ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Panavision International, L.P. and Panavision Inc. v. 范宇 (Fan Yu) Case No. D2022-1816 1. The Parties The Complainants are Panavision International, L.P. and Panavision Inc., United States of America ("U.S."), represented by Bryan Cave Leighton Paisner LLP, U.S. The Respondent is 范宇 (Fan Yu), China. 2. The Domain Name and Registrar The disputed domain name
is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the "Registrar"). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on May 19, 2022. On May 20, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 24, 2022, 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 Complainants on May 25, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint in English on May 25, 2022. On May 25, 2022, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On May 26, 2022, the Complainants confirmed their 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 May 31, 2022. In accordance with the page 2 Rules, paragraph 5, the due date for Response was June 20, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 21, 2022. The Center appointed Francine Tan as the sole panelist in this matter on June 30, 2022. 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 Complainants, Panavision International, L.P. and Panavision Inc., state that they and their affiliated entities provide a comprehensive suite of end-to-end products and post-production services to large studios, networks, independent production companies and over-the-top content streaming providers. The Complainants state that they are one of the world's most recognized providers of ultra-precision digital imaging and visual cinematographic equipment, including cameras, optical lenses, photographic equipment, lighting, and accessories. The Complainants' business was founded in 1954 to design and manufacture wide-screen film photogenic and projection lenses. The Complainants state that they have consistently been at the forefront of cinematographic equipment development. Viewers of motion pictures and other visual arts have come to associate the Complainants with a high-quality visual experience. Currently, the Complainants provide equipment and services in the U.S. and around the world, through its affiliates and/or network of distributors in the United Kingdom, South Africa, Canada, Poland, the Czech Republic, Ireland, France, Belgium, Australia, New Zealand, Italy, Spain, Mexico, and throughout Asia. The Complainants state that their Panavision-branded lenses and imaging equipment are used by wellknown and respected filmmakers and many of the most successful and highly-acclaimed films have been photographed using the Complainants' Panavision camera systems, lenses, lighting equipment, and other equipment. The well-known films and TV series include "Mission Impossible", "Dunkirk", "Wonder Woman", "Star Wars", "The Crown", and "Orange is the New Black". The Complainants have won numerous prestigious awards, including the "Oscar" awards from the American Academy of Motion Picture Arts and Science and "Emmy" awards from the Academy of Television Arts & Sciences. As a result of their long and extensive use and recognition, the Complainants and their PANAVISION marks have acquired valuable goodwill and reputation among consumers and professionals in the motion picture, television, and related industries. The Complainants state that they (including their predecessors) have continuously used the PANAVISION trade marks in connection with motion picture cameras, lenses, and related goods and services since 1954. The Complainants own a large portfolio of PANAVISION word and other formative trade marks (collectively, the "PANAVISION trade marks") around the world, including the following: - U.S. Trademark Registration No. 627,362 for registered on May 22, 1956; - U.S. Trademark Registration No. 845,014 for PANAVISION, registered on February 27, 1968; - U.S. Trademark Registration No. 834,705 for PANAVISION, registered on September 5, 1967; - U.S. Trademark Registration No. 1,160,790 for PANAVISION, registered on July 14, 1981; - U.S. Trademark Registration No. 1,972,238 for , registered on May 7, 1996; - U.S. Trademark Registration No. 3,128,333 for , registered on August 15, 2006; - U.S. Trademark Registration No. 3,184,442 for PANAVISION, registered on December 12, 2006; page 3 - U.S. Trademark Registration No. 3,447,278 for PANAVISION, registered on June 17, 2008; - U.S. Trademark Registration No. 4,022,955 for , registered on September 6, 2011; and - China Trademark Registration No. 349580 for PANAVISION, registered on May 30, 1989. The Complainants state they own numerous domain names which comprise the PANAVISION trade mark, including but not limited to , , and which were respectively registered on February 11, 1998, September 8, 2005, and July 9, 2018. The disputed domain name was registered on October 28, 2021, and resolves to an inactive website. 5. Parties' Contentions A. Complainants The disputed domain name is confusingly similar to the Complainants' PANAVISION trade mark in which they have rights. The PANAVISION trade mark is incorporated in the disputed domain name. The only difference between the disputed domain name and the Complainants' PANAVISION trade mark lies in the addition of the generic term "look", which is generally descriptive of the Complainants' lens and camera products that require consumers to "look" through the product to utilize the same. The Respondent seeks to exploit consumer confusion and the Complainants' fame and goodwill by fully incorporating the Complainants' PANAVISION trade mark in the disputed domain name. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainants have not licensed or otherwise authorized the Respondent to use or register the disputed domain name. The PANAVISION trade marks are extremely famous and well known throughout the world. There is no indication that the Respondent is known as "Panavision", "Panavision Look", or "PanavisionLook.com". The Respondent also does not appear to have any legitimate trade mark or other intellectual property rights in or to any of the PANAVISION trade marks or any similar marks. The disputed domain name is identical or confusingly similar to the Complainants' PANAVISION trade mark and serves as a "bait" to attract customers to the Respondent's passively-held, inactive website. The PANAVISION mark is an invented word and therefore, third parties would not legitimately choose this name unless seeking to create an impression of association with the Complainants. The disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name which wholly incorporates the Complainants' famous PANAVISION trade mark but for the addition of the generic term "look". The disputed domain name is passively held for an inactive site. The Respondent has no connection to the Complainants. Therefore, the registration of the disputed domain name suggests opportunistic bad faith to create an impression of association with the Complainants. In the Complainants' information and belief, the Respondent has no legitimate trade mark or other intellectual property rights in or to the disputed domain name, or any similar marks or names. The Respondent's complete lack of intellectual property rights in the disputed domain name demonstrates bad faith in adopting and using the disputed domain name which incorporates the famous trade mark. The Respondent registered the disputed domain name