WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Panavision Inc And Panavision International, L P v. Gala Trade Inc

Case No. D2000-1533

 

1. The Parties

The Complainants are Panavision Inc and Panavision International, LP, of 6219 De Soto Avenue, Woodland Hills, California 91367, United States of America.

The Respondent is Gala Trade Inc of 16 Kilbarry Court, Richmond Hill, Ontario L4C 6M8, Canada.

 

2. The Domain Name and Registrar

The domain name on which the Complaint is based is <panavisioncanada.com>.

The registrar with which the domain name is registered is Network Solutions Inc, 505 Huntmar Park Drive, Herndon, Virginia 20170, USA.

 

3. Procedural History

3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 ("the Policy") in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as at December 1, 1999 ("the Supplemental Rules").

3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") on November 7, 2000.

3.3 The Center has stated in its "Formal Requirements Compliance Checklist" dated December 18, 2000 that:

- The Complaint was filed in accordance with the requirement of the Rules and the Supplemental Rules.

- Payment for filing was properly made.

- The Complainant has complied with the formal requirements.

3.4 The Panel accepts these findings and itself finds that:

- The Complaint was properly notified in accordance with the Rules, paragraph 2(a), having been sent to the Respondent by Post/Courier and E-mail.

- Having received no response from the Respondent within the specified time in the Notification of Complaint, the Center issued to both parties a Notification of Respondent Default dated January 8, 2001.

- On January 16, 2001, the Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date. The notification informed the parties that the Administrative Panel would be composed of a single member and that, in the absence of exceptional circumstances, the decision of the Panel was to be forwarded to the Center by January 29, 2001.

- The Administrative Panel was properly constituted.

 

4. Factual Background

4.1 The First Complainant, Panavision Inc, is a Delaware corporation and is the sole General Partner of the limited partnership, Panavision International, L P, the Second Complainant. The First Complainant directs the day-to-day operations of the business, which has a large number of national and/or regional distributorships and representatives. The Complaint does not actually describe and detail the nature of the Complainantsí operations, nor does it give precise details as to their scope and volume. More relevantly, however, the Complaint refers to and lists (Annexe 4) the trade and service marks held by one or other of the Complainants in Canada, the European Union and the United States. These consist of the word "Panavision" and variations thereof, and are registered with respect to a wide range of photographic, television and cinematographic equipment and services.

4.2 There is also a list provided of the Complainantsí representatives in a large number of countries, including Canada, United States of America, Europe, Australia and New Zealand (Annexe 4). It is noteworthy that the Canadian distributorship, which is wholly owned by the Complainants, has the company name PanavisionCanada, and that the PANAVISION mark has been in continuous use in Canada since about 1955 and has been registered in that country since 1966.

4.3 It is also noteworthy that a number of the Complainantsí national and regional representatives have established their own web sites and have registered the word Panavision as part of their domain name; on occasion, this has been done in conjunction with the name of the country or city in question, for example, <panavision-france.com>, <panavisionhollywood.com> and <panavisionparis.com> (Annexe 5).

4.4 According to the Whois database of Network Solutions Inc, the Respondent is listed as the Registrant and Billing Contact of the domain name <panavisioncanada.com>, while Galina Akhmadeeva of Gala Trade of the same address is listed as the Administrative Contact and Billing Contact. This registration was created with Network Solutions on February 12, 1999, expires on February 12, 2001, and was last updated October 24, 2000.

4.5 According to the Complainantís information and belief, the Respondent is a transportation company, providing trucking services throughout a portion of Canada and the United States. Apart from the disputed domain name, it appears that the Respondent has registered a large number of other domain names which contain the names of well known companies, including <pepsicanada.com>, landrover-canada.com, <toshibacanada.com> and <mercedescanada.com> (Annexe 6).

