The Complainant is StudioCanal of Issy-les-Moulineaux, France, internally represented.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America ("United States") / Sudjam Admin, Sudjam LLC of Los Angeles, California, 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 March 6, 2018. On March 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 7, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 8, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 12, 2018.
The Center verified that the Complaint together with the amendment to 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 March 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 2, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 3, 2018.
The Center appointed Frank Schoneveld as the sole panelist in this matter on April 16, 2018. 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 registered as the owner of various trademarks for STUDIOCANAL COLLECTION, including French trademark registration no. 3657963 for STUDIOCANAL COLLECTION, filed on June 17, 2009, and international trademark registration no. 1030346 for STUDIOCANAL COLLECTION, filed on December 9, 2011 and designated in Australia, the European Union, Japan, Norway, and the United States.
The disputed domain name was registered on October 9, 2017.
The Complainant did a WhoIs search of the registration of the disputed domain name on October 9, 2017 which indicated that the registrant was "Registration Private" at Domain by Proxy LLC. This entity states at its website "" (accessed by the Panel on May 2, 2018 at 20:05) that it is a privacy service providing its own contact information in the WhoIs directory and not the registrant's name.
On March 7, 2018 the Registrar indicated that the disputed domain name was registered in the name of Sudjam Admin of Sudjam LLC in Los Angeles, California. The Complainant brings its Complaint against both Registration Private at Domains by Proxy, LLC, and Sudjam Admin of Sudjam LLC.
The webpage to which the disputed domain name resolves (accessed by the Panel on May 2, 2018 at 20:30 and a copy of which is provided by the Complainant dated February 5, 2018) states prominently that "This Web page is parked for FREE, courtesy of GoD." and "Related Links: Bluray Disc, Collection, Complete DVD, DVD Edition, DVD Ray".
The Complainant had email correspondence with two representatives of Sudjam LLC between January 17 and January 22, 2018. By email to the Complainant dated January 18, 2018 a representative of the Respondent states:
"The domain which you're referring to was expired and purchased it on an auction website. As I look at your website, there was no intention of providing similar services as your company. We are a digital agency and working with a customer who wants to develop a furniture website, the domain has high authority and was chosen because was good for our customer's SEO, hence why it was purchased in an auction.
With that being said, if you're interested in purchasing the domain because it's very similar to your company as well as it has very high domain authority, we'd be happy to bring your offer to our customer and discuss."
By email to the Complainant dated January 22, 2018 a representative of the Respondent states that:
"This domain was for sale in an auction and purchased by our client as I mentioned in the previous email […] We are in the process of building a website for our customer. I can see there are similarities between the name which was purchased by our client and your company, however the industries are completely separate so there would be no confusion. I've spoken with our client and I am unable to just release domain without some type of reimbursement for hard costs for auction and initial development.
With that being said, they are not intending to profit off the situation, however they believe being reimbursed for costs is fair, if our customer was to comply with your request. Please let me know what reimbursement you're able to provide and I'll discuss further about getting them to release the domain." 5. Parties' Contentions A. Complainant
The Complainant asserts that: (a) its STUDIOCANAL COLLECTION trademarks are used in relation to the services of producing and distributing movies that the Complainant offers under the name StudioCanal, and the various products in relation with the corresponding trademarks and domain names, notably DVD movies; and (b) it is the leader in Europe for producing, distributing, and selling movies and television series, conducting business directly in the main countries of the European Union (France, Germany and the United Kingdom), but also in Australia and New Zealand. The Complainant submits that therefore, the STUDIOCANAL COLLECTION trademarks are renowned in France but also in other countries.
The Complainant contends that the disputed domain name is confusingly similar and identical to the STUDIOCANAL COLLECTION trademarks aforementioned, as it reproduces entirely the STUDIOCANAL COLLECTION trademarks, with the only addition of the ".com" extension, and that the identical and entire incorporation of a trademark in a domain name is alone sufficient to show confusing similarity with the trademarks of the Complainant.
