The Complainant is Skydance Productions, LLC, United States of America, represented by Rouse Consultancy (Shanghai) Limited, China.
The Respondent is 重庆珈亨科技有限公司 (Chong Qing Jia Heng Ke Ji You Xian Gong Si), China, self-represented. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 26, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the China ccTLD Dispute Resolution Policy (the “Policy”), the China ccTLD Dispute Resolution Policy Rules (the “Rules”), and the WIPO Supplemental Rules for China ccTLD Dispute Resolution Policy and China ccTLD Dispute Resolution Policy Rules (the “WIPO Supplemental Rules”). In accordance with the Rules, Articles 5 and 6, and Articles 14 to 16, and the WIPO Supplemental Rules, Paragraph 4(d), the Center formally notified the Respondent in Chinese and English of the Complaint, and the proceedings commenced on February 2, 2021. In accordance with the Rules, Articles 17 and 49, the due date for Response was February 22, 2021. The Respondent sent an informal email communication to the Center in Chinese on February 5, 2021. On March 4, 2021, the Center informed the Parties that it would proceed to the appointment of the panel. The Center appointed Matthew Kennedy as the sole panelist in this matter on March 5, 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, Article 29. 4. Factual Background The Complainant is a media company. Founded in 2010, it has feature film, television, interactive and animation divisions. Its recent feature films include “Terminator: Dark Fate”, and “Mission: Impossible - Fallout”. The Complainant holds registrations for the trademark SKYDANCE in multiple jurisdictions, including Chinese trademark registrations numbers 24542098 and 24542099A, registered on July 7, 2018 and October 7, 2018, respectively, and specifying goods in classes 28 and 9, respectively. Those trademark registrations remain current. The Complainant is also the registrant of the domain name The Respondent is a Chinese company. Its name indicates that it is a technology company. The disputed domain names were registered on October 20, 2020. They do not resolve to any active website; rather, they are passively held. 5. Parties’ Contentions A. Complainant The disputed domain names are confusingly similar to the Complainant’s SKYDANCE mark. They wholly incorporate that mark with the word “media”. The Respondent has no rights or legitimate interests in respect of the disputed domain names or a major part of the disputed domain names. The Respondent is not sponsored by, or affiliated with, the Complainant in any way. The Complainant has never authorized or licensed the Respondent to use the SKYDANCE mark in any manner, including as a domain name. The Respondent is passively holding the disputed domain names. The disputed domain names were registered or are being used in bad faith. Given the high popularity of the Complainant and its SKYDANCE trademark, the Complainant finds it inconceivable that the Respondent happened to register the disputed domain names without actual notice of the SKYDANCE trademark. The Respondent registered the disputed domain names to hold them passively and prevent the Complainant from reflecting its trademark through the disputed domain names. B. Respondent In an informal communication sent to the Center, the Respondent submits that it bought the disputed domain names previously. If the Complainant wants to own them, it can buy them from the Respondent. The Respondent is willing to sell them to the Complainant at a reasonable price. 6. Discussion and Findings 6.1 Language of the Proceeding According to Article 6 of the Policy and Article 8 of the Rules, the language of the proceeding shall be Chinese, unless otherwise agreed by the Parties or determined by the Panel in exceptional circumstances. The Complainant has requested that the language of the proceeding be English. Its main arguments are that it is an American-based company so it does not understand Chinese and that it would therefore be quite burdensome and expensive for it to translate the Complaint and unnecessarily delay the procedure; and that the Respondent can read and understand English as the disputed domain names both contain English words. The Respondent did not address the language of the proceeding. In accordance with Article 31 of the Rules, the Panel shall ensure that each Party be treated with equality and given a fair opportunity to present its case. The Panel shall also ensure that the proceedings take place with due expedition. Therefore, when considering the Complainant’s request, the Panel should take into account whether the Respondent is able to understand the language of the Complaint, and whether the Complainant would be disadvantaged by having to translate the Complaint into Chinese. See Laure de Sagazan v. 刘岩,WIPO Case No. DCN2019-0010; and Forest Tosara Limited v. 王晓文 (Wang Xiao Wen),WIPO Case No. DCN2019-0008. The Panel observes that the Complaint was filed in English and the Respondent’s informal email communication was sent in Chinese. The disputed domain names are both composed of English words, from which it is reasonable to infer that the Respondent understands that language. The Center sent the notification of the Complaint to the Parties in both Chinese and English and the Respondent has availed itself of the opportunity to send an informal email communication directly addressing the merits without expressing any interest in further addressing the Complainant’s contentions. In these circumstances, the Panel considers that translation of the Complaint into Chinese would create an undue delay, whereas accepting both Parties’ submissions in their original languages will not cause unfairness to either Party. Having considered all the circumstances, this Panel determines under Article 6 of the Policy and Article 8 of the Rules that the language of the proceeding is English. However, the Panel will accept all submissions as filed without translation. 