WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Imax Corporation v. ForSale

Case No. D2001-1166

 

1. The Parties

The Complainant is Imax Corporation, a corporation organized under the laws of Canada with its principal place of business located in Mississauga, Ontario, Canada. It is represented by Judith A. Powell of Kilpatrick Stockton LLP, Atlanta, United States of America.

The Respondent is ForSale of 19, Bondarenko Square, Obninsk, Kaluga, Russia.

 

2. The Domain Name and Registrar

The domain name at issue is <imaxtheatre.com>.

The Registrar with which the domain name is registered is Dotster, Inc, 1338 Commerce Avenue, Suite 202, Longview, Washington, United States of America.

 

3. Procedural History

On September 24, 2001, a Complaint was received by the WIPO Arbitration and Mediation Center ("WIPO Center") for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution Policy ("the Policy"), adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 and approved on October 24, 1999.

On September 27, 2001, the Registrar responded to a Request for Verification of the domain name, confirming the details of the Respondent, that the current status of the domain name was "active" and that the language of the Registration Agreement is English.

On September 28, 2001, the WIPO Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent. The Respondent was advised that a Response to the Complaint was required within 20 calendar days i.e. by October 18, 2001.

On October 4, 2001, the Notification of Complainant and Commencement of Administrative Proceeding was returned to the WIPO Center from the Respondentís postal address.

No Response was received from the Respondent.

On October 22, 2001, a Notification of Respondent Default was sent to the Respondent.

On October 29, 2001, the WIPO Center informed both parties that an Administrative Panel had been appointed.

The Panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules, that the Complaint was properly notified to the Respondent in accordance with the Rules, and that the Administrative Panel was properly constituted.

 

4. Factual Background

The Complainant has asserted and provided evidence in support of the following facts. Unless stated otherwise, the Panel finds these facts established.

Since 1967, the Complainant and its predecessors have continuously used the mark IMAX in connection with a broad range of activities in the large-format cinema field including:

- Theater design, operation, and licensing
- 2-D and 3-D camera and projector invention, development, sale and leasing
- Film financing, development, production and distribution
- Theater sound system development and leasing

The Complainant claims that these products and services are advertised and promoted via a wide range of media, including television, radio, print, and the Internet.

The Complainant claims that it is the owner of numerous trademark registrations comprising or including the word IMAX in 51 countries around the world, including the Russian Federation (where the Respondent is located).

The Complainant asserts that the IMAX trademark was coined by the founders of the Imax Corporation and was first used in Canada in 1967. It claims that the IMAX trademark has been used extensively and continuously in many countries since that time. It asserts that the mark has become well-known throughout the world, including Russia.

The Complainant claims that it uses and promotes the IMAX trademark extensively on the Internet. It is the registered owner of the domain name <imax.com>. It states that during the year 2000, the <imax.com> site averaged 711,194 page views per month, and in the year 2001, has averaged 787,664 page views per month.

The Complainant states that it has produced or co-produced over 25 films since 1970, all of which show the IMAX trademark in both the beginning and concluding credits. It states that in addition, numerous films produced by others specifically for viewing exclusively in the IMAX System have received widespread recognition and popularity, and have been viewed by millions of people around the world.

The Complainant states that it is actively involved in every aspect of the large-format theater medium and works with film-makers, sponsors, museums, science centers, natural history facilities, theme parks, downtown developments and world fairs to provide and maintain the high quality of the IMAX System. Currently, there are approximately 220 IMAX theaters operating in 26 countries around the world.

The Complainant claims that the technical and engineering excellence of the IMAX System and products and the high quality of films produced by the Complainant have all been recognised through a number of awards and nominations.

The Complainant submits that by virtue of its longstanding use of the IMAX trademark, the IMAX trademark has acquired a high degree of public recognition, fame and distinctiveness throughout the world as a symbol of the source of the high quality goods and services offered by the Complainant.

On September 18, 2001, counsel for the Complainant wrote to the Respondent, stating that the Complainant had "just learned" of the Respondentís registration of the disputed domain name. That letter required the Respondent to:

(a) cease using <imaxtheatre.com> as a domain name or name or mark; and

(b) transfer the domain name <imaxtheatre.com> to the Complainant.

On September 20, 2001, the Respondent replied to that letter, stating:

"We would gladly transfer the name to you for a consideration assignment of $1400"

The website corresponding to the disputed domain name <imaxtheatre.com> is a pornographic site, and also functions as a portal to other pornographic sites. The site contains the statement:

"This Domain Name is for Sale".

 

5. Partiesí Contentions

A. The Complainant

The Complainant contends that the disputed domain name is confusingly similar to the Complainantís IMAX trademark because the salient component of the disputed domain name is the mark IMAX. Moreover, it submits that the IMAX trademark is used in conjunction with the word "theatre", thereby connoting the very business in which the Complainant is engaged.

The Complainant asserts that the Respondent has no rights or legitimate interest in the disputed domain name because the Complainantís first use and first registration of its IMAX trademark predates any use the Respondent may have made of the trademark IMAX as a trade name, domain name or trademark. The disputed domain name was first registered in August 2001, more than 30 years after the Complainantís first use of the IMAX trademark and long after the trademark had become famous.

The Complainant contends that the disputed domain name was registered and has been used in bad faith. It bases this conclusion on the following:

(a) The Respondent must have been aware, prior to its adoption and use of the disputed domain name that the Complainant was the owner of the IMAX trademark, because of the Complainantís widespread and long-standing promotion, marketing and distribution of products and services in connection with the IMAX trademark throughout the world.

(b) By registering and using the disputed domain name, the Respondent has intentionally attempted, for commercial gain, to attract Internet users to its website by creating a likelihood of confusion with the Complainantís famous IMAX trademark as to the source, sponsorship, affiliation or endorsement of the website.

