WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cine Colombia, S.A. v. Modern Limited Ė Cayman Web Development
Case No. D2003-0671
1. The Parties
Complainant: Cine Colombia, S.A. with domicile in the city of Bogotá, Republic of Colombia
Respondent: Modern Limited Ė Cayman Web Development with domicile in George Town, Grand Cayman, Cayman Islands.
2. The Domain Name and Registrar
Domain Name: <cinecolombia.com>
Registrar: Address Creation, with domicile in California, United States of America.
3. Procedural History
The Complaint was received by WIPO Arbitration and Mediation Center (the "Center") by email on August 27, 2003. The Center has verified that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("Policy"), the Rules and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the Rules, paragraph 2(a). The Registrar has confirmed that <cinecolombia.com> ("the Domain Name") was registered through the Registrar and that Respondent is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Name.
The Panel was properly constituted. The undersigned Panelist submitted Statements of Acceptance and Declarations of Impartiality and Independence.
The Respondent did not submit any response. Accordingly the Center notified the Respondent of the Response default.
No further submissions were received by the Center or the Panel, as a consequence of which the date scheduled for the issuance of the Panelís Decision is October 24, 2003.
4. Factual Background
Complainant is one of the major film distributors, producers and exhibitors in Colombia. It was founded in 1926 and since then it has been acting in the field of film distribution and exhibition.
The Panel has been given consistent evidence that the Complainant is widely known in Colombia, through developing various commercial activities such as the acquisition, distribution, exhibition and production of films; the acquisition, import and distribution of devices used in the cinematographic industry; and the exploitation of activities related to the amusement and entertainment world inter alia.
The activities of the Complainant have increased through the years, especially between 1992 and 2002.
Evidence has been submitted that proves that consumers associate the name of the Complainant with theaters of its ownership.
The Complainant has launched the service of ticket-distance-sale through the site <cinecolombia.com.co>.
The Complainant has registered a number of trademarks under the word "C Y C CINE COLOMBIA" in Classes 35, 38, 41 and 42. The word "Cine Colombia" appears clearly on the trademarks in question.
5. Partiesí Contentions
The Complainant contends that:
- The Domain Name is confusingly similar with the service mark "C Y C CINE COLOMBIA" over which the Complainant holds rights.
- The principal part of the nominative element of the mark are the words "CINE COLOMBIA".
- The Domain Name is identical to the Complainantís corporate name.
- The Domain Name creates confusion among the clients of the Complainant.
- There is likelihood of confusion between the Complainantís service mark and the Respondentís Domain Name, taking into account that the consumer public is induced into error as to the source, affiliation or endorsement of the Domain Name.
- The Complainantís activity is well-known, and it owns well-known trademarks.
- The Respondent has no right nor legitimate interest in respect of the Domain Name.
- The Complainant has not licensed the use of any of its registered trademarks.
- The Respondent has not been known by the name "Cine Colombia", nor it has any relation with the cinematographic world.
- The Respondentís activity is intended to obtain commercial gain by having banners on its website, and by creating the immediate redirecting of pages to another site once trying to exit the website, without the permission of the Internet user.
- The Respondent is offering goods and services through the disputed Domain Name website.
- The Respondent registered and is using the Domain Name in bad faith, since it has no industrial rights on the word "Cine Colombia", and was aware of the existence and commercial activity developed by the Complainant.
- The Respondent registered the Domain Name in order to prevent the Complainant from reflecting its trademark in the top-level domain ".com".
The Respondent is in default.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
(i) Identical or confusing similarity
The Complainant has fully produced evidence that demonstrate its rights in the trademark "CY C CINE COLOMBIA". The Domain Name comprises the name CINE COLOMBIA and the generic <.com> suffix.
In my opinion, the words "C Y C" are not relevant in order to decide the identity or confusing similarity between the trademarks of the Complainant and the Domain Name. The relevant part of the trademark of the Complainant is the words CINE COLOMBIA, which has been proven to be the part of the trademark most recognized amongst the consumers.
The fact that the trademark of the Complainant is well-known, the likelihood of confusion is higher.
Therefore, it can be stated that the Domain Name is preponderantly construed on the words CINE COLOMBIA, and this makes confusingly similar the Domain Name and the Complainantís trademarks (see WIPO Cases No. D2002-0847, D2002-0809, D2000-0022, D2002-0362 or D2002-0252, inter alia).
The Panel finds that the Domain Name is confusingly similar to the trademarks in which the Complainant has rights.
(ii) Rights or legitimate interest of the Respondent
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances, which, if found by the Panel to be proven, demonstrates existence of the Respondentís rights or legitimate interests in respect of the Domain Name. None of those circumstances find any application in this case.
The Respondent has not been licensed to use the trademarks of the Complainant. The Respondent has not been known by the words "CINE COLOMBIA", on the contrary, the Complainant has submitted evidence that it is widely known by the consumers.
The Panel has found that the Respondent offers in the disputed Domain Name website services regarding film sales and other services related to relationships, business services, insurance, etc., this has