The Complainants are Panavision International, L.P. and Panavision Inc., United States of America (“United States”), represented by Bryan Cave Leighton Paisner, United States.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Leonidas Alburez, SPACORP, Guatemala. 2. The Domain Name and Registrar
The disputed domain name The Complaint 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 disputed domain name. On January 27, 2020, 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 January 29, 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 on February 3, 2020. On February 4, 2020, the Center received an email communication from the Respondent in which the Respondent offered to settle the matter amicably. On February 5, 2020, the Center sent a Possible Settlement email to the Parties. The Complainant did not submit a request for suspension. 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 of the Complaint, and the proceedings commenced on February 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 8, 2020. The Respondent did not submit any response. Accordingly, the Center proceeded to Panel Appointment Process on March 10, 2020. Also, on March 10, 2020, the Center received another email communication from the Respondent in which the Respondent offered to settle the matter before appointing a Panel. On March 12, 2020, the Center sent an email communication to the Parties allowing them to explore settlement options within 5 days. The Complainant confirmed on March 13, 2020 that they do not intend to submit a request for suspension. The Respondent on March 18, 2020 repeated the offer to reach an agreement for the transfer of the disputed domain name. The Center appointed Edoardo Fano as the sole panelist in this matter on March 20, 2020. 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. The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties. Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a formal response from the Respondent. The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules. 4. Factual Background The Complainants are Panavision International, L.P. and Panavision Inc. (hereinafter collectively referred to as “the Complainant”), United States joint companies operating on worldwide basis in the film and television industries and owning several trademark registrations for PANAVISION, among which the following ones: - United States Trademark Registration No. 845,014 for PANAVISION, registered on February 27, 1968; The Complainant also actively operates on the Internet, its main website being “www.panavision.com”. The Complainant provided evidence in support of the above. The disputed domain name The Complainant states that the disputed domain name Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name, it is not commonly known by the disputed domain name and it is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The Complainant submits that the Respondent has registered the disputed domain name in bad faith, since the Complainant’s trademark PANAVISION is distinctive and internationally known. Therefore, the Respondent targeted the Complainant’s trademark at the time of registration of the disputed domain name and the Complainant contends that the use of the disputed domain name, with the purpose of intentionally attempting to create a likelihood of confusion with the Complainant’s trademark as to the disputed domain name’s source, sponsorship, affiliation or endorsement, constitutes a disruption of the Complainant’s business and qualifies as bad faith registration and use. Furthermore, the Complainant provided evidence that the disputed domain name resolves to a parking page containing pay-per-click links to third party websites, several of them related to cameras and camera equipment of the Complainant’s competitors, which further supports a finding of bad faith registration and use of the disputed domain name. B. Respondent The Respondent has made no formal response to the Complainant’s contentions. However, the Respondent submitted three informal email communications on February 4, March 10 and March 18, 2020. In his email communications, the Respondent stated the following: “Hi, I'm Leónidas Alburez, CEO of SPACORP. I received an email requesting to unsubscribe or assign the use of the domain rotulospanavision.com. I request in the most attentive and cordial way you can provide me with an extension of 2 days, to be able to respond to your requirement, since I only registered the domain in mention under the requirement of a company that is dedicated to the manufacture of signage. If I do not have a response from this company, I will proceed to assign the rights of the domain rotulospanavision.com, to the company PANAVISION. I am sorry for the inconvenience caused, I hope we will solve this problem in a peaceful and cordial way. Retarda Leonidas Alburez.” (email of February 4, 2020). “Dear Sirs, I regret the inconvenience caused by the registration of a domain that causes some conflict with different companies. through this email I use the domain rotulospanavision.com I apologize for this registration and I am aware that the company requesting the creation of this domain does not wish to make any arrangements to recover this domain. best regards.” (email of March 10, 2020). “Dear For me as an independent domain administrator, I do not wish to cause discussion in this regard, I would like to reach an agreement with you to transfer ownership of the domain. This provision is taken since the company requesting the creation of this domain has not submitted the information or provision to defend the domain property. I await your response and an agreement free of liability.” (email of March 18, 2020). 