6.2 Substantive Issues Article 8 of the Policy provides that a complaint against a registered domain name shall be supported if the following conditions are fulfilled: (a) the disputed domain name is identical with or confusingly similar to the Complainant’s name or mark in which the Complainant has civil rights or interests; (b) the disputed domain name holder has no rights or legitimate interests in respect of the disputed domain name or major part of the disputed domain name; (c) the disputed domain name holder has registered or has been using the disputed domain name in bad faith. Article 7 of the Policy states that the Complainant and the Respondent shall bear the burden of proof for their own claims. A. Identical or Confusingly Similar to the Complainant’s Name or Mark in which the Complainant has Civil Rights or Interests Based on the evidence submitted, the Panel finds that the Complainant has rights in the SKYDANCE mark. The disputed domain names wholly incorporate the Complainant’s SKYDANCE mark as their respective initial elements. The disputed domain names also include the dictionary word “media”. As a mere dictionary word, the addition of this element does not prevent a finding of confusing similarity with the Complainant’s mark as the SKYDANCE mark remains clearly recognizable within the disputed domain names. See Bollore v 崔隆,WIPO Case No. DCN2020-0001. The disputed domain names also include a country code Top-Level Domain suffix (“.cn”) or a Second-Level Domain suffix (“.com.cn”). As a technical requirement of domain name registration, these elements do not need to be taken into consideration in the comparison between a domain name and a trademark. See Bollore v 崔隆, supra. Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has civil rights or interests. The Complainant has satisfied the first element in Article 8 of the Policy. B. Rights or Legitimate Interests Article 10 of the Policy sets out the following circumstances which, without limitation, if found by the panel, may be evidence of the respondent’s rights to, or legitimate interests in, a disputed domain name, for the purposes of Article 8 of the Policy: (a) the Respondent uses of the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; (b) the Respondent has been commonly known by the [disputed] domain name, even if he has acquired no trademark or service mark rights; (c) the Respondent is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent of or commercial gain to misleadingly divert consumers. In the present dispute, the Respondent makes only passive use of the disputed domain names. This is not a use of the disputed domain names in connection with a bona fide offering of goods or services within the terms of Article 10(a) of the Policy. Nor is it a legitimate noncommercial or fair use of the disputed domain names within the meaning of Article 10(c) of the Policy. The Respondent’s name is listed in the Registrar’s WhoIs database as “重庆珈亨科技有限公司 (Chong Qing Jia Heng Ke Ji You Xian Gong Si)”, not the disputed domain names. There is no evidence that the Respondent has been commonly known by the disputed domain names within the terms of Article 10(b) of the Policy. In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. Turning to the Respondent’s arguments, it points out that it registered the disputed domain names first. However, the Panel does not consider that the mere registration of a domain name creates rights or legitimate interests for the purposes of the second element of the Policy, otherwise no Complaint could ever succeed, which would be an illogical result. The Respondent does not assert any other rights or legitimate interests. Accordingly, the Respondent has failed to rebut the Complainant’s prima facie case. Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has satisfied the second element in Article 8 of the Policy. C. Registered or Used in Bad Faith Article 9 of the Policy provides that certain circumstances may be evidence of the registration or use of a domain name in bad faith. The fourth circumstance is “[o]ther circumstances which may prove the bad faith”. The disputed domain names were registered in 2020, after the registrations of the Complainant’s SKYDANCE trademark, including in China, where the Respondent is established. The disputed domain names wholly incorporate the Complainant’s SKYDANCE trademark. “Skydance” is not a dictionary word, even though it is a combination of two English words. According to the evidence presented by the Complainant, it has made extensive use of its trademark and acquired a considerable reputation in the entertainment industry, including in China. Moreover, the disputed domain names add the word “media”, which makes their respective operational elements identical to the name “Skydance Media” by which the Complainant’s website and news media outlets formerly referred to the Complainant. The Panel does not consider this to be a mere coincidence. The Respondent offers no explanation for its choice of the disputed domain names. In these circumstances, the Panel has reason to find that the Respondent knew of the Complainant’s trademark and targeted that mark when it registered the disputed domain names. Therefore, the Panel finds that the Respondent registered the disputed domain names in bad faith. The Complainant has satisfied the third element in Article 8 of the Policy. 7. Decision For the foregoing reasons, in accordance with Articles 14 of the Policy and 40 of the Rules, the Panel orders that the disputed domain names Matthew Kennedy
Sole Panelist
Date: March 19, 2021
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