WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

IMAX Corporation v. 1st Net 2000 Production

Case No. D2001-0037

 

1. The Parties

The Complainant is IMAX Corporation of 2525 Speakman Drive, Sheridan Park, Mississauga, Ontario L5K 1B1 Canada.

The Respondent is 1st NET 2000 PRODUCTION, 119 Hampton Road, Redland, Bristol BS66JG United Kingdom.

 

2. The Domain Names and Registrar

The disputed domain names are "imaximax.com", "imaxworld.com" and "imaxworld.net". The Registrar of the domain names is Network Solutions, Inc. through City Netgates Limited.

 

3. Procedural History

The essential procedural history of this proceeding is as follows:

(a) The Complainant initiated the proceeding by filing a complaint by email received by WIPO Arbitration and Mediation Center ("WIPO") on January 8, 2001, and by courier mail received by WIPO on January 11, 2001, together with payment. On January 11, 2001, WIPO transmitted by email an acknowledgement of receipt of the Complaint to the Complainant and Respondent. The next day WIPO transmitted a Request for Registrar Verification to the Registrar, Network Solutions, Inc. (with the Registrarís Response received by WIPO on January 16, 2001).

(b) On January 12, 2001, WIPO received an e-mail message from the Respondent which showed that the Respondent had received the acknowledgement of receipt of the Complaint.

(c) On January 17, 2001, WIPO sent by email a Complaint Deficiency Notification and on the same day received the Complainantís reply to this Deficiency Notification. The Complainantís reply amended the Complaint by including material that satisfied the deficiency in the original Complaint dated January 8, 2001.

(d) On January 18, 2001, WIPO received another email from the Respondent and replied to the Respondent on the same day, recommending to the Respondent where further information on the relevant dispute resolution procedures could be found and the time frame in which to submit a response.

(e) On January 21, 2001, the WIPO Case Administrator completed the Formal Requirements Compliance Checklist. The Panel has independently reviewed these Requirements and concurs with the assessment of the Case Administrator that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), Uniform Domain Name Dispute Resolution Policy Rules ("Rules") both of which were approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, in effect as of December 1, 1999, (the "WIPO Supplemental Rules").

(f) On January 21, 2001, WIPO transmitted notification of the Complaint and commencement of the proceeding to the Respondent via e-mail and facsimile, and on January 22, 2001, by courier mail.

(g) On February 6, 2001, WIPO received the Respondentís Response by email and the following day WIPO sent its acknowledgement of receipt of the Response.

(h) On February 9, 2001, WIPO invited the undersigned panelist to serve in this proceeding. This invitation was accepted by completion and signature of the Statement of Acceptance and Declaration of Impartiality and Independence, sent to WIPO by facsimile on February 12, 2001.

(i) On February 14, 2001, WIPO dispatched a Notification of Appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") and Projected Decision Date of February 28, 2001, to all concerned parties via e-mail.

Having reviewed the communications record in the case file of this proceeding the Panel is satisfied that WIPO has discharged its responsibilities under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent" and it is clear that the Respondent has received actual notice. The Panel also finds that it has been properly constituted and appointed in accordance with the Policy, Rules and WIPO Supplemental Rules.

By letter dated February 16, 2001, the Complainant requested leave from the Panel to make certain Reply submissions. Following submission of the Complaint and Response, there is no provision in the Rules for any further written submissions by the Parties other than at the request of and in the sole discretion of the Panel (Rules paragraph 12). The Panel has made no request for further submissions and the Complainant has raised no special or compelling reason why the Panel should take into account the Complainantís Reply submissions. Hence the Panel denies the Complainantís request to make its Reply submissions of February 16, 2001.

No other requests have been received from the Complainant or Respondent regarding further submissions, waivers or extensions of deadlines. The proceeding has been conducted in English.

 

4. Factual Background

The Complainant is a company that began using IMAX as part of its corporate name in 1975, when it changed its name from Multiscreen Corporation Limited to Imax Entertainment Limited, then subsequently changed to Imax Systems Corporation in November 1977, and most recently changed to Imax Corporation in May 1991. The Complainant asserts that "IMAX" is a trademark coined by the founders of Imax Corporation and which the Complainant allegedly began using in Canada in 1967, and has used in the United Kingdom since 1983.

The Complainant owns trademarks in 51 countries in which the mark "IMAX" has been registered or has pending applications. The earliest of these was registered by the Canadian Trademark Office on August 21, 1970. In the United Kingdom the Complainant is registered as the owner of the registered mark No. A978726 for IMAX in association with, inter alia, motion picture theatre wares and services, and has been so since August 4, 1981. The Complainant is also the owner of over 20 domain names that include the word "imax" as the whole or part of the domain name. The Complainantís website at "www.imax.com" has information on theatres, films, corporate profile, affiliates, and merchandise links, all of which prominently use the word "IMAX".

The Complainant has produced evidence of the prominent use of the word IMAX in advertising, licensed merchandise such as T-shirts, videos cassettes, compact discs and other material for at least 15 cinema productions and media reports indicating that it has itself produced or co-produced over 25 films since 1970. The Complainant has also produced evidence of brochures and advertisements promoting the IMAX trade marks, as well as media articles (dating from December 1990, to February 2000), referring to the Complainantís activities with reference to the word "IMAX".

A view by the Panel on February 18, 2001, of "imaximax.com", "imaxworld.com" and "imaxworld.net", the web sites with the domain names the subject of this proceeding, resulted in each case in the message: "Unable to determine IP address from host name for "www.imaximax.com" / "www.imaxworld.com" / "www.imaxworld.net." (respectively).

The Respondent states that he is a "co-producer of the British Week of film screenings and co-producer of the Cinema 2000 Productions documentary film making team, responsible for the filmed record of the events on the Isola del Cinema" Festival of Film in Rome (Response point 19).

It appears that the Respondent registered the three domain names in dispute, "imaximax.com", "imaxworld.com" and "imaxworld.net", according to a search of the WHOIS database of the Registrar, on July 13, 1999, the date "Record created".

The Complainant, by letter dated August 30, 2000, notified the Respondent "of Imaxís rights" and stated that "if you (Respondent) activate any site under the domain names, "imaxworld.com", "imaxworld.net", and "imaximax.com", Imax will be compelled to enforce its rights. In view of the foregoing and without prejudice to IMAXís rights to pursue the ICANN dispute resolution policy, or its rights in the courts, if you wish to transfer the domain names to Imax, we will reimburse your registration and transfer fees, up to an amount of $300.00 CDN per domain name." (word in brackets provided).