nearly 67 years after the Complainants and their predecessors began using the PANAVISION trade marks, and well after the Complainants became a global leader in the field of ultra-precision visual cinematographic, digital video, and technology equipment for the motion picture, television, and related industries. The Complainants also own numerous U.S. and foreign trade mark registrations which provides the Respondent and others with constructive notice of their rights in and to the PANAVISION trade marks. The Respondent's use of a privacy shield for registration of the disputed domain name is further evidence of bad faith. The Respondent is using the Complainants' PANAVISION trade marks to draw web traffic, create confusion and improperly trade upon the Complainants' goodwill to mislead customers. page 4 B. Respondent The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings 6.1 Preliminary Issue: Language of the Proceeding The language of the Registration Agreement for the disputed domain name is Chinese. The Complainants requested that the language of the proceeding be English. The reasons are that: (i) "panavision" is an invented English word by a U.S.-based company that primarily conducts business in the English language; (ii) the disputed domain name comprises the word "panavision" and the English word, "look", and not Chinese characters. This demonstrates that the Respondent is familiar with English; and (iii) the Complainants would be put to unnecessary burden should they be required to translate the Complaint and the proceeding would be delayed. The Respondent did not comment on the language of the proceeding. Paragraph 11(a) of the Rules provides that: "Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative 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." The intention of paragraph 11(a) of the Rules is to allow UDRP panels some measure of flexibility and discretion to consider the entire circumstances of each case, to ensure fairness between the parties, while at the same time not undermining the mandate for the proceeding to be administered in an expeditious manner. The relevant circumstances for consideration would include considerations of the parties' comfort level with the respective languages, the expenses to be incurred, possibility of delay in the proceeding if translations are required, as well as the language of the domain name in dispute and of the resolving website. Having considered the relevant factors and interests of the respective Parties, the Panel determines that it would be appropriate for English be the language of the proceeding. The Panel is persuaded that the Respondent is more likely than not familiar and comfortable with the English language, taking into account its selection of the disputed domain name which comprises English words and letters of the English alphabet. The Respondent had, moreover, been notified by the Center, in both Chinese and English languages, of the language of the proceeding, the commencement of the proceeding, and the due date for filing a Response. The Respondent therefore had ample opportunity to raise any objection or propose to submit its Response in Chinese, but he did not do so. In the absence of any objection and justification therefor by the Respondent, the Panel does not find it procedurally efficient to have the Complainants translate the Complaint into Chinese. 6.2 Substantive Issues A. Identical or Confusingly Similar The Complainants have established they have rights in the PANAVISION trade mark. The Panel agrees that the addition of the term "look" in the disputed domain name does not prevent a finding of confusing similarity page 5 with the Complainants' trade mark. The distinctive PANAVISION trade mark is the first word which appears in the disputed domain name. It is identifiable and stands out in the disputed domain name. The generic Top-Level Domain ("gTLD") ".com" is a technical requirement for domain name registrations and does not have any impact on the issue of the identity or confusing similarity between the disputed domain name and the Complainants' trade mark. The Panel accordingly finds that the disputed domain name is confusingly similar to the Complainants' trade mark, and the first element of paragraph 4(a) of the Policy has been satisfied. B. Rights or Legitimate Interests The Panel finds that the Complainants have established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainants' long and extensive use and registrations of the PANAVISION trade marks long predate the registration date of the disputed domain name. The Complainants did not license nor authorize the Respondent to use the word "panavision" as a trade mark or in a domain name. Neither is there any evidence that the Respondent is commonly known by the disputed domain name. The use of the disputed domain name which incorporates the Complainants' well-known trade mark and the term "look" for a passively-held inactive site does not constitute a legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii) of the Policy nor does it constitute a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. The Respondent's choice of a famous trade mark and incorporation of the word "look" in the disputed domain name shows a clear intent to mislead consumers into believing that the disputed domain name is associated with the Complainants. Having established a prima facie case, the burden of production shifts to the Respondent to show that he has rights or legitimate interests in the disputed domain name. The Respondent did not file a Response in the present case to rebut the Complainants' assertions and evidence. In the circumstances, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel therefore finds that the second element of paragraph 4(a) of the Policy has been satisfied. C. Registered and Used in Bad Faith The Panel is persuaded in the circumstances of this case that the Respondent targeted the Complainants and their well-known PANAVISION trade mark. There is no other reason for the Respondent to have registered the disputed domain name except for the sole purpose of riding off the reputation and goodwill in the Complainants' PANAVISION trade marks and to create confusion with the Complainants' PANAVISION trade marks and business. The "mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith" (see section 3.1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")). The passive holding of the disputed domain name does not prevent a finding of bad faith. In this case and in accordance with the relevant factors set out in section 3.3 of the WIPO Overview 3.0, the Panel finds that there has been bad faith registration and use. The said factors include: (i) the degree of distinctiveness or reputation of the Complainants' mark; (ii) the failure of the Respondent to submit a Response or provide any evidence of actual or contemplated good faith use of the disputed domain name; and (iii) the implausibility of any good faith use to which the disputed domain name may be put. page 6 Additionally, taking into account the Respondent's absence of rights or legitimate interests in the disputed domain name, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith. The Panel therefore finds that the third element of paragraph 4(a) 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 be transferred to the Complainants. /Francine Tan/ Francine Tan Sole Panelist Date: July 14, 2022
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