is Panavision International, L.P. and Panavision Inc. of Woodland Hills, California, United States of America (“United States” or “U.S.”) (collectively the “Complainant”), represented by Bryan Cave, LLP, United States.
The Respondent is Susan S. Maddox of McLaughlin, South Dakota, United States. 2. The Domain Name and Registrar
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 December 15, 2016. On December 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 December 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2017.
The Center appointed Andrew J. Park as the sole panelist in this matter on January 19, 2017. 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
The Complainant is the world’s leading provider of ultra-precision digital imaging and visual cinematographic equipment, including cameras, optical lenses, camera cranes, photographic equipment, lighting, and other film and digital imaging equipment for the motion picture, television, and related industries in the United States and worldwide.
The Complainant has won numerous prestigious awards, including “Oscar” awards from the American Academy of Motion Picture Arts and Sciences, and “Emmy” awards from the Academy of Television Arts & Sciences.
Since at least as early as 1954, the Complainant has continuously used the PANAVISION mark in connection with motion picture cameras, lenses, and a host of related goods and services. The Complainant holds numerous registrations for variations of the trademark PANAVISION in the United States (the Respondent’s home country) and worldwide, including the following relevant United States and South African trademark registrations:
1. PANAVISION (Stylized) (U.S. Registration No. 627,362) registered on May 22, 1956 for “anamorphosers that are used in the projection and taking of motion pictures” in International Class 9;
2. PANAVISION (U.S. Registration No. 845,014) registered on February 27, 1968 for “motion picture films produced by special purpose or conventional lenses supplied by applicant” in International Class 16;
3. PANAVISION (U.S. Registration No. 834,705) registered on September 5, 1967 for “motion picture cameras and lenses therefor, and associated photographic equipment” in International Class 9;
4. PANAVISION (U.S. Registration No. 1,160,790) registered on July 14, 1981 for “television cameras” in International Class 9;
5. PANAVISION (Stylized) (U.S. Registration No. 1,972,238) registered on May 7, 1996 for “motion picture cameras and lenses therefore; and a full line of cinematographic equipment, and release prints” in International Class 9;
6. PANAVISION (Stylized) (U.S. Registration No. 3,128,333) registered on August 15, 2006 for “digital cameras; video cameras” and multiple other goods in International Class 9;
7. PANAVISION (U.S. Registration No. 3,184,442) registered on December 12, 2006, for “imaging sensors” in International Class 9;
8. PANAVISION (U.S. Registration No. 3,447,278) registered on June 17, 2008 for “digital cameras; video cameras” and multiple other goods in International Class 9;
9. PANAVISION (Stylized) (U.S. Registration No. 4,022,955) registered on September 6, 2011 for “projection equipment, namely, film projectors and digital projectors” in International Class 9;
10. PANAVISION (South Africa Registration No. 1966/02061) registered on November 3, 1966 for “Photographic equipment, including motion picture cameras and lenses therefor, anamorphic lenses, and motion picture release prints” in International Class 9.
Since at least as early as 1998, the Complainant has maintained an active presence on the Internet, including through , where it promotes its digital imaging and cinematographic equipment and related products in connection with the PANAVISION marks. The Complainant also owns numerous relevant domain names, including the following:
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The disputed domain name was registered on October 6, 2016. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name should be transferred to the Complainant because:
1) the disputed domain name is confusingly similar to the Complainant’s PANAVISION trademark and infringes upon the Complainant’s exclusive and undisputable rights in and to the mark. The disputed domain name includes the Complainant’s PANAVISION mark in its entirety and the only difference is the additional descriptor “Afro” to the disputed domain name. The said descriptor means “of or connected to Africa”, and therefore it enhances confusion since the Complainant owns a trademark registration for its PANAVISION mark in South Africa and offers goods and services in South Africa.
2) the Respondent is not authorized by the Complainant to use the disputed domain name; the Complainant’s trademarks and service marks are known; there is no indication that the Respondent is known under the disputed domain name; the disputed domain name is identical or confusingly similar to the Complainant’s mark and serves as a “bait” to attract customers to the Respondent’s site; and the disputed domain name is primarily descriptive of the Complainant’s services as it incorporates the Complainant’s trademark and service mark.