(c) The Respondent has exacerbated this likelihood of confusion by combining the Complainantís trademark with the term "theatre", which describes the business in which the Complainant is engaged. A customer or potential customer of the Complainant could be mistaken into believing that by keying in <imaxtheatre.com> he or she would reach the Complainantís site. The Respondent is relying on consumer confusion to draw users to its site.

(d) The Respondent is tarnishing the Complainantís IMAX trademark because the site being operated under the disputed domain name is a pornographic site. The site also functions as a portal to other pornographic sites.

(e) The Respondentís deliberate use of a confusingly similar imitation of the Complainantís famous IMAX trademark is calculated to increase hits to the Respondentís pornographic site. The Respondent derives economic benefit either by attracting users to its site, where goods and services are offered, or by receipt of compensation from owners of other websites for delivering users to their sites. While consumers ultimately would realise that the Respondentís pornographic sites were not associated with the Complainant, the Respondent would have gained website traffic from the initial confusion.

(f) The Respondent is seeking to sell the domain name at issue by proclaiming on the siteís homepage "This Domain Name is For Sale", and by using "ForSale" as the Registrant name in the WHOIS database. This is confirmed by the fact that after the Complainantís counsel sent the Respondent a letter notifying it of the Complainantís rights, the Respondent responded that it would transfer the disputed domain name if the Complainant paid it $1,400. The Respondent was thus seeking to obtain consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name.

(g) The Respondent is seeking to evade service and to conceal its true identity from trademark owners by using the fictitious name "ForSale" as the Registrant name.

(h) The Respondent has never been commonly known by the disputed domain name.

(i) The Respondent is not making any legitimate non-commercial or fair use of the disputed domain name.

B. The Respondent

No Response was received from the Respondent.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to:

"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".

The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- That the Respondent has no rights or legitimate interests in respect of the domain name; and

- That the domain name has been registered and is being used by the Respondent in bad faith.

Domain name is confusingly similar to a trademark or service mark in which the Complainant has rights

The Complainant has provided evidence of registrations of its trademark IMAX in the United States and Russia and claims registrations for that mark in 49 other countries.

The Panel accepts that the mark is associated with the Complainant and the Complainantís products and services. The Panel also accepts the Complainantís contentions that the likelihood of confusion is increased by the fact that the disputed domain name contains both the Complainantís trademark IMAX and the word "theatre", being the industry in which the Complainant operates.

Accordingly, the Panel finds that the domain name <imaxtheatre.com> is confusingly similar to the trademark IMAX in which the Complainant has rights.

No legitimate rights or interest in respect of the domain name

The Policy outlines (paragraph 4(c)) circumstances which, if found by the Panel to be proved, shall demonstrate the Respondentsí rights or legitimate interest in the domain name. These circumstances are:

(i) before any notice to the Respondent of the dispute, the Respondentís use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services; or

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

(iii) the Respondent is making a legitimate non-commercial 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 Panel finds that none of the conditions outlined in (i) to (iii) above have been made out by the Respondent. The Respondent has not provided any evidence on which the Panel could base such a finding. Nor does any evidence from the Complainant give rise to a suggestion that such a finding should be made. The Panel finds it appropriate to draw an adverse inference from the Respondentís failure to respond to the Complaint (SSL International v. Mark Freeman, WIPO Case No. D2000-1080 and Alta Vista Company v. Grandtotal Finances Limited, WIPO Case No. D2000-0848.)

The Panel accepts the Complainantís contentions that:

(a) the Complainantís use of the mark predates the registration of the disputed domain name and has extended over thirty years and many countries including the Russian Federation;

(b) the Respondent does not have any association with the Complainant; and

(c) the Respondent does not carry on any business and was not commonly known by the name IMAX or any other words including the word IMAX before the domain name was registered.

Overall, the Panel can find no evidence to demonstrate that the Respondent has a legitimate right or interest in the disputed domain name. The domain name <imaxtheatre.com> does not have any logical or obvious connection with a pornographic site.

Domain name has been registered and is being used in bad faith

Paragraph 4(b) of the ICANN Policy states:

"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you 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 should be noted that the circumstances of bad faith are not limited to the above.

The Panel considers that the Respondentís actions demonstrate that it registered and used the disputed domain name in bad faith in terms of paragraph 4(b)(i) of the Policy. The evidence that the Respondent:

(a) registered the disputed domain name under the name "ForSale"; and

(b) offered (when challenged) to transfer the disputed domain name to the Complainant for $1,400;

demonstrate that the Respondent registered or acquired the domain name for the purpose of selling the domain name registration to the Complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name. Whether this was the primary purpose of the registration of the disputed domain name cannot be conclusively determined.

What is beyond question is that the Respondent has used the registration of the disputed domain name to attempt to attract Internet users to its website by creating a likelihood of confusion with the Complainantís mark. The Panel accepts the Complainantís contentions that the Respondent derives economic benefit either by attracting users to its site, where goods and services are offered, or by receipt of compensation from owners of other websites for delivering users to their sites.

The Panel also accepts that the Respondent is seeking to evade service and to conceal its true identity by using the fictitious name "ForSale" as the Registrant name.

The Panel therefore finds the domain name has been registered and is being used in bad faith.

 

7. Decision

For the forgoing reasons, the Panel decides that:

(a) the disputed domain name is confusingly similar to the trademark IMAX in which the Complainant has rights; and

(b) the Respondent has no right or legitimate interest in respect of the disputed domain name; and

(c) the disputed domain name has been registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <imaxtheatre.com> be transferred to the Complainant.

 


 

Andrew Brown
Sole Panelist

Dated: November 7, 2001