The Complainants are WME IMG, LLC d/b/a Endeavor (“Endeavor”), IMG Worldwide, LLC (“IMG”), and William Morris Endeavor Entertainment, LLC (“WME”), United States of America (“United States”), represented by Kelley Drye & Warren, LLP, United States.
The Respondents are Emilio Azuero, Berkeley Film Studio (the “Azuero Respondent”), and Ashley Wolford, Berkeley Film Studio (the “Wolford Respondent”), United States.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2020. On March 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 11, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the 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 Respondents of the Complaint, and the proceedings commenced on March 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 6, 2020. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on April 7, 2020.
The Center appointed Evan D. Brown as the sole panelist in this matter on April 9, 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 BackgroundEach of the Complainants are related companies and provide talent representation, management, and related services. Each of the Complainants owns registered trademarks, including ENDEAVOR (United States Reg. No. 5,997,776, issued February 25, 2020, and owned by Endeavor), IMG (United States Reg. No. 1,232,130, issued March 22, 1983, and owned by IMG), and WME (United States Reg. No. 4,038,353, issued October 11, 2011, and owned by WME). All of the Complainants and/or their predecessors in interest have been in existence for many years and are well known for the services they provide, and the marks under which they provide those services.
This case involves 19 disputed domain names. The Respondents registered the disputed domain names on January 2, 2020, and January 7, 2020. The disputed domain names have been used as follows:
-
-
-
-
The Complainants contend that the disputed domain names are identical or confusingly similar to the Complainants’ trademarks; that the Respondents have no rights or legitimate interests in respect of the disputed domain names; and, that the disputed domain names were registered and are being used in bad faith.
B. RespondentThe Respondents did not reply to the Complainants’ contentions.
6. Discussion and FindingsTo succeed, the Complainants must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; (ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. The Panel finds that all three elements have been met in this case.
A. Consolidation(i) Consolidation of Multiple Complainants
The Complainants request that the Respondents be consolidated in this single Complaint. In support of their request, the Complainants provide that: (i) each Complainant has a specific common grievance against the Respondents; (ii) the Respondents have engaged in common conduct that has affected each Complainant in a similar fashion; and, (iii) it would be equitable and procedurally efficient to permit the consolidation.
The Complainants assert that they share a common grievance against the Respondents because each of the Complainants’ claims against the Respondents involve similar facts and contentions, the efficient resolution of which should be accomplished within this single proceeding. Specifically, Complainant Endeavor owns directly 100% of Complainant WME and owns indirectly 100% of Complainant IMG. As such, the Complainants are each directly related to one another in a network of integrated companies such that the activities and business of each Complainant, including the adoption, use, and registration of the trademarks owned by each Complainant, are under the same legal control, and each Complainant shares a common legal interest in the trademarks held collectively by one another as directly related companies. See, e.g., Altria Grp., Inc. et al. v. Di Bari,
WIPO Case No. D2014-0181 (finding consolidation appropriate for a parent company and wholly-owned subsidiaries); Inter-Cont’l Hotels Corp., Six Continents Hotels, Inc. v. Kirchhof;
WIPO Case No. D2009-1661 (finding consolidation appropriate where complainants were “strictly separate entities” but were each “members of the same corporate group and therefore shared a common legal interest”); Media West-CPI, Inc. et al. v. Unasi, Inc.,
WIPO Case No. D2005-1336 (permitting consolidation where complainants formed a group of related corporate entities).
