ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Paramount Pictures Corporation v. Justin Laurence Silva Case No. D2024-4256 1. The Parties The Complainant is Paramount Pictures Corporation, United States of America, represented internally. The Respondent is Justin Laurence Silva, Philippines. 2. The Domain Name and Registrar The disputed domain name
(the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2024. On October 16, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 16, 2024, 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 (“DOMAINS BY PROXY, LLC”) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 17, 2024, 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 October 17, 2024. 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 October 29, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 25, 2024.
page 2 The Center appointed Mathias Lilleengen as the sole panelist in this matter on December 2, 2024. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant is a global mass media company that creates and distributes content across a variety of platforms to audiences in more than 180 countries. It is producer and distributor of filmed entertainment since 1912, with a library of more than 1,000 film titles and with rights to an additional 2,500 films, including popular films such as The Godfather, Star Trek, Titanic and Forrest Gump. For over 100 years, the Complainant has utilized the trade name and trademark PARAMOUNT PICTURES and PARAMOUNT. It has numerous trademark registrations, for example trademark registration No. 42017001677 (registered on August 24, 2017) in the Philippines where the Respondent is located. The Complainant has registered numerous domain names, such as , and . The Complainant operates its official website from “www.paramount.com”. The Domain Name appears to be registered on March 23, 2024. At the time of the Complaint, the Domain Name resolved to a webpage with content scraped from the Complainant’s official website, including the Complainant’s trademarks and logos. At the time of drafting the Decision, the Domain Name resolved to an error page. 5. Parties’ Contentions A. Complainant The Complainant provides evidence of trademark registrations and argues that its trademark has acquired a high degree of public recognition and distinctiveness. The Complainant contends that the Domain Name is confusingly similar to the Complainant’s trademark as the Domain Name incorporates the entire trademark. The additional term “acquisition” does not prevent confusing similarity between the Domain Name and the trademark. The Complainant argues that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant asserts that the Respondent has not been authorized by the Complainant to use the trademark. The Complainant’s first use of the PARAMOUNT trademarks pre-dates the Respondent’s registration of the Domain Name by over 100 years. The Respondent has never been commonly known by the Domain Name. There is no evidence of the Respondent’s use of, or 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. Rather, the Respondent is using the Domain Name in bad faith to impersonate the Complainant to solicit illegal payments and confidential information. The Complainant believes the Respondent knew it incorporated the Complainant’s famous trademark, and the Respondent registered the Domain Name with the specific intent to defraud Internet users. The Respondent has used the Domain Name in bad faith to impersonate the Complainant and fraudulently obtain confidential and financial information from individuals and organizations interested in business relationships with the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions.
page 3 6. Discussion and Findings A. Identical or Confusingly Similar The first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the Domain Name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has established that it has rights in the trademark PARAMOUNT. In this case, the Domain Name incorporates the Complainant’s trademark with the addition of “acquisition”. The addition does not prevent a finding of confusing similarity between the Domain Name and the trademark. For the purpose of assessing under paragraph 4(a)(i) of the Policy, the Panel may ignore the generic Top-Level Domain; see WIPO Overview 3.0, section 1.11.1. The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which a respondent may demonstrate rights or legitimate interests in a disputed domain name. While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Based on the evidence, the Respondent is not affiliated with or related to the Complainant in any way. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired trademark rights. There is no evidence of 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. The Respondent’s use of the Domain Name is not bona fide, but rather evidence of bad faith, see below. Moreover, the Panel finds that the composition of the Domain Name carries a risk of implied affiliation with the Complainant. WIPO Overview 3.0, section 2.5.1. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel notes that for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular but without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The Respondent knew of the Complainant when it registered the Domain Name. It follows from the composition and use of the Domain Name, as well as the fame of the Complainant’s trademark. The use of the Domain Name is further evidence of bad faith, as the Respondent without authorization has impersonated the Complainant to mislead Internet users.
page 4 Based on the available record, the Panel finds that the Complainant has established the third element of the Policy. 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 transferred to the Complainant. /Mathias Lilleengen/ Mathias Lilleengen Sole Panelist Date: December 10, 2024
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