The Complainants are Panavision International, L.P. and Panavision Inc. (the “Complainant”), United States of America (“United States”), represented by Bryan Cave Leighton Paisner, United States.
The Respondent is huangjuan, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2021. On June 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 2, 2021, 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 July 2, 2021 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 July 8, 2021. 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 July 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2021. The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on August 6, 2021. 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 was founded in 1954 to design and manufacture wide-screen film photographic and projection lenses, currently providing ultra-precision digital imaging and visual cinematographic equipment, including cameras, optical lenses, photographic and related lighting equipment, and accessories as well as equipment rentals and services for the film and television industries around the world. In addition to the domain name - United States Trademark Registration No. 627362 for the mark PANAVISION filed on October 5, 1955, registered on May 22, 1956, and subsequently renewed, in international class 9; and The disputed domain name The Complainant, asserting that this case consists a “textbook case of cybersquatting”, claims to be one of the world’s most recognized providers of ultra-precision digital imaging and visual cinematographic equipment, including cameras, optical lenses, photographic and related lighting equipment, and accessories, being its PANAVISION lenses and imaging equipment used by the most 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 such well-known films as Mission Impossible, Dunkirk, Wonder Woman, Star Wars, and Guardians of the Galaxy 2, as well as many highly acclaimed episodic series, such as The Crown, Shameless, Orange is the New Black, The Big Bang Theory, Hawai’i Five-O, and many more. Given the continuous use of the PANAVISION trademark as early as 1954, coupled with the substantial amount of resources, money, time and effort promoting, marketing, advertising, and building consumer recognition and goodwill in its extremely valuable and famous PANAVISION goods and services under and in connection with its highly recognized and famous PANAVISION trademark the Complainant sustains that the PANAVISION trademark has acquired a degree of fame in China and in many countries around the world, as recognized in various previous cases amongst which Panavision International L.P., et al. v. muzhonglin,WIPO Case No. D2018-1381 and Panavision International, L.P. v. Toeppen, 945 F. Supp. 1296 (C.D. Cal. 1996). In the Complainant’s view, the disputed domain name characterizes a clear case of typosquatting given the reproduction of the Complainant’s trademark in its entirety, not obviating confusion the hyphen included therein. Moreover, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name given that: (i) the Respondent is not in any way associated with the Complainant and has never sought nor received authorization or a license to use the Complainant’s trademark in any way or manner, not having been authorized to use the disputed domain name; As to the registration of the disputed domain name in bad faith the Complainant asserts that the Respondent had actual knowledge of the Complainant, or at the very least, constructive knowledge of the PANAVISION trademark by virtue of the Complainant’s trademark registrations. In light of the distinctive PANAVISION trademark, the Respondent specifically targeted the Complainant seeking to create a likelihood of confusion with the Complainant’s trademark as to source, sponsorship, affiliation or endorsement of the disputed domain name and furthermore benefiting from the traffic generated in view of the commercial nature of the pornographic website that resolves from the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain name. In accordance with paragraph 14(a) 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 The Complainant has established its rights in the registered PANAVISION trademark. The Panel finds that the disputed domain name only differs by a hyphen to the Complainant’s trademark and is therefore confusingly similar to it. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. The Panel finds that the Complainant’s PANAVISION trademark is recognizable within the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7. The first element of the Policy has therefore been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate a respondent’s rights to or legitimate interests in a disputed domain name. These circumstances are: (i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or The Respondent, in not formally 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 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. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent. In that sense, the Complainant indeed states that the Respondent is not in any way associated with the Complainant and has never sought nor received authorization or a license to use the Complainant’s trademark in any way or manner, not having been authorized to use the disputed domain name. Also, the lack of evidence as to whether the Respondent is commonly known by the disputed domain name, corroborates with the indication of the absence of a right or legitimate interest in the disputed domain name. Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. The second element of the Policy has therefore been established. C. Registered and Used in Bad Faith The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of: (i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant who is the owner of a trademark relating to the disputed domain name or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or The registration and use of the disputed domain name in bad faith can be found in the present case in view of the following circumstances: (i) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name; For the reasons as those stated above, the Panel finds that the disputed domain name was registered and is being used in bad faith. The third element of the Policy has therefore been established. 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 Wilson Pinheiro Jabur
- United States Trademark Registration No. 845014 for the word mark PANAVISION filed on July 6, 1966, registered on February 27, 1968, and subsequently renewed, in international class 16.
(ii) the Complainant’s trademark is extremely famous and well-known throughout the world and has been in use for decades;
(iii) the Respondent has never been commonly known by the disputed domain name; not having the Respondent sought or procured any registrations for any tradenames, corporations, or trademarks with any governmental or business authority for “Panavision” or any similar marks;
(iv) the Respondent is using the disputed domain name to lure Internet user’s for commercial gain; and
(v) the use made of the disputed domain name in connection with pornographic content does not characterize a legitimate noncommercial or fair use of the disputed domain name.
(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.
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
(ii) the Respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other 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.
(ii) the well-known status of the Complainant’s trademark and the nature of the disputed domain name suggests rather a clear indication of the Respondent’s registration and holding of the disputed domain name in bad faith, with the implausibility of any good faith use to which the disputed domain name may be put;
(iii) the use of the disputed domain name in connection with a pornographic website;
(iv) the use of a false address in the WhoIs data.
Sole Panelist
Date: August 20, 2021
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