 

5. Partiesí Contentions

A Complainant

- The Complainants do not directly address the element described in paragraph 4(a)(i) of the Policy, but simply refer to the list of their registered trade and service marks (see Annexe 3). In addition, the Complainants assert, but without providing evidence in support, that they have been using (presumably through their Canadian distributor) the service mark "PANAVISION CANADA" since at least 1989 although this is not currently registered.

- With respect to the element described in paragraph 4(a)(ii) of the Policy, the Complainants submit that there is no evidence of any right or interest by the Respondent in the domain name <panavisioncanada.com>. Upon information and belief, the Complainants assert that the Respondent is a trucking company that operates within parts of Canada and the USA, and there does not appear to have been any use of the registered domain name since the date of registration. To the Complainantsí knowledge, the Respondent is not commonly known by this name and it does not seem to bear any relationship to the Respondentís business.

- With respect to the element described in paragraph 4(a)(iii) of the Policy, the Complainants assert that the disputed domain name has been registered by the Respondent to prevent the Complainants from using their Canadian companyís name as a domain name and that this amounts to bad faith. In this regard, the Complainants point to the practice of other national Panavision representatives who have registered domain names comprising the word "Panavision" and, on occasion, with the name of the country or city as well (see above). The Complainants assert that being unable to follow that practice in Canada injures Panavision Canadaís marketing. They point further to the large number of domain name registrations which have been effected by the Respondent and which comprise the names of well known companies (see above). The Complainants submit that this pattern of conduct reflects that the Respondent engages in this practice in order to sell back to the rightful owner those names at a "ransom price, as well as preventing the rightful owners the use of these names for their own domain, and for other unlawful purposes." No evidence of any actual attempt by the Respondent to sell the disputed domain name at a "ransom price" has been presented by the Complainant in this proceeding, but the latter submits, in effect, that there is sufficient here to conclude that the domain name has been registered and used in bad faith.

B Respondent

As noted above, the Respondent has not filed a Response to the Complaint.

 

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant has the burden of demonstrating three elements.

6.1 That the Complainant has rights in a trade or service mark with which the Respondentís Domain Name is identical or confusingly similar

As noted in paragraph 4.1 above, the Complainants are the owners of registered trade and service marks comprising the name PANAVISION and variations of this in a number of countries, including Canada. The Respondentís domain name <panavisioncanada.com> is clearly not identical. Nonetheless, the word PANAVISION is a substantial and dominating part of the domain name, with the consequence that the latter is confusingly similar to the registered trade marks. Accordingly, the Complainants have established this element of paragraph 4(a) of the Policy, namely that it has rights in a trade or service mark that is confusingly similar to the Respondentís domain name.

In light of this conclusion, it is unnecessary to consider a further possibility, namely that the Complainants have rights in an unregistered mark that is identical to the disputed domain, namely PANAVISIONCANADA. No evidence of the reputation and extent of user of this mark has been given, and the Panel therefore reaches no conclusion on this question.

6.2 That the Respondents must be shown to have no rights or legitimate interests in the Domain Name

Paragraph 4(c) of the Policy sets out certain matters which a Respondent can point to as demonstrating rights or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii). These include:

"(i) before any notice to you [the Respondent] of the dispute, your use, 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; or

(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

In the present proceeding, there is no evidence that the Respondent has used the domain name <panavisioncanada.com> in connection with any bona fide offering of goods and services (subpara (i)). Nor is there any evidence of "demonstrable preparations" to use the domain name in that way (subpara (i)). Likewise, there is no evidence before the Panel that indicates that the Respondent has ever carried on a business under the name "PANAVISIONCANADA" or that it has been commonly known by that name (subpara (ii)). Furthermore, there is no evidence that on which the Panel can make any assessment of the matters referred to in subpara (iii), i.e. whether the Respondent has made or is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to mislead customers or to tarnish the trade mark at issue.