By an email letter from the Respondent to the Complainant which the Complainant indicates is of September 1, 2000, (and which the Respondent does not deny) it is stated, in relevant part:

" I am the owner of the domain names imaximax.com/.net and imaxworld.com/.net. The names were bought on a whim when the new IMAX theatre was under construction in Bristol UK, with the thought in mind that there is no accounting for taste and thus four different site designs would attract most of the interested people. The intention of setting up a network of sites to promote IMAX films (entered on Bristol) and to, with your cooperation, merchandise IMAX products worldwide on the web was really all I had in mind. ÖÖ.Essentially I have a valuation of 1million dollars for the dot com and 250,000 for the dot nets and little capital to develop tem (sic), but feel that to sell them without informing you of their existence would be unethical. ÖÖÖ.Maybe this does not say too much to you right now, but my proposal is this; If you would like to broaden your retail base by buying the domain names and using them, as I had hoped to for active e-commerce sites, each with a different design element, then I would be happy to consider an offer. If you are not interested in the idea, I will make the domains available on the open market. ....Ö."

By a letter signed by the Respondent to the Complainantís attorney which the Complainant indicates is of September 2, 2000, (and which the Respondent does not deny) it is stated, in relevant part:

"SinceÖ.and the realization that the Imax Corporation would be unlikely to co-operate in a venture with such a small entity as myselfÖÖÖ., I have made moves to sell the Domain Names. This only reluctantly and after making every possible attempt to raise funds to furnish a web presence equal to the task of presenting Imax theatres and Imax film to the world. ÖÖ. I would also like to inform you of my personal reasons with regard to the domain names mentioned above. ÖÖI only recently, about two years ago, came across the Imax film format. The Imax Theatre Bristol opened this month, but hen (sic) the plans were announced, it occurred to me that the theatre and Imax films generally were mostly unheard of locally. ÖÖMy idea for the sites was to contact every Imax theatre world wide and to have them register their schedules and provide through the domains an online booking service for travelers, business people and tourists. ÖÖ.This site was, with the co-operation of the Imax Corporation, to be linked to the "imax.com" home site where merchandising would be available. ÖÖSeeing that the Imax Corporation may feel obliged to complicate the construction, hosting and trading of a web site using the names in question, I would like to offer an alternative to a lengthy and highly public courtroom battle. Viz: that Imax Coproration procures an independent professional valuation for the domain names "imaximax.com", "imaxworld.com","imaximax.net", and "imaxworld.net" and if this valuation differs from the valuations that I have already a mean valuation is calculated and a sale agreed."

By email from the Respondent to the Complainantís attorney of January 5, 2001, it is stated that:

"I was hoping to register 1stnet2000 as a limited company to manage the visitors to my sites, but that was a plan for when the sites were up and running. ÖÖ..Anyway, even if I committed the cardinal sin of a slander site with the names, would that not draw publicity for the Imax company. Okay. I have no intention of doing that, for the reasons I have said before, but it is an increasingly accepted rule that any publicity is good publicity in the quest for fame and notoriety. By contrast, in the computer press fair play begets good publicity and $300 dollars is not fair play. This really means that Imax is not concerned with their public image, or what I would do with the sites. ÖÖ..Though a web site can become a weapon, you already have my assurance that mine will not be used so. I can assure you also that many of the complexities of this affair are within my grasp. Ö."

Respondent indicates that he has "suggested a property for property exchange of cyber space (the domain names) in return for Moon Acreage of 7500 acres at $20US per acre Ö" (Response point 14). With regard to this suggestion the Respondent states that he would "Ölike to withdraw this counter offer to the Complainant in deference to the judgement of the ICANN Administrative Panel" (Response point 16).

It appears the Respondent has received valuation of the domain names from "www.shoutloud.com" and "www.greatdomains.com" "whose valuation ranged from $250,000 Ė 1,000,000US for "www.imaximax.com" and "www.imaxworld.com" individually and up to $250,000US for "www.imaxworld.net."" (Response point 14 and tenth paragraph of Respondentís letter to Complainantís attorneys of September 2, 2000).

The Respondent states that "Öthe domain names were equally available to the Complainant as to any other interested party through the "www.eorobid.com" auction site, wherein the Respondent gave and gives no indication as to a preferred buyer." (Response point 22).

 

5. Partiesí Contentions

A. Complainant

The Complainant asserts that:

(a) The Complainant is the inventor and developer of film, movie and screening technology. For over 30 years, the Complainant has been engaged in a range of activities in the large-format cinema field, principally including:

(i) theatre design, operation, and licensing;

(ii) 2-D and 3-D camera and projector invention, development, sale and leasing;

(iii) film financing, development, production and distribution; and,

(iv) theatre sound system development and leasing.

(b) The Complainant identifies its products and services by the trade mark IMAX, and a family of related IMAX marks. "IMAX" is a trademark coined by the founders of Imax Corporation and which the Complainant began using in Canada in 1967. The Complainant has used the IMAX mark extensively and continuously in countries around the world, more specifically in Canada since 1967, and in the United Kingdom since 1983. Over the years, the IMAX mark has become well known across the world to identify large-format theatres and related products and services of the highest quality.

(c) The Complainant is also the owner of other trademarks comprising IMAX, used and/or registered in countries around the world, including the following:

  1. THE IMAX EXPERIENCE
  2. AN IMAX EXPERIENCE
  3. AN IMAX 3D EXPERIENCE
  4. IMAX RIDEFILM
  5. IMAX SOLIDO
  6. IMAX 3D DOME
  7. IMAX DOME
  8. IMAX HD
  9. IMAX PSE
  10. IMAX SIMULATOR RIDE
  11. IMAX SR

(d) The Complainant premiered the first IMAX large-screen projection (for IMAX System) at the 1970, Expo in Osaka, Japan. In 1973, Imax premiered a sister projector system under the trademark OMNIMAX. The OMNIMAX System is designed for domed theatres with giant hemi-spherical screens. The IMAX System is enhanced by a state-of-the-art sound system. This sound system was first introduced in 1991, to coincide with the release of Imaxís first feature-length film entitled "Rolling Stones At The Max" which documented a concert by the famous rock music band "The Rolling Stones". Films produced for viewing in the IMAX System have received widespread recognition and popularity. Numerous films have been made, and they have been viewed by millions of people around the world including in the United Kingdom.

(e) The Complainant is listed on both NASDAQ and the Toronto Stock Exchange. It has headquarters in the Sheridan Science and Technology Park in Mississauga, Ontario, and offices in New York, Los Angeles, Europe, Singapore, and Japan.

(f) The Complainant is actively involved in every aspect of the large-format medium and works with filmmakers, sponsors, and its clients in museums, science centres, natural history facilities, theme parks, downtown developments, and worldís fairs to provide and maintain the high quality of the IMAX System. As part of these activities, the Complainant leases the IMAX System and licenses use of the IMAX Family of Marks to operators of specially designed theatres in countries around the world. Currently, there are approximately 220 IMAX theatres, operating in 26 countries around the world. There are presently 7 IMAX theatres operating in the United Kingdom.

