The Complainant is Panavision International, L.P. and Panavision Inc., United States of America (“United States” or “U.S.”), represented by Bryan Cave Leighton Paisner LLP, United States.
The Respondent is 黄继伟 (Huang Ji Wei), China. 2. The Domain Name and Registrar
The disputed domain name The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2020. On January 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 13, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 13, 2020 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 amended Complaint in English on February 18, 2020. On February 13, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. The Center verified that the Complaint together with the amended 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 in English and Chinese of the Complaint, and the proceedings commenced on February 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 11, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 12, 2020. The Center appointed Karen Fong as the sole panelist in this matter on March 24, 2020. 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 Founded in 1954, the Complainant, and its related and affiliated entities, provide a comprehensive suite of end-to-end production and post production services to the largest studios, networks, independent production companies and Over-The-Top (“OTT”) content streaming providers and social media platforms. It is also well known as provider of ultra-precision digital imaging and visual cinematographic equipment, including cameras, optical lenses, photographic and related lighting equipment, and accessories. The Complainant provides equipment rentals and services for the film and television industries in the United States and around the world, through its affiliates in China, Hong Kong, China, the United Kingdom, South Africa, Canada, Mexico, Japan, Poland, Czech Republic, Ireland, France, Belgium, Italy, Hungary, Portugal, Romania, Spain, Republic of Korea, Australia, New Zealand, Malaysia, Thailand, and India. The Complainant’s products and services are provided under the PANAVISION trade mark. The lenses and imaging equipment are used by the well-known and respected filmmakers in the world, and many of the most successful and highly acclaimed films of all time have been photographed using the Complainant’s Panavision camera systems, lenses, lighting equipment and other equipment, including films as Dunkirk, Wonder Woman, Star Wars, and Guardians of the Galaxy 2, as well as many episodic series, such as The Crown, Orange is the New Black, The Big Bang Theory, Hawai’i Five-O, and many more. 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. The Complainant is the owner of numerous registrations for PANAVISION in many territories around the world. The earliest trade mark registrations submitted in evidence, U.S. Registration No. 627,362 and U.S. Registration No. 834,705, were registered on May 22, 1956 and September 5, 1967 respectively (the “Trade Mark”). Since at least as early as 1998, the Complainant has maintained an active presence on the Internet, including through its website at “www.panavision.com”. It owns a large portfolio of domain names including The Respondent registered the Domain Name on November 30, 2019. It was connected to a website in the Chinese language which appeared to offer gambling services and contain adult content including images of provocatively dressed young women (the “Website”). It is now inactive. The Respondent is also the registrant of domain names bearing the trade marks of third party including: The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, that the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. General According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that: (i) The Domain Name is identical or confusingly similar to trade marks or service marks in which the Complainant has rights; and (ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) The Domain Name was registered and is being used in bad faith. B. Language of Proceeding The Rules, paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese. The Complainant submits that the language of the proceeding should be English for the following reasons: - The Complainant’s business is conducted primarily in English and it is unable to communicate in Chinese; - The Respondent has registered hundreds of domain names, many of which incorporate English words indicating the ability to understand English; - The fact that he/she owns so many domain names in evidence that he/she is a serial cybersquatter; - The Complainant would be put to great expense and inconvenience to have to translate the Complaint and its evidence which would cause undue delay. In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs. The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Respondent has not challenged the Complainant’s request and in fact has failed to file a Response. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding. C. Identical or Confusingly Similar The Panel is satisfied that the Complainant has established that it has registered rights to the Trade Mark. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name. In this case the Domain Name contains the Complainant’s Trade Mark in its entirety, a hyphen and the descriptive term “lumiere” which means “light” in French. The addition of this term and a punctuation mark does not negate the confusing similarity encouraged by the Respondent’s complete integration of the Trade Mark in the Domain Name. E.g., N.V. Organon Corp. v. Vitalline Trading Ltd., Dragic Veselin / PrivacyProtect.org,WIPO Case No. D2011-0260; Oakley, Inc. v. wu bingjie aka bingjie wu/Whois Privacy Protection Service,WIPO Case No. D2010-0093; X-ONE B.V. v. Robert Modic,WIPO Case No. D2010-0207. For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) which in this case is “.com”. It is viewed as a standard registration requirement. The Panel finds that the Domain Name is confusingly similar to trade marks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. D. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue. Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant. The Complainant contends that it has not authorised, licensed or otherwise permitted the Respondent to use the Trade Mark in the Domain Name or for any other purpose. Further, the Trade Mark is well known and has no other significance other than being obviously connected to the Complainant. The Respondent has not made any use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. The use of a domain name of another party’s trade mark especially a famous trade mark in connection with gambling services, inappropriate images and content can never be considered a bona fide offering of goods or services. The Website is obviously a commercial one and therefore the Respondent cannot be said to be making any legitimate noncommercial or fair use of the Domain Name. The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. E. Registered and Used in Bad Faith To succeed under the Policy, the Complainant must show that the Domain Name has been registered and used in bad faith. The Trade Mark is a distinctive and well-known trade mark and has been recognised by other UDRP panels as such. The Panel is satisfied that the Respondent must have been aware of the Complainant’s well-known Trade Mark when he/she registered the Domain Name given the fame of the Trade Mark. It is implausible that the Respondent was unaware of the Complainant when he/she registered the Domain Name. In the WIPO Overview 3.0, section 3.2.2 states as follows: “Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.” The fact that there is a clear absence of rights or legitimate interests coupled with the Respondent’s choice of the Domain Name is also a significant factor to consider (as stated in section 3.2.1 of the WIPO Overview 3.0). The Domain Name falls into the category stated above and the Panel finds that registration is in bad faith. The Domain Name is also being used in bad faith. The Website apparently offering gambling services and containing adult content is set up for the commercial benefit to the Respondent. It is highly likely that Internet users when typing the Domain Name into their browser, or finding it through a search engine would have been looking for a site operated by the Complainant rather than the Respondent. The Domain Name is likely to confuse Internet users trying to find the Complainant’s websites. Such confusion will inevitably result due to the incorporation of the Trade Marks as the most prominent element of the Domain Name. The Respondent employs the fame of the Trade Mark to mislead users into visiting the Website instead of the Complainant’s. From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s Website is authorised or endorsed by the Complainant. The Panel therefore concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy. In addition, the registration by the Respondent of domain names comprising well-known trade marks belonging to third parties amounts to a pattern of conduct of preventing a trademark holder from reflecting the mark in a corresponding domain name, demonstrating registration and use 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 Domain Name Karen Fong
Sole Panelist
Date: April 7, 2020
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