It is argued that the addition of the ".com" extension to the trademarks of the Complainant does not help to distinguish the disputed domain name from the STUDIOCANAL COLLECTION trademarks, as it is only a necessary element to register a domain name. The Complainant also asserts that the disputed domain name creates severe confusion with the STUDIOCANAL COLLECTION trademarks, since the public would be confused into believing there was a common origin of services.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent has no rights that would have been conferred by the Complainant under any agreement or authorization to use, in any form, the STUDIOCANAL COLLECTION trademarks or to register and use the disputed domain name. The Complainant contends that the Respondent does not demonstrate it uses the disputed domain name to offer goods or services sponsored by StudioCanal corporation and, on the contrary, the Respondent uses the disputed domain name in bad faith and consciously maintains the confusing similarity with the STUDIOCANAL COLLECTION trademarks (as emphasized by the fact that the actual use of the website is to list various links in relation to movies and DVDs). The Complainant also asserts that the Respondent is not well known under the disputed domain name and the disputed domain name clearly refers to the services of the Complainant. Consequently, the Complainant concludes that the Respondent cannot claim, in good faith, to have any legitimate interest in the disputed domain name.
The Complainant also contends that the disputed domain name was registered and is being used in bad faith and that it is clear the Respondent has chosen the disputed domain name in order to make commercial gain by misleading consumers and tarnishing the STUDIOCANAL COLLECTION trademarks. The Complainant asserts that (i) registration of a domain name that is confusingly similar or identical to a famous trademark by any entity which has no relationship with the Complainant's STUDIOCANAL COLLECTION trademarks is sufficient evidence of bad faith registration and use, and (ii) the Respondent's use of the disputed domain name is related to the movie sector, so it therefore can be assumed that the disputed domain name has been registered to interfere with the business operations of the Complainant. The Complainant argues that the Respondent has consciously tried to attract Internet users, for commercial gain, who were initially interested in the services offered by the Complainant, StudioCanal, and that the Respondent's registration of the disputed domain name clearly creates a likelihood of confusion with the commercial activity of the Complainant. It is asserted that the Internet user going to the website at the disputed domain name will clearly think (mistakenly) that this website belongs to the Complainant and that the various links, related to movies and DVDs, are offered by the Complainant. The Complainant concludes that as a consequence, registration and use of the disputed domain name has been made in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Pursuant to UDRP paragraph 4(a), in order to have a domain name transferred or cancelled the Complainant must prove that each of the following three elements is present:
(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.
The Rules at paragraph 15(a) require that "[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." In the absence of any substantive rebuttal by the Respondent to the Complainant's assertions, the Panel therefore proceeds on the basis of the Complaint submitted by the Complainant and the informal emails received from the Respondent's representatives, as well as in accordance with the Policy, the Rules and any rules and principles of law that are applicable. A. Identical or Confusingly Similar
The Complainant has provided compelling evidence showing that (a) it is the holder of the STUDIOCANAL COLLECTION trademark registered in (amongst other jurisdictions) the United States where the Respondent has its address, and (b) it has rights arising from such registered trademarks. The Respondent does not challenge such evidence or respond to the contentions the Complainant has submitted.
It is clear that the disputed domain name is, except for the absence of a space between "studiocanal" and "collection", the same as the Complainant's STUDIOCANAL COLLECTION trademark. Further, in the Panel's view the generic Top-Level Domain ("gTLD"), ".com", does not in this case affect the disputed domain name for the purpose of determining whether it is confusingly similar to the Complainant's trademarks.
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant's STUDIOCANAL COLLECTION trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
The evidence provided by the Complainant indicates that:
(i) the Respondent has no relationship with the Complainant;
(ii) the Complainant has not permitted the Respondent to register or to use any domain name incorporating the STUDIOCANAL COLLECTION trademarks;
(iii) the Complainant has not agreed or otherwise authorized the Respondent to use the STUDIOCANAL COLLECTION trademark forming the disputed domain name.