  1. The Complainant has always controlled the character and quality of the wares and services in association with which its trademarks have been used by its licensees through its license agreements. Control is exercised, inter alia, by closely controlling the design specifications for the construction of theatres; providing motion picture projection equipment and accessories made by the Complainant to its exacting standards; monitoring reports received from theatre licensees in accordance with written license agreements, and providing routine and emergency maintenance services to ensure a consistent high quality of presentation. Revenues from royalties from IMAX theatres, the sale of licensed merchandise, equipment rental and leasing, and film distribution (all in association with one or more of Imaxís trade marks), are significant. The Complainant is the largest and most successful company selling large-scale cinema equipment and theatres in the world.

(h) The Complainant has supported its sales, promotion, distribution and licensing of the IMAX System throughout the world, including the United Kingdom, through significant advertising and promotional activities. This advertising and promotion has been placed in various media, including print, television, and radio, and through displays located in IMAX theatres, and at trade shows, always in association with one or more of the IMAX Family of Marks.

(i) The technical and engineering excellence of the IMAX System and products and the high quality of films produced by the Complainant have all been recognized through various awards and nominations. As a result of lengthy and substantial use and advertising worldwide, the IMAX family of trademarks has become famous and well recognized throughout the world, exclusively in association with the complainantís cinema systems and services. The Complainant is a leader in its field, and the trade mark IMAX, a coined word with no inherent meaning, would be immediately recognized as a trade mark of the Complainant, and associated with IMAX goods and services. The Complainant is continuously taking steps to protect it rights in the IMAX family of trade marks, not only by registering its trade marks and domain names, but also by opposing trade mark applications and objecting, where necessary, to other uses of IMAX or confusingly similar trade marks. Court proceedings and oppositions have been commenced in more than a dozen countries around the world.

The Complainant makes the following arguments:

(1) The Respondent registered the Disputed Domain Names on or about October 20, 1999. The Domain Names are confusingly similar to the IMAX trademark of the Complainant. As part of a review of IMAX domain names to ensure that there was no improper or infringing use of the IMAX trade mark, the Complainant noted the Disputed Domain Names. As soon as the registration of these Disputed Domain Names came to the attention of the Complainant, its attorney wrote to the Respondent in the interest of trying to resolve the matter expeditiously, by offering up to $300 (Cdn) per domain name for their transfer to the Complainant.

(2) The Complainant, and not the Respondent, is the owner of all rights and interest in the trade mark and domain name IMAX. The Respondent has not and can not have any legitimate rights in the Domain Names. The Respondent has no inherent rights in, or interest in the IMAX trade mark or domain name. The Respondent has never carried on business under any name resembling "Imax". In fact, in his communications with agents for the Complainant, it admits that it selected his domain names based upon his knowledge and admiration of the Complainantís products. The Respondentís sole interest in these names is to capitalize on the goodwill of the Complainant in its trademark.

(3) A mere registration of a domain name does not confer rights in the name. Accordingly, a registrant does not necessarily have a legitimate interest in a domain name. In Rollerblade, Inc. v. Chris McCrady, (WIPO D2000-0429) the arbitrator ruled that there was no legitimate interest in the domain name "rollerblade.net" merely by virtue of interest in the complainantís products. Similarly, in this case, the Respondent does not have any legitimate interests or rights in the Disputed Domain Names by a mere registration, by stating that it admires the Complainantís products, or by stating that it would have like to engage in some future business with the Complainant to promote IMAX films, as alleged in the Respondentís letter dated September 1, 2000, to the Complainant.

(4) The Complainant submits that the registration of the Disputed Domain Names by the Respondent is in bad faith. The Respondent stated that he purchased the Disputed Domain Names in order to approach the Complainant for business purposes. The Respondent further states that the offer to reimburse his registration expenses is too low, and that he would only relinquish these names for substantially higher consideration. This is evidence of bad faith, in that the Respondent acknowledges that ownership of these Disputed Domain Names rightfully belongs to the Complainant and that his sole interest in these names is to extract valuable consideration from the Complainant, either through money from the sale of these names or as leverage to extract a business partnership arrangement from the Complainant, in its letter dated September 1, 2000, to the Complainant, and in its letter dated September 2, 2000, to the Complainantís attorney.

(5) The Respondent also revealed a lack of interest in the Domain Names given the Complainantís unwillingness to cooperate with it in the development of a network to promote the products and services of the Complainant in its letter to the Complainant, and in its e-mail to the Complainantís attorney dated January 6, 2001. This is another indication of bad faith registration of the Disputed Domain Names.

(6) The Complainant submits that the Respondent has failed to make good faith use of the Disputed Domain Names since the date of the Disputed Domain Namesí registration, namely on or about July 13, 1999. According to the WIPO decision regarding the domain name "americanvintage.com", (WIPO D00-0004), the arbitrator stated that: "[an inference of bad faith is] supported by the respondentís failure for a substantial period of time to make good faith use of the domain name for its business. Ö.Nevertheless, it appears that the respondent has done nothing with the Domain Name for over two years. While inconclusive, it is possible to infer from this failure of use that the domain name was registered without a bona fide intent to make good faith use." [underline added]

(7) The Respondent has not established a web site corresponding to the Disputed Domain Names. According to the recent WIPO decision (WIPO D00-0001) regarding the domain name "musicweb.com", although no active web site had been established corresponding to the domain name, seeking payment over out-of-pocket cost for the transfer of a domain name constitutes "commercial use" and such "commercial use" constitutes bad faith use. Similarly, in the case at bar, the Respondent has requested for an amount substantially in excess of out-of-pocket expenses for the transfer of the Disputed Domain Names to the Complainant.

(8) The use of the Disputed Domain Names by the Respondents would be improper and contrary to the trademark laws of numerous countries, including the trademark laws under any of the jurisdiction that the present dispute proceeding may be subject to. In particular, among these trade mark laws, the use of the Disputed Domain Names would be contrary to the provisions of the Trade-marks Act of Canada (location of the Complainant), the Trade Marks Act 1994 of the United Kingdom and the Community Trade Mark Regulation of the European Community (location of the Respondent), and the Lanham Act of the United States (location of the Registrar).

(9) The use of the Disputed Domain Names would be contrary to trademarks laws in that the use of any domain name that is prefaced by the trademark IMAX would give rise to a cause of action in passing off, unfair competition, trademark dilution, depreciation of goodwill, and/or misrepresentation, and would be misleading to the public who, in view of the Complainantís lengthy and extensive use, worldwide, of its IMAX family of trademarks, would assume that the Disputed Domain Names are operated by or affiliated with the Complainant. Any such use would be in bad faith.