The matters referred to paragraph 4(c) are not an exhaustive statement of what may constitute rights or legitimate interests in a domain name, and it is therefore open to a Respondent to point to other evidence that may show this. In the present proceeding, however, there has been no evidence at all presented by the Respondent and, under Paragraph 14(b) of the Rules, the Panel is entitled to draw from such default such inferences as it considers appropriate. The Panel therefore concludes that the Complainants have established this element of Paragraph 4(a) of the Policy, namely that the Respondent has no rights or legitimate interests in the disputed domain name.

6.3 That the Respondent registered and is using the Domain Name in bad faith

Paragraph 4(b) of the Policy lists certain factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This is not an exclusive list, and includes:

"(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

It will be noted that, under paragraph 4(a)(iii) of the Policy, both registration and use of the domain name in bad faith are required. Of the factors listed in paragraph 4(b) above, (i)-(iii) relate specifically to registration (and acquisition) of the name, while (iv) relates to use following registration. However, in view of the fact that these factors are stated to be inclusive, it follows that there can be other factors that can be relied upon to point to bad faith, both in registration and in use. In this regard, it is worth noting an early decision of the Administrative Panel to the effect that registration in bad faith followed by a passive holding of a domain name when there is no way in which it could be used legitimately can amount to use in bad faith: Telstra Corporation Ltd v Nuclear Marshmallows Case D 2000-0003. In addition, it would be both mistaken and artificial to confine paragraphs (i)-(iii) solely to the time of registration: presumably, it would also be a use of a disputed domain name in bad faith to do so, after registration, with one of the purposes outlined in those paragraphs. Support for this view is to be found in several Panel decisions: see, for example, Estee Lauder Inc v estelauder.com, estelauder.net and Jeff Hanna, Case No 2000-0869 and E & J Gallo Winery v Hanna Law Firm, Case D2000-0615.

In the present proceeding, the situation is complicated by the fact that the Respondent has not filed any Response or provided any evidence as to its intentions in registering and maintaining the disputed domain name. As noted above, under Paragraph 14(b) of the Rules, where a party defaults in complying with any requirement of the Rules, the Panel is entitled to draw from such default such inferences as it considers appropriate.

In the light of the above, the Panel makes the following findings:

- With respect to the factor mentioned in subpara 4(b)(i), there is no actual evidence presented by the Complainants that the Respondent has registered the disputed domain name for the purpose of selling or transferring it for valuable consideration in excess of out of pocket expenses. In particular, there is no evidence that the Respondent has at any time approached the Complainants with the object of transferring the domain name for such a consideration. Nonetheless, the Respondent has not responded to the Complainantsí allegation that this was his intention in registering the name, and it is open to the Panel draw this inference from the Respondentís silence. This inference is easier to draw in the light of the next finding.

- With respect to the factor mentioned in subpara 4(b)(ii), there is ample evidence (see Annexe 6) of a pattern of conduct by the Respondent which consists of registering the names of well known company names as domain names. In this regard, the Panel notes there is no actual evidence presented by the Complainants that the domain names listed in Annexe 6 are the subject of trade or service mark registrations in any jurisdiction, and this is what subpara 4(b)(ii) requires in strict terms. On the other hand, many of the domain names listed in Annexe 6 comprise the names of well known products and services, such as Mercedes, Land Rover, Shell and Pepsi Cola, and the Panel is entitled to infer, in the circumstances, that these names must be the subject of registrations and rights (statutory and non-statutory) in at least some jurisdictions. Furthermore, none of these names appear to have any connection with the services (trucking) believed to be offered by the Respondent, and there has been no explanation given by the Respondent as to why such a group of registered domain names is required by it. In all these circumstances, the Panel is entitled to infer that the requirements of subpara 4(b)(ii) have been made out. The Panel notes further that the factors referred to in subparas 4(b)(i)-(iv) are not an exclusive list of matters going to the question of bad faith. It would therefore conclude, in any event, that conduct of the kind described above Ė that is, the large scale registration of well known company names as domain names Ė is sufficient to demonstrate the requirement of bad faith, irrespective of whether these company names are also the subject of trade or service mark registrations.