It may be that it is pure coincidence that the Respondent intends to use the disputed domain name, a name that is essentially the same as the Complainant's trademark, for a furniture website (according to an email to the Complainant from the Respondent's representative of January 18, 2018). However, the Respondent does not provide any submission to clarify whether or not it has any rights or legitimate interests in the disputed domain name for a furniture website or otherwise. It is noted in this context, that the website to which the disputed domain name resolves makes no mention of furniture but does mention movies and DVDs which are products supplied by the Complainant under its STUDIOCANAL COLLECTION trademark. The question arises why the Respondent has (or allows) links to sales of movies and DVDs, which clearly are covered by the Complainant's trademarks, yet makes no mention of furniture. Failure to mention furniture on this website, even while designing a new site, calls into question the veracity of the statement that this website would be used for a furniture website. It also brings into question whether the Respondent has any rights or legitimate interests in the disputed domain name, which remains unclear.
What is clear, however, is that neither the Respondent nor the disputed domain name has any connection with the Complainant, the owner of the STUDIOCANAL COLLECTION trademark that forms the disputed domain name.
Since at least 2009 the mark STUDIOCANAL COLLECTION has been registered by the Complainant as a trademark in the United States where the Respondent has its address, so it is difficult to see how the Respondent could not have, and indeed should have, been aware of the Complainant's trademark rights in the name which is (essentially) the same as the disputed domain name. At the same time there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name.
The evidence provided by the Complainant suggests there is likely to be limited circumstances in which the Respondent might have any rights or legitimate interests in the disputed domain name. In the absence of any submission from the Respondent on this element of the Policy, paragraph 4(a)(ii), a prima facie case has been established that the Respondent has no rights or legitimate interests in the disputed domain name. In the Panel's view it is more likely than not that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has failed to provide any rebuttal of this prima facie case. In those circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
UDRP paragraph 4(b) provides that one scenario that can constitute evidence of a Respondent's bad faith is that by using the disputed domain name, the Respondent has intentionally attempted to 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 the Respondent's website or location or of a product or service on the Respondent's website or location.
The Respondent appears to be attracting for commercial gain, perhaps by payment for click-through traffic or by other direct or indirect means, Internet users to the website to which the disputed domain name resolves. This is done deliberately by using the clear links to movie and DVD sale websites at the "Related Links: Bluray Disc, Collection, Complete DVD, DVD Edition, DVD Ray" on the relevant website. Also, given that the trademark STUDIOCANAL COLLECTION is registered in the United States and other countries since 2009, such conduct creates a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website. Internet users will likely mistakenly believe the website to which the disputed domain name resolves is sponsored, endorsed or affiliated with the Complainant. Such confusion would very likely arise in the context of the supply of movies and DVDs in the United States where the Complainant conducts such business under its trademark STUDIOCANAL COLLECTION and where it has been registered since 2009. In those circumstances, there is cogent evidence of the likelihood of bad faith registration and use of the disputed domain name.
One issue does arise regarding whether it is the Respondent or the Registrar (or some other third party) who is obtaining a commercial gain from the attraction of Internet users mistakenly thinking they are on one of the Complainant's websites (or one approved or endorsed by the Complainant). The statement on the webpage to which the disputed domain name resolves states that "This Web page is parked for FREE, courtesy of GoD"; thus, it is possible that it is the Registrar (GoDaddy) and not the Respondent who may have placed the parked page linking the disputed domain name to third party websites selling movies and DVDs. In that circumstance, whether the commercial gain from misled Internet users is gained by the Respondent or by the Registrar (or by another third party), it remains that the Respondent controls and cannot (absent some special circumstance) disclaim responsibility for, the content appearing on the website to which the disputed domain name resolves.
In the absence of any contrary evidence, any bad faith use can be attributed to the Respondent as the owner and ultimate controller of the disputed domain name. At the same time, it is possible that the links provided at the disputed domain name could, as the Complainant submits, have tarnished the reputation and business of the Complainant.
The Respondent has made no submission in these proceedings so the Panel presumes that the Respondent has allowed the disputed domain name to be used with the intent to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant's trademark as to the source, affiliation, or endorsement of the Respondent's website to which the disputed domain name resolves. Accordingly, the Panel finds 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 the Complainant.
Frank Schoneveld
Sole Panelist
Date: May 4, 2018
Full & Egal Universal Law Academy