(10) The Respondentís activities are not in accordance with ICANN UDRP in that the Respondent has no legitimate rights or interest in the Domain Names, it has registered such Disputed Domain Names in bad faith, and its use, to date, and in the future, unless stopped, is and would be in bad faith.

The Complainant seeks transfer of the disputed domain names to the Complainant.

B. Respondent

The Respondent raises issues concerning the jurisdiction and powers of the Panel, and the purpose of the Complainant in bringing the Complaint. The Respondent also challenges the Complainantís assertions and arguments concerning the three elements to be proven by the Complainant in this proceeding, namely whether (a) the domain names are identical or confusingly similar to the Complainantís mark, (b) the Respondent has no rights or legitimate interest in the domain names and (c) registration and use in bad faith of the domain names "imaximax.com", "imaxworld.com" and "imaxworld.net".

- Jurisdiction and Remedial Powers of the Panel

The Respondent raises issues concerning the jurisdiction and remedial powers of the Panel in the following way:

"The Respondent would like to have mentioned that the ICANN Administration Panel has been in operation since January 1, 2000. At the time of the domain names registration on 26, July 1999, the Respondent acted, by registering the domain names with the full permission of the laws applicable to domain name registration. There was no impediment to the Respondent acting thus and while a dispute has now been identified, the Complaint exists only as a result of this policy change of January 1, 2000." (Response paragraph 53)

"In reference to the sites mentioned (in 34) above), the Respondent would like to express concern at the use of the term "in bad faith". The Respondent respectfully submits to the ICANN Administrative Panel that the application of these words is a Ďcatchall phraseí lacking in adequate definition in consideration of the value attributed to high-level domain names. The Respondent would like to submit that the phrase is open to interpretation and is prejudiced against non-corporate entities and implies a character judgement and assumed intent upon the Respondentís registration of the domain names in any hearing of this nature that the ICANN Administration Panel is not assembled to dispense. The Respondent respectfully submits that this leaves the ICANN Administration Panel only with the role of ensuring a fair financial solution to the Complaint in the light of 1) above, as opposed to assessing the right to ownership and the intent of the Respondent in purchasing the domain names, as the Respondent has, albeit reluctantly, agreed in principle to relinquishing the domain names, by virtue of the Respondentís compliance with these proceedings." (Response paragraph 36).

"As the Complainant has already made a financial offer to the Respondent, the Administration process must be, in the view of the Complainant, to assess fairly the valuation of the domain names. The Administration Panel in this instance therefore exists only to adjudicate an adjustment to the Complainantís offer to a sum agreeable to all parties in order to reasonably and without prejudice effect the transfer of the domain names." (Response paragraph 3).

"In consideration of the Complainantís chosen course of action, the Respondent seeks from the ICANN Administrative Panel a settlement from the Complainant that reflects the true valuation of the domain names." (Response paragraph 6).

- Complaint for an Improper Purpose

The Respondent asserts that the Complaint is "in breach of the Clause XII Certification (21) (Rules, paragraph, 3(b)(xiv)) Ďthat this Complaint is not being presented for any improper purpose, such as to harassÖí by demanding that the Respondent seek legal representation to defend the Respondentís legal registration and ownership of the domain names and by misleading the Respondent into the belief that a negotiation was possible." (Response point 9). The Respondent also asserts other matters allegedly indicating that the Complaint is not being presented for any proper purpose and/or to harass the Respondent. These are, as stated in the Response, that:

1) As the Respondent has shown willing to consider an improved offer and has suggested as much to the Complainant through the Complainantís solicitors Bereskin Parr, the Respondent submits that the Complainant has indeed employed its corporate position to avoid a free market transfer of the domain names and has instead set out to harass the Respondent by employing the solicitors Bereskin Parr, to equally contend whose services is beyond the financial capability of the Respondent. The Complainant has thus voided its, the Complainantís, right to complain through the ICANN complaint procedure according to clause XII Certification (Rules, paragraph 3 (b) (xiv)). The Complainant has initiated an unequal contest that would have been avoided by direct communication from the Complainant indicating the Complainantís interest in the transfer of the domain names.

2) It is the Respondentís humble opinion that the Complainantís express desire to purchase precludes the need for complaint as such a compliant is no longer at the Respondentís ownership of the domain names, but at the valuation set thereupon.

3) In the Respondentís humble opinion, the Complainant has made an assumption as to the Respondents position. Following this assumption the Complainantís course of action suggests that the Complainant is hoping to employ the ICANN Administrative Panel to effect a Ďcompulsory purchaseí of the domain names, that is beyond the remit of corporate prerogative, and thus to avoid paying a realistic market price for the domain names.

4) In the Respondentís humble opinion, the Complainant is hoping to employ the ICANN Administrative Panel to effectively nullify the domain name valuations given below (See Response 14) by "www.shoutloud.com" and "www.greatdomains.com".

5) In demanding that the Respondent proceeds through the courts the Complainant has placed the respondent in an embarrassing position in which the respondent is expected to, in like manner to that of the Complainant, arm himself with legal representation. This circumstance is beyond the means of the Respondent. This the Respondent finds demeaning and aggressive in the light of the Respondentís willingness to compromise in the matter of a negotiated transfer of the domain names and the expressed willingness of the Respondent to act in denial of the valuations mentioned above.

6) Although the Complainant received reply to their communication and offer of $300 Canadian on or prior to December 1, 2000, suggesting that they seek an alternative valuation to the Complainantís offer of $300 Canadian per domain name and that this reply was given to the solicitors of Complainant, a further 16 weeks passed before the Complainant again responded by demanding compliance with the Complainantís unchanged offer of $300 Canadian within 5 days, making no mention of the Respondentís communication and counter offer. The Respondent would like to submit that the Complainantís offer was insulting and that the Complainantís behavior has been by turns demanding and implacable and amounts to bullying and is thus in contravention of the rules of the Complaints procedure.

7) This first Ďdeadlineí set by the Complainant for response before the September 15, 2000, stated in a letter of the August 30, 2000, is not wholly unreasonable, although the Respondent is more used to a 28-day period for business replies. However, the five day demand by facsimile and email, though without a written letter, for a further demand for compliance to the demands of the first letter that included the offer described in paragraph 1) of this document expressed and urgency on behalf of the Complainant that the Respondent felt and still feels was with the intent to hurry the Respondent unduly. The Respondent realizes that the Complainant was indeed subject to a five-day deadline in accordance with the ICANN Complaints submission procedure, however, this did not imply that the Respondent was also bound by it, as no notification had or has been given to the Respondent that the Respondent is bound by law to these deadlines. This in the humble opinion of the Respondent, constitutes harassment, in that the deadline allowed the Respondent inadequate time to seek suitable counsel bearing in mind that the Respondentís chosen domiciled area is not as well equipped with suitably skilled legal personnel as some other areas. The Respondent would like to point out that the Respondent does not retain a legal advisor.