The Complainants also assert that the Respondents have engaged in common conduct, which has affected each of the Complainants’ legal rights in a similar fashion. The Respondents’ common conduct with respect to the Complainants is evidenced first by the fact that the disputed domain names share readily identifiable commonalities. When each of the Complainants’ trademarks are disregarded for purposes of comparison, the disputed domain names each contain similar generic terms which comprise and/or relate to the services provided by each Complainant, such as “castings”, “sport”, and “broadcasting”. Second, the disputed domain names were all registered over the same two days, namely January 2, 2020, and January 7, 2020, which points to a clear pattern of registration. Finally, seven of the disputed domain names resolve to related websites that each link to and/or reference other websites with disputed domain name addresses consisting of various of the Complainants’ trademarks that are also utilized purportedly for the purpose of creating a false association with the Complainants and their related businesses. This points to a clear pattern of use of the disputed domain names for the same purpose. See, e.g., MLB Advanced Media et al. v. OreNet, Inc.,
WIPO Case No. D2009-0985 (finding consolidation appropriate where the domain names each shared the same generic terms, were registered on the same day, and resolved to identical websites); Fulham Football Club (1987) Ltd. et al. v. Domains by Proxy, Inc./Official Tickets Ltd.,
WIPO Case No. D2009-0331 (same).
The Complainants posit that consolidation of the Complainants’ claims is equitable and procedurally efficient because the disputed domain names each incorporate elements of one or more of the Complainants’ trademarks, and the Respondents are in effect using the Complainants’ trademarks for the same purposes, namely for disputed domain names that refer to related websites which are clearly intended to create a false association with the Complainants and their businesses. As such, the commencement of separate proceedings by each of the Complainants in relation to an otherwise common complaint would be inefficient and unnecessary under the Policy.
The efficiency of a consolidated proceeding is further evidenced by the fact that the Complainants’ substantive arguments under each of the three elements of the Policy are virtually identical, and therefore common, to each of the disputed domain names. The Complainants assert that they have clearly identified which Complainant is making a claim with respect to each disputed domain name and the rights relied upon by that Complainant. Each disputed domain name is also registered with the same registrar.
Finally, the Complainants are represented by a single authorized representative. See, e.g., Vectra Bank Colo. et al. v. Fluder,
WIPO Case No. D2015-2046 (finding consolidation equitable and procedurally efficient because even though each complainant operated under its own trademark, the domain names each incorporated elements of each of the differing complainants’ trademarks, the respondent used each trademark for the same purposes, the complainants’ substantive arguments were common to each domain name, and complainants shared a single authorized representative); London Court of Int’l Arbitration et al. v. ICSID Lawyers, LLC,
WIPO Case No. D2013-0685 (finding consolidation equitable and procedurally efficient in part because the complainants clearly identified the specific domain names at issue, which complainant was disputing each domain name, the rights relied upon by each complainant in making their claims, and the registrar that each domain name was registered to).
The Panel agrees with the facts and arguments that the Complainants have put forward for consolidation of multiple complainants and orders that all three of the Complainants be combined in this case.
(ii) Consolidation of Multiple Respondents
The Complainants request that their claims against the Azuero Respondent and the Wolford Respondent be consolidated in a single complaint. In support of its request, the Complainants assert that (i) the disputed domain names are subject to common control; and (ii) consolidation would be fair and equitable to all parties.
The Complainants put forth their belief that the Azuero Respondent and the Wolford Respondent are subject to common control, and are therefore acting in concert with respect to the disputed domain names, because the administrative contact information provided in the WhoIs data for each of the disputed domain names includes an identical registration organization, namely, Berkeley Film Studio, and an identical email address. The Respondents have not argued to the contrary.
Moreover, the Complainants assert that the disputed domain names operate together (and separately) to infringe on the Complainants’ trademarks, in that one of the disputed domain names registered by the Wolford Respondent resolves to a website that links to and/or references several other websites with the disputed domain name addresses belonging to the Azuero Respondent, and six of the disputed domain names belonging to the Azuero Respondent similarly link to and/or reference a website with the disputed domain name address belonging to the Wolford Respondent. Moreover, the nature of the trademarks infringed by the disputed domain names and the naming patterns adopted by the disputed domain names are such that the Respondents are both clearly targeting a specific common company and industry, namely that of the Complainants and the Complainants’ businesses. See, e.g., Wikimedia Found., Inc. v. Domain Admin., Whois Privacy Servs. Pty Ltd. et al.,
WIPO Case No. D2015-1148 (finding common control sufficient to warrant consolidation where each respondent belonged to the same organization); Speedo Holdings B.V. v. Programmer et al.,
WIPO Case No. D2010-0281 (finding consolidation of multiple respondents appropriate where the disputed domain names each listed the same administrative contact name and used the same email address).