3) the disputed domain name was registered and is being used in bad faith. The Respondent’s bad faith is evidenced by the content at the disputed domain name, which is sexual in nature and is therefore designed to disrupt and harm the Complainant’s business and will tarnish the Complainant’s reputation and goodwill. The Respondent’s bad faith is further evidenced by the fact that the content at the disputed domain name bears no relationship to the disputed domain name. That is, the content at the disputed domain name is not related to subject matter that is connected to Africa. In addition, the Respondent has no legitimate trademark, service mark, or other intellectual property rights in or to the disputed domain name. Finally, the Complainant’s trademark, PANAVISON was registered nearly fifty years before the Respondent became the owner of the disputed domain name and therefore the Respondent knew of the Complainant’s ownership of the PANAVISION mark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three requirements which have to be met for the Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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.
The Panel has 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, pursuant to paragraph 15(a) of the Rules. In accordance with paragraphs 5(f) and 14(b) of the Rules, if the Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. A. Identical or Confusingly Similar
This elements consists of two parts; first, whether the Complainant has rights in a relevant trademark and, second, whether the disputed domain name is identical or confusingly similar to that trademark.
The Panel finds that the Complainant has established registered rights in the PANAVISION mark and that the disputed domain name is confusingly similar to the Complainant’s PANAVISION trademark. The Panel accepts the Complainant’s claim that the descriptor “Afro” means “of or connected to Africa”. Thus, it only serves to add confusion, rather than distinguishing the disputed domain name from the Complainant’s PANAVISION mark since the Complainant has established connections with South Africa through its offerings of goods and services bearing the PANAVISION mark in that country.
Further, a Top-Level Domain such as “.com” in a domain name may be disregarded when assessing whether a domain name is identical of confusingly similar to a trademark (Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182).
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see, e.g., Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009; Isabelle Adjani v. Second Orbit Communications, Inc.,WIPO Case No. D2000-0867). The Complainant should nevertheless make out a prima facie case that the Respondent lacks rights or legitimate interests (see 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).
Here, the Panel finds that the Complainant has made out an unrebutted prima facie case.
The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its trademarks. There is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name without intent to tarnish the Complainant’s trademark, or has been commonly known by the disputed domain name. Also, there is no evidence that the Respondent has an intention to use the disputed domain name in connection with a bona fide offering of goods or services. The Panel’s view is that these facts may be taken as true in the circumstances of this case since they have not been denied by the Respondent.
The disputed domain name resolves to a website with a random collection of blog posts, ranging from cosmetics to some that relate to adult content. The Respondent has not come forward to explain why it chose the disputed domain name comprising of the Complainant’s mark for this purpose or to claim any interest in the disputed domain name.
Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:
(i) circumstances indicating that the respondent has registered or 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 the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 respondent’s website or location or of a product or service on the respondent’s website or location.
The Complainant claims that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(i), (ii) and (iv). Specifically, the Complainant claims that the Respondent violated the Policy, paragraph 4(b)(iv), by using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
As already mentioned, the Respondent did not file any substantive response to the Complaint, failing thereby to rebut the Complainant’s allegations of the Respondent’s bad faith registration and use of the disputed domain name.
Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University,WIPO Case No. D2000-0944).
The Panel finds that the Complainant’s registered trademark, PANAVISION is widely known, that it has been used for well over fifty years and was registered much before the Respondent registered the disputed domain name. The disputed domain name is confusingly similar to the Complainant’s trademark and the website of the disputed domain name contains, inter alia, adult content. It is therefore very unlikely that the Respondent, at the time of registration or acquisition of the disputed domain name, was not aware of the Complainant’s PANAVISION trademark and its business.
Bad faith can be inferred based on the fame of the Complainant’s mark, such that the Respondent was aware or should have been aware of the Complainant’s marks and claims of rights thereto (particularly in view of the Complainant’s use of its marks on the Internet). The Panel finds it highly doubtful that the Respondent would have registered the disputed domain name without having knowledge of the Complainant. The registration of a domain name that is similar to a distinctive trademark by the respondent, when the respondent has no relationship to that mark, may be suggestive of bad faith (see Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403).
Accordingly, the evidence, which is not rebutted by the Respondent, shows that the Respondent, at a minimum, likely knew of and has sought to take unfair advantage of the similarity between the disputed domain name and the Complainant’s trademarks.
Moreover, the disputed domain name resolves to a website hosting a collection of blog posts, none of which relate to the Complainant’s mark or Africa for that matter. Such use may be disruptive to the Complainant’s business and diverts the Complainant’s customers looking for the Complainant’s products.
The conduct described above falls squarely within paragraph 4(a)(iii) of the Policy and accordingly, the Panel concludes that the Respondent registered and is using the disputed domain name 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 the Complainant.
Andrew J. Park
Sole Panelist
Date: February 2, 2017
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