8) By failing to reply to the Respondentís free market alternative of the exchange of 7,500 acres of land on the moon of market value $20 USD per acre, the Complainant has chosen to pursue a course with this Complaint that is, by its existence and in the light of the Respondentís above mentioned concessions, unnecessary and therefore aggressive and contrary to the spirit of section "XII Certification (20) of the Complaint Transmission" as the domain names were equally available to the Complainant as to any other interested party through the "www.eorobid.com" auction site, wherein the Respondent gave and gives no indication as to a preferred buyer.

9) The Complainantís attitude suggests that the Complainant would choose to have no mention of the Complainantís name on the Internet other than instances where the Complainant has itself made such mention. If the Complainant would suggest that use of the Complainantís names be forbidden by any other party does this imply that the Complainant will take legal action against every entity that uses the Complainantís Ďcoinedí name in a context that implies benefit to another party by its mention. If this were the case, would the Complainant care to name for the ICANN Administration Panel other parties against whom the Complainant is considering action. The Respondent believes that this would display a highly aggressive policy underlying the Complainantís action against the Respondent. The Respondent believes that the diversity of the Complainantís domain name registrations indicates that this policy is already in effect and that the Complainant will deliberately seek to restrict legitimate business practice by any means, where competition is likely.

10) The Respondent respectfully asks why the Complainant chooses only to target domain name holders in this matter and to make no Complaint in other cases?

11) It is the Respondentís opinion that the Complainant has chosen to predetermine the Respondentís ownership of the domain names as being with the intent to slander or defame. The Respondent respectfully inquires as to the legitimacy of such an implication.

It appears that the Complainant registered the domain name "www.imaximax.net" on September 26, 2000. The Complainant already has ten other domain names that include the Complainantís trademark name. The Respondent notes that one of these contains the name of another high profile Media Corporation Paramount Pictures, the domain registration being "www.paramountimax.com". Does this imply that:

i. the Complainant has acted in a manner requiring that Paramount Pictures lodge a Complaint similar to the Complaint against the Respondent by registering a Ďconfusingly similarí domain name to that of Paramount Pictures?

ii. the Complainant found a more suitable means of resolving this situation outside the ICANN Complaintís forum. If this is the case why therefore has the Complainant made no similar process available to the Respondent.

The Respondent would respectfully draw the attention of the Administrative Panel to this registration by the Complainant of the "www.imaximax.net" domain name. This name was registered after the Complainant first contacted the Respondent through Bereskin Parr. The Respondent initially (through the ISP City NetGates of Broad Street Bristol) included this domain name in the registration application of the domain names. The respondent made mention of this fact to the Complainant through Bereskin Parr, on receipt of the Complainantís offer of $300 Canadian and of the Respondentís belief that this domain name also was registered to the Respondent. However, due to an error by a member of the City NetGates staff the "www.imaximax.net" domain was not registered. However, the Complainantís registration indicates desperation on the part of the Complainant that implies that the Respondent would make malicious use of this domain name. This implies a passive aggressive stance by the Complainant that can only be described as damaging to the Respondentís good name and thus implies harassment.

In the light of the Complainantís exceedingly low cash offer and the Complainantís subsequent, and initially wrongly, completed submission to the World Intellectual Property Organization (W.I.P.O) requesting that the complaint procedure be initiated, the Respondent would like to question the Complainantís true motive in making the Complaint. (The Respondent was served with the Complaint notice (08/01/01), only to be informed that the Complaint had been withdrawn (17/01/01). The Respondent was later informed on that day (17/01/01) that the Complainant was responding to the Complaint Deficiency Notification.) The Respondent humbly submits that this pattern speaks for itself in regard to the Complainant and bespeaks a highly self-oriented and somewhat incompetent attitude, taking no account of the implications of this ineptitude to the Respondent.

The Respondent respectfully suggests that in the light of events since the lodging of the Complaint the Complainant has demonstrated an irresponsible attitude that is inappropriate to an organization of such magnitude and presumes influence beyond the Complainantís ability to do good. In view of the Complainantís behavior, the Respondent now sees that no true benefit could come from the Respondent pursuing the Respondentís original goal of facilitating access to information on the Complainantís facilities in the Respondentís home city and country.

12) The fact of the Complainant failing to correctly submit to the ICANN Administration Complaints Procedure a completed Complaint, requiring issue of a Complaint Deficiency Notice, indicates that the Complainant prefers to issue the threat of litigation than to pursue a fair solution to a Ďproblemí. The Complainant has assumed a Ďfirst strikeí mentality in the hope that the Respondent would be unable to make objection to the Complainantís behavior. The Respondent respectfully submits that the problem is in reality is only to be found only in the Complainant interpretation of the Respondentís ownership of assets.

- Domain Names Identical or Confusingly Similar to Complainantís Mark

The Respondent raises issues concerning the similarity of the domain names with the word Imax and the trademarks of the Complainant in the following manner:

The Respondent asserts that none of the UK registered trademarks of the Complainant "Öcite Ö Internet activity Ö..there is no specific mention of Internet activity among the activities mentioned by the Complainant as pertaining to its trademark." (Response paragraph 27)

"The Respondent would like to have noted the following points in regard to the suggestion that the domain names are confusingly similar.

The words Ďconfusingly similarí also imply that there exists a difference. Identical domain names would of course be cause for confusion. Domain names differ not only by word, but also numerically, thus no error in destination can be made when seeking a particular web site.

The words imaximax and imaxworld chosen by the Respondent contain per se four and three syllables respectively. The word and trademark iMac used by the well known Apple Corporation to define a range of computers has not only two, the same number of syllables as the Complainantís own Imax trademark name, but bears a distinctly greater phonetic and written similarity than the Respondentís four and three syllable words.

The words iMac and Imax can be accidentally interchanged with a single keystroke. This is not possible when typing the Respondentís domain names.

The Respondent would like to ask the Complainant if the Complainant, in the light of the Ďconfusing similarityí between the iMac and the Imax trademarks, is considering a similar suit against the Apple Corporation, or whether the Respondent is, in the view of the Complainant to be considered the greater threat according to the Ďconfusingly similarí clause of this Complaint.

If the Complainant is not pursuing litigation against the Apple Corporation, the Respondent would humbly ask that this Complaint in itself be seen as harassment of the Respondent by the Complainant by virtue of the Complainantís unwillingness to challenge and entity of equal resources before challenging the comparatively insignificant perceived threat of the Respondentís ownership of the domain names.