The Complainants finally assert that consolidation of the Complainants’ claims against the disputed domain names owned by the Azuero Respondent and the Wolford Respondent would be fair and equitable to all parties because each of the disputed domain names appear to have been registered with a similar purpose in mind, namely, to create a false association with the Complainants, which are all affiliated companies. Given the commonalities of fact and issue with respect to each of the disputed domain names, the Complainants argue that it is most procedurally efficient to proceed with a single decision. See, e.g., Yahoo! Inc. v. Anand et al.,
WIPO Case No. D2016-0461 (consolidation of multiple respondents warranted where panel believed it to be efficient to resolve all claims in one proceeding); Bayerische Motoren Werke AG v. Lee et al.,
WIPO Case No. D2016-2268 (same).
The Panel agrees with the facts and arguments that the Complainants have put forward for consolidation of multiple respondents and orders that both of the Respondents be combined in this case.
B. Identical or Confusingly SimilarThe Complainants have respective rights in the marks ENDEAVOR, IMG, and WME. These marks - and similar variations - are subject to trademark registrations that predate registration of the disputed domain names, and have been in use for many years. Each of the disputed domain names contains one of the Complainants’ marks in its entirety and is in this manner identical or confusingly similar to the Complainants’ respective marks. The Top-Level Domains (“TLDs”) “.com” and “.co” may be disregarded for the purpose of comparing the disputed domain names with the Complainants’ marks under paragraph 4(a)(i) of the Policy. The various generic terms used in the disputed domain names, which relate in some fashion to the Complainants’ business, do not prevent the finding of confusing similarity. Accordingly, the Panel finds in favor of the Complainants on this first element of the Policy.
C. Rights or Legitimate InterestsThe Panel evaluates this element of the Policy by first looking to see whether the Complainants have made a prima facie showing that the Respondents lack rights or legitimate interests in respect of the disputed domain names. If the Complainants make that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondents.
The Complainants have established, prima facie, that the Respondents lack rights or legitimate interests in the disputed domain names. On this point, the Complainants assert, among other things, that (1) the Respondents are not commonly known by any of the disputed domain names, are not a licensee of any of the Complainants, and are not otherwise authorized to use the Complainants’ marks, (2) the Respondents registered and used the disputed domain names with the sole intention to benefit financially from and trade upon the goodwill of the Complainants’ marks, (3) the Respondents are not making a non-infringing use of the Complainants’ marks, and (4) the Respondents are not using the disputed domain names in connection with a bona fide offering of goods or services.
These facts establish the Complainants’ prima facie showing. The Respondents have not provided any basis on which that showing may be overcome. The Complainants have established this second element under the Policy.
D. Registered and Used in Bad FaithBecause the Complainants’ marks are well known in the Complainants’ industry, and based on the actions of Respondents in setting up websites purporting to offer the Complainants’ services, it is implausible to believe that the Respondents were not aware of the Complainants’ marks when they registered the disputed domain names. In the circumstances of this case, such a showing is sufficient to establish bad faith registration of the disputed domain names.
Bad faith use is clear from the Respondents’ activities of passively holding certain of the disputed domain names. That those disputed domain names have been inactive does not prevent a finding of bad faith. Playboy Enterprises International, Inc. v. Registration Private, Domain Protection Services Inc. / Domain Vault, Domain Vault LLC,
WIPO Case No. D2018-1456. Given (i) the degree of distinctiveness and reputation of the Complainants’ marks, (ii) the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good faith use, and (iii) the implausibility of any good faith use to which the disputed domain names may be put, the Panel finds bad faith use. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 3.3.
Finding bad faith use is evident concerning those disputed domain names that have been used to set up websites imitating the Complainants and purporting to offer the Complainants’ services.
For these reasons, the Panel finds that the Complainants have successfully met this third Policy element.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names
Evan D. Brown
Sole Panelist
Date: April 23, 2020