6. Discussion and Findings Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed: (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. A. Consent to transfer According to the third and last email communication, as although not so clear in the previous ones, the Respondent appears to be willing to reach an agreement for the transfer of the disputed domain name. Paragraph 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) considers the following possibilities for the Panel to issue a decision on cases involving a respondent’s informal or unilateral consent for the transfer of the disputed domain name: “Where parties to a UDRP proceeding have not been able to settle their dispute prior to the issuance of a panel decision using the ‘standard settlement process’ described above, but where the respondent has nevertheless given its consent on the record to the transfer (or cancellation) remedy sought by the complainant, many panels will order the requested remedy solely on the basis of such consent. In such cases, the panel gives effect to an understood party agreement as to the disposition of their case (whether by virtue of deemed admission, or on a no-fault basis). In some cases, despite such respondent consent, a panel may in its discretion still find it appropriate to proceed to a substantive decision on the merits. Scenarios in which a panel may find it appropriate to do so include (i) where the panel finds a broader interest in recording a substantive decision on the merits – notably recalling UDRP paragraph 4(b)(ii) discussing a pattern of bad faith conduct, (ii) where while consenting to the requested remedy the respondent has expressly disclaimed any bad faith, (iii) where the complainant has not agreed to accept such consent and has expressed a preference for a recorded decision, (iv) where there is ambiguity as to the scope of the respondent’s consent, or (v) where the panel wishes to be certain that the complainant has shown that it possesses relevant trademark rights.” In the present case the Panel finds appropriate to issue a decision on the merits because on the one hand the Complainant is not accepting the Respondent’s consent for the transfer, on the other hand the Respondent is aiming to reach an “agreement free of liability” and therefore a discussion on the pattern of bad faith conduct is required. B. Identical or Confusingly Similar The Panel finds that the Complainant is the owner of the trademark PANAVISION both by registration and acquired reputation and that the disputed domain name Regarding the addition of the word “rotulos” (a dictionary term meaning “advertising” or “sign” in Spanish), the Panel notes that it is now well established that the addition of descriptive terms or letters to a domain name does not prevent a finding of confusing similarity between the domain name and the trademark. See, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti,WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713. The addition of the word “rotulos” does not therefore prevent the disputed domain name from being confusingly similar to the Complainant’s trademark. It is also well accepted that a generic Top-Level Domain (“gTLD”), in this case “.com”, may be ignored when assessing the similarity between a trademark and a domain name; see, e.g., VAT Holding AG v. Vat.com,WIPO Case No. D2000-0607. The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i). C. Rights or Legitimate Interests The Respondent has failed to file a formal response in accordance with the Rules, paragraph 5. The Panel has however considered the Respondent’s submissions of February 4, March 10 and March 18, 2020. The Complainant, in its Complaint and as set out above, has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the Respondent is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services. The prima facie case presented by the Complainant shifts the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. The Respondent in his informal response of February 4, 2020 stated that the disputed domain name had been registered for a third party, a not specified company operating in the field of signage, and asked for an extension of two days in order to discuss the issue with this company and, in case they did not respond, to assign the disputed domain name to the Complainant. At this point, the Parties were offered by the Center the possibility to suspend the UDRP proceeding to implement a settlement agreement, pursuant to paragraph 17 of the Rules, however, the Parties did not reply and the Center proceeded with the case. In the following two informal responses the Respondent did not claim any rights or legitimate interests in the disputed domain name, on the contrary, the Respondent was willing to reach an agreement for the transfer of the disputed domain name. When, between the second and the third Respondent’s informal responses, the Center offered again to the Parties the possibility to suspend the UDRP proceedings in order to explore settlement options, the Complainant declined this possibility. The Panel finds on the case file that paragraph 4(a)(ii) of the Policy has been satisfied. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that [the respondent has] registered or has 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or (ii) that [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) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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”. Regarding the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark PANAVISION in the field of film and television is clearly established and the Panel finds that the Respondent likely knew of the Complainant and deliberately registered the disputed domain name, also considering that the Respondent is defining himself as an “independent domain administrator”. The Panel further notes that, the disputed domain name is also used in bad faith since in the relevant website there are pay-per-click links mainly referring to cameras and camera equipment of the Complainant’s competitors and the Respondent is therefore knowingly taking advantage from user confusion. Even if the above pay-per-click links were automatically generated, the Respondent, especially being a domain administrator as in the present case, could not disclaim responsibility for those links, according to section 3.5 of WIPO Overview 3.0”. The above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain name in order to attract, for commercial gain, Internet users to its website in accordance with paragraph 4(b)(iv) of the Policy. The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith. The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied. 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 Edoardo Fano
- Guatemalan Trademark Registration No. 28460 for PANAVISION, registered on September 9, 1974.
Sole Panelist
Date: March 22, 2020
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