The Respondent respectfully requests that the ICANN Administrative Panel also to consider the following; the use of a computer, in most instances requires a level and degree of literacy that could be said to be average in the Western world. While ownership of a computer is not universal a substantial number regards their use as within their grasp. In the light of this, it would seem to the Respondent that a person of the required intelligence to use a computer seeking the Complainantís domain name would find it without hindrance." (Response paragraphs 43 to 48 and 50)

- Rights or Legitimate Interest in Domain Names and Bad Faith

The Respondent challenges the view of the Complainant that the Respondent has no rights or legitimate interest in the domain names, and that the domain names are being used and have been registered in bad faith. In this regard the Respondent submits that:

"The Respondent did not register "www.imax.net" nor "www.imax.org" as the Respondent felt that these suffixes did not offer adequate alternate definition to "www.imax.com" the Complainantís own Ďhomeí domain name. This, on reflection, indicates a consideration by the Respondent towards the Complainantís proprietary concerns that the Respondent believed adequate at the time of registration of the domain names." (Response paragraph 49)

"The Respondent would like to respectfully inform the Administration Panel that the service that the Respondent would have provided was and still is needed by the general public, regardless of the needs of the Complainant, and as such would have formed a viable trading business. The Respondent would like this to be taken into consideration in any assessment made by the Administrative Panel." (Response paragraph 56)

"The Respondent had every intention of creating a supportive network of portals through which the Complainantís theatres and film screenings would be broadly publicized and had intimated this intention to the Complainant by e-mail within months of the purchase of the domain names. (See ICANN Deposition: Additional Material attached) The Respondent has however found the financial burden excessive when considering the best result for such a web presence. This in turn has led the Respondent, in the absence of outside funding, to consider selling the domain names." (Response paragraph 38)

"By making the Complaint, the Complainant is suggesting that the Complainantís market position is, if challenged, inadequate as it stands. This Complaint contradicts the Complainantís expressed self-image as represented by the inclusion of the promotional material in the Complaint document. The Respondent humbly submits that if this is the case and the Complainant is therefore needful of supportive mention of the Complainantís trade name and that the Complaint cannot be valid. The Respondent humbly submits that while different, indication of the Complainantís name by any other party in the absence of malice reflects positively upon the Complainantís expressed self-image as a single corporate entity." (Response paragraph 32)

 

6. Discussion and Findings

Jurisdiction and Remedial Powers of the Panel

The Registrarís verification response to WIPO dated January 16, 2001, indicates that for the domain names in dispute "Network Solutionsí 4.0 Service Agreement is in effect." This Service Agreement 4.0 at points D and E provides:

"D. Dispute Policy Changes or Modifications. Registrant agrees that NSI, in its sole discretion, may change or modify the Dispute Policy, incorporated by reference herein, at any time. Registrant agrees that Registrant's maintaining the registration of a domain name after changes or modifications to the Dispute Policy become effective constitutes Registrant's continued acceptance of these changes or modifications. Registrant agrees that if Registrant considers any such changes or modifications to be unacceptable, Registrant may request that the domain name be deleted from the domain name database.

E. Disputes. Registrant agrees that, if the registration of its domain name is challenged by any third party, the Registrant will be subject to the provisions specified in the Dispute Policy."

Hence, changes to Network Solutionsí dispute policy become binding on the Respondent unless the Respondent cancels registration of the domain names and failure to do so is deemed to be acceptance of the changes in Network Solutionsí dispute policy. The Respondent has not cancelled its registration of the domain names "imaximax.com", "imaxworld.com" and "imaxworld.net" so it can only be concluded that the Respondent has agreed to the changes in Network Solutionsí dispute policy. Network Solutionsí current dispute policy incorporates the ICANN Uniform Domain Name Dispute Resolution Policy (the "ICANN Policy"). Hence the Respondent is, in accordance with ICANN Policy paragraph 4a, required to submit to this mandatory administrative proceeding. In any event the Respondent submits to the jurisdiction of the Panel highlighting in his Response at point 7 that "The Respondent will accept as binding any judgement reached by the ICANN Administration Panel."

The Complaint satisfies the requirements of the ICANN Policy, Rules and WIPO Supplementary Rules and the Panel has been properly constituted and appointed under the ICANN Policy, Rules and WIPO Supplementary Rules. The Panel therefore finds that it has jurisdiction to conduct this proceeding and to make a decision subject to the ICANN Policy, Rules and WIPO Supplementary Rules.

The remedial powers of the Panel is the subject of submissions made by the Respondent (see above). The Respondent submits "Öthat this leaves the ICANN Administration Panel only with the role of ensuring a fair financial solution to the ComplaintÖ" It is noted that Paragraph 4i of the ICANN Policy states "The remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of your domain name or the transfer of your domain name registration to the complainant." It is clear then that this Panel has no power to require either of the Parties to pay any amount or to order any monetary remedy or "financial solution" to either the Respondent or Complainant. The only decisions available to the Panel are dismissal of the Complaint and transfer or cancellation of one or more of the domain names in dispute.

The Respondent also asserts that "bad faith" within the meaning of the ICANN Policy "Öis open to interpretation and is prejudiced against non-corporate entities and implies a character judgement and assumed intent upon the Respondentís registration of the domain names in any hearing of this nature that the ICANN Administration Panel is not assembled to dispense." Before making any decision to cancel or tranfer a domain name the Panel has a duty to come to the conclusion that the relevant domain name has been registered and is being used in bad faith. Despite any difficulties in assessing the evidence of, and in interpreting the meaning of the words "bad faith", it is nevertheless the duty of the Panel (as it often is in any legal proceeding) to come to a conclusion on the issue of bad faith whenever a Panel is required to do so. Panels have done so in hundreds of cases previously and there is no good reason to suggest that the concept of "bad faith" is something upon which a Panel "is not assembled to dispense".

Complaint Made for an Improper Purpose and Harassment

The Respondent asserts that the Complainant made the Complaint for an improper purpose such as to harass, " by demanding that the Respondent seek legal representation to defend the Respondentís legal registration and ownership of the domain names and by misleading the Respondent into the belief that a negotiation was possible." The Respondent gives a number of examples that he asserts demonstrates the improper purpose of the Complainant in bringing the Complaint. These are:

1) Complainant is hoping to employ the ICANN Administrative Panel to effectively nullify the domain name valuations of some millions of dollars given by "www.shoutloud.com" and "www.greatdomains.com".

2) the Complainantís offer of $300 Canadian was insulting and the Complainantís behavior has been by turns demanding and implacable and amounts to bullying.