- With respect to the factor mentioned in subpara 4(b)(iii), there is no direct evidence that the Respondent has registered the domain name <panavisioncanada.com> primarily for the purpose of disrupting the business of a competitor. Nonetheless, it has been clearly established that the Complainants are the owners of registered trade and service marks in a number of countries (including Canada) that comprise the mark PANAVISION. The Complainants have also demonstrated a pattern, on the part of their national and regional distributors, of registering domain names comprising the word PANAVSION, sometimes together with the name of relevant country or city. From these facts, and in the absence of any explanation from the Respondent, it is open to the Panel to infer that the Respondentís registration of the disputed domain name was made primarily for the purpose of disrupting the business of the Complainants: clearly, this will prevent Panavision Canada from registering its trading name as a domain name and from marketing its products and services in the same way as other national and regional Panavision distributors and representatives, such as Panavision-France, Panavision Hollywood and so on. The only difficulty here is that subpara 4(b)(iii) requires this to be done with respect to the "business of a competitor" and there is no evidence that the Complainants and the Respondent are competitors in any direct sense. In this regard, however, it is relevant to note that several Panel decisions have interpreted the word "competitor" as having a wider meaning that is not confined to those who are selling or providing competing products. In this wider context, it means "one who acts in opposition to another and the context does not demand any restricted meaning such as commercial or business competitor": Mission Kkwa Sizabntu v Benjamin Rost, Case D2000-0279; see also Estee Lauder Inc v estelauder.com, estelauder.net and Jeff Hanna, Case No 2000-0869; E & J Gallo Winery v Hanna Law Firm, Case D2000-0615; Dixons Group Plc v Mr. Abu Abdullaah, Case No. D2000-1406. The cases cited concerned "complaint sites" and the Panels were prepared to accept that the registration and use of the disputed domain names in relation to such sites amounted to competition with the complainants in those cases for Internet users who would be confused, at least initially, if they accessed the Respondentsí sites. In the present proceeding, the Respondent has not established a web site (at least no evidence to this effect has been presented), but it cannot be doubted that its action in registering the disputed domain name matches the description of "one who acts in opposition to another." In the circumstances, it is clear that this is disruptive to the Complainantsí business in Canada and comes within the requirements of subpara 4(b)(iii).

- So far as use of the disputed domain name within the terms of subpara 4(b)(iv) is concerned, the Respondent does not appear to have a web site, and therefore the remaining requirements of that subparagraph are not met.

- Accordingly, the Panel finds that the Complainants have established that the Respondent has registered the disputed domain with bad faith, within the terms of each of subparas 4(b)(i)-(iii). The question remaining is whether the Respondent has also "used" the disputed domain name in bad faith. The evidence is that the name has simply been registered and then retained passively, without further positive action on the part of the Respondent. On the other hand, it is clear that it would be impossible for the disputed domain name to be used in any legitimate sense by the Respondent, even if it desired to do so. For example, the establishment of a web site attached to the domain name would inevitably lead to confusion on the part of Internet users and would disrupt the business of the Complainants. Accordingly, the Panel concludes that the continued retention of the disputed domain name amounts to a use in bad faith within the terms of paragraph 4(a)(iii): see further Telstra Corporation Ltd v Nuclear Marshmallows Case D 2000-0003.

On the basis of the above findings, the Panel concludes that there is sufficient evidence that the Respondent has both registered and used the domain name in bad faith since the time of registration.

6.4 Conclusions

The Panel finds that the Complainant has established each of the matters referred to in paragraph 4(a).

 

7. Decision

The Administrative Panel accordingly requires that the domain name <panavisioncanada.com> be transferred to the Complainant.

 


 

Staniforth Ricketson
Sole Panelist

Dated: January 29, 2001