3) The "deadline" of 5 days allowed the Respondent by the Complainant to reply to the letter from the Complainant was inadequate time to seek suitable counsel bearing in mind that the Respondentís chosen domiciled area is not as well equipped with suitably skilled legal personnel as some other areas.

4) After referring to the name Imac and the Complainantís failure to take action against the users of that name, the Respondent respectfully asks why the Complainant chooses only to target domain name holders in this matter and to make no Complaint in other cases?

5) The Complainantís registration of imaximax.net indicates desperation on the part of the Complainant that implies that the Respondent would make malicious use of this domain name. This implies a passive aggressive stance by the Complainant that can only be described as damaging to the Respondentís good name and thus implies harassment.

6) In the light of the Complainantís exceedingly low cash offer and the Complainantís subsequent, and initially wrongly, completed submission to the WIPO requesting that the complaint procedure be initiated, the Respondent questions the Complainantís true motive in making the Complaint. The fact of the Complainant failing to correctly submit to the ICANN Administration Complaints Procedure a completed Complaint, requiring issue of a Complaint Deficiency Notice, indicates that the Complainant prefers to issue the threat of litigation than to pursue a fair solution to a Ďproblemí. The Complainant has assumed a Ďfirst strikeí mentality in the hope that the Respondent would be unable to make objection to the Complainantís behavior. The Respondent respectfully submits that the problem is in reality is only to be found only in the Complainant interpretation of the Respondentís ownership of assets.

There is nothing raised by the Respondent concerning the conduct of the Complainant, which indicates that this Complaint was initiated or pursued with an improper purpose such as harassment. The conduct of the Complainant as set out by the Respondent indicates that the Complainant was taking action, which was lawful and directed at the protection of its trademark. There is nothing to suggest that the Complaint was initiated other than to pursue the Complainantís legal rights such as to protect its business from the possibility of an unauthorized entity passing-off its name incorporated into the disputed domain names, as domain names which were associated with or otherwise approved by the Complainant when they were not.

Parties to ICANN administrative proceedings may have many reasons for engaging, or not engaging, legal counsel to represent them. The fact that one party to the dispute has not obtained the assistance of a lawyer experienced in domain name disputes is not something which by itself could be regarded as evidence of harassment by the Complainant or the use of these proceedings for an improper purpose. Indeed the Complainant is unlikely to have been aware of this before seeing the Respondentís response, so would normally not be considered a factor indicating that the Complaint is being used for an improper purpose.

The Complainantís letter to the Respondent of August 30, 2000, noted the date of September 15, 2000, by which the Respondent could contact the Complainant to express interest in accepting the offer of $300 Cdn per domain name. The only consequence if the Respondent did not contact the Complainant by that date was that the Complainant "shall assume that you are not interested in this proposal." Given that this was the only consequence, the so-called deadline, although a short one, mattered little and could not be considered as an indication that this proceeding was brought for an improper purpose.

The Complainant has not singled out the Respondent when taking action to protect its legal interests in its trademarks. The Complainant states, and the Respondent has not denied, that "Court proceedings and oppositions have been commenced in more than a dozen countries around the world". (Complaint point 24)

Having considered the matters raised by the Respondent and after noting the conduct of the Complainant, the Panel finds that the Complaint was not brought in bad faith or for an improper purpose such as to harass, and is not an abuse of this administrative proceeding.

ICANN Policy Paragraph 4(a) Ė the three elements required to be shown by the Complainant

As already mentioned, the ICANN Policy is incorporated into the registration agreement between the Respondent and the Registrar (Network Solutions Inc.) for the domain names the subject of this proceeding. Paragraph 4(a) of the ICANN Policy requires that the Respondent submit to this administrative proceeding in the event a third party such as the Complainant asserts that:

- the Respondent's domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

- the Respondent has no right or legitimate interests in respect of the domain names; and

- the domain names have been registered and are being used in bad faith.

The Policy provides that the Complainant must prove that each of these three elements are present.

- Domain Names Identical or Confusingly Similar to the Mark of the Complainant

The Complainant has shown that it is the owner of numerous registered trademarks and service marks (in various jurisdictions around the world) which include the word "IMAX" and in one case has been the registered owner since at least 1969. The Complainant has provided evidence of wide spread use of its registered marks both in the United Kingdom and around the world. In particular these marks, which are the word "Imax" or include the word "Imax", are registered in the United Kingdom the country of the Respondentís registration address. In the United Kingdom the Complainantís registered trademarks include "IMAX", "OMNIMAX", and "AT THE MAX". These marks are not identical to the disputed domain names "imaximax.com", "imaxworld.com" and "imaxworld.net". Other than the ".com" or ".net" additions required for technical reasons, the domain names include the word "world" or repeat the word "imax".

IMAX is a made up word and its wide use in the United Kingdom, the place of the Respondentís address, means that it is unlikely that the use of the word "Imax" in the domain names imaximax and imaxworld would lead the viewer to conclude anything other than that the source of the products or services associated with these domain names would be offered by or with the consent of the registered trademark holder of "IMAX", namely the Complainant. The repetition of the word "imax" and the addition of the merely descriptive word "world" in the disputed domain names does not affect this conclusion.

The fact that other domain names such as Imac have only one different letter and has one syllable with the same pronunciation also does not affect this conclusion.

Given the wide spread use in the United Kingdom of the Complainantís trademarks which include the word "IMAX" and the close similarity of these registered trademarks of the Complainant to that of the disputed domain names, the Panel finds that the domain names "imaximax.com", "imaxworld.com" and "imaxworld.net" are confusingly similar to the Complainantís trademarks, at least in the United Kingdom. Even if this confusion would only arise among persons in a limited geographical area such as in the United Kingdom, the domain name remains confusingly similar to the trademark of the Complainant within the meaning of Paragraph 4(a)(i) of the ICANN Policy.

- Rights to or Legitimate Interests in the Domain Name

The ICANN Policy requires that the Complainant show that the Respondent has no rights or legitimate interests in respect of the domain names "imaximax.com", "imaxworld.com" and "imaxworld.net". Paragraph 4(c) of the Uniform Policy sets out circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondentís rights or legitimate interests in the domain name for the purposes of paragraph 4(a)(ii). The provisions of this paragraph are as follows:

"c. How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint.

Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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; or

(ii) you (as an individual, business, or other organization) 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."

The Respondent has never been known by the domain names, an assertion of the Complainant, which the Respondent does not deny. The Respondent has not used the domain names or made any demonstrable preparations to use the domain names, as a web site or otherwise, in order to offer goods or services. The Respondent indicates that he has not had the finance to do what he wants to do with the domain names, as indicated in his correspondence with the Complainant.

The Respondent indicated his interest in the disputed domain names in two letters written before and shortly after intervention by lawyers for the Complainant. These are:

"The intention of setting up a network of sites to promote IMAX films (centered on Bristol) and to, with your cooperation, merchandise IMAX products worldwide on the web was really all I had in mind." (Respondentís letter of September 1, 2000).

"My idea for the sites was to contact every Imax theatre world wide and to have them register their schedules and provide through the domains an online booking service for travelers, business people and tourists. ÖÖ.This site was, with the co-operation of the Imax Corporation, to be linked to the "imax.com" home site where merchandising would be available." (Respondentís letter of September 2, 2000).

It is apparent from this correspondence with the Complainant that the Respondent wished to promote IMAX films and to register Imax film schedules on the websites corresponding to the domain names. It is noted however, that this intention was always linked to the intention to offer bookings to Imax cinemas and to merchandise Imax products. Under the laws of England and Wales (the jurisdiction of the Respondentís registration address), any use of the Complainantís trademarks to sell or market Imax products (such as theatre tickets and other merchandise) using the domain names without the consent of the Complainant, would be illegal. Further, the Respondentís letters and the Response show that it was always the Respondentís intention to use the disputed domain names for commercial gain using the Imax registered trademark name and not simply to provide information to potential viewers of Imax films or customers of Imax theatres or customers of the Complainant. It is clear that the Respondentís principal interest in the disputed domain names was, and continues to be, to obtain some commercial gain based on the goodwill of the Complainant in the made-up word Imax and the Complainantís trademarks which incorporate that word.

After taking into account all the above factors the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain names "imaximax.com", "imaxworld.com" and "imaxworld.net".

- Domain Name Registered and Used in Bad Faith

The third element of the ICANN Policy requires that the Complainant show that the domain names have "been registered and is being used in bad faith". The domain names "imaximax.com", "imaxworld.com" and "imaxworld.net" do not resolve to a web site. This situation is one that has continued since the creation of the record of the domain name.

The Respondent clearly states in his letters to the Complainant, and in the Response, that at the time of registering the domain names in dispute he did so with the intention to enter into some commercial cooperation with the Complainant and "with your cooperation, merchandise IMAX products". It is apparent that the disputed domain names were registered for commercial gain. It is clear that at the time of registering the disputed domain names the Respondent had the intention to use his registration of the domain names in order to, at the very least, entice the Complainant into entering into a business relationship with the Respondent. At the time of registration or at some time thereafter, the Respondent had the intention to coerce the Complainant into entering into a business relationship with the Complainant or to require the Complainant to pay over US$100,000 for the domain names. When Imax did not cooperate the Respondent resorted to thinly veiled threats to use or sell the domain names to provide bad publicity for Imax if the Complainant failed to pay for the domain names in an amount which vastly exceeded any out-of-pocket expenses directly related to the domain name. The Respondentís letters of September 1 and 2, 2000, and January 5, 2000, to the Complainant amply demonstrate this. The letter of September 1, 2000, states

"Maybe this does not say too much to you right now, but my proposal is this; If you would like to broaden your retail base by buying the domain names and using them, as I had hoped to for active e-commerce sites, each with a different design element, then I would be happy to consider an offer. If you are not interested in the idea, I will make the domains available on the open market. ....Ö."

The Respondentís letter of September 2, 2000, states, in part:

"Granted that you may fear trademark infringement, but my letter clearly explains my desire for co-operation with the Imax Corporation and I have no wish to undermine a phenomenon such as the Imax file format, or its makers. It was to this end that I wrote to Imax Corporation Ö.. informing the Corporation of my ownership of the Domain Names Ö. and requested that they consider an option to collaborate or purchase of the names. I made no indication of price and the email leant heavily towards a sister site arrangement whereby I would be permitted to sell Imax merchandising through the web sites I was hoping to design. Ö.I have had no reply to the email. Ö.Since that date and the realization that the Imax Corporation would be unlikely to co-operate in a venture with such a small entity as myselfÖ.I have made moves to sell the Domain Names."

The thinly veiled threat of the Respondent to provide bad publicity using the domain names is set out in his letter of January 5, 2001, in which it is stated:

"Anyway, even if I committed the cardinal sin of a slander site with the names, would that not draw publicity for the Imax Company. Okay. I have no intention of doing that, for the reasons I have said before, but it is an increasingly accepted rule that any publicity is good publicity in the quest for fame and notoriety. By contrast, in the computer press fair play begets good publicity and $300 dollars is not fair play. This really means that Imax is not concerned with their public image, or what I would do with the sites. ÖÖ..Though a web site can become a weapon, you already have my assurance that mine will not be used so. I can assure you also that many of the complexities of this affair are within my grasp."

It is noted that in the Respondentís letters to the Complainant and in the Response, the Respondent frequently refers to offers to sell the domain names to the Complainant at considerable commercial gain. The last such offer, included in the Response, was "a property for property exchange of cyber space (the domain names) in return for Moon Acerage of 7500acres at $20US per acre." - equivalent to US$150,000.

The Panel finds that the Respondent registered the domain names "imaximax.com", "imaxworld.com" and "imaxworld.net" with the purpose of requiring the Complainant to enter into commercial negotiations with the Respondent for a cooperation arrangement. At the same time or shortly thereafter, the Respondent had the intention to use, used, and continues to use the domain names, in order to coerce the Complainant to enter into a business relationship with the Respondent or to require the Complainant to pay for the domain names in an amount which vastly exceeds any out-of-pocket expenses directly related to the domain name. When Imax did not cooperate the Respondent resorted to thinly veiled threats to use or sell the domain names so that they would provide bad publicity for Imax if the Complainant failed to pay such an amount for the domain names.

In view of the foregoing the Panel finds that the Respondent has registered and is using the domain names "imaximax.com", "imaxworld.com" and "imaxworld.net" in bad faith.

 

7. Decision

The Panel finds that the Complainant has shown, as required by Paragraph 4(a) of ICANN Policy, that (i) the domain names "imaximax.com", "imaxworld.com" and "imaxworld.net" are confusingly similar to trademarks in which the Complainant has rights (ii) the Respondent has no rights or legitimate interests in respect of these domain names and (iii) the domain names have been registered and are being used in bad faith. As the distinguishing part of the domain names "imaximax.com", "imaxworld.com" and "imaxworld.net" is the Complainantís mark "Imax", registered in numerous countries around the world and comprised of a made-up word that is unlikely to be associated with any source other than the Complainant, the Panel decides that the domain name registrations for "imaximax.com", "imaxworld.com" and "imaxworld.net" be transferred to the Complainant.

 


Frank R. Schoneveld
Sole Panelist

Dated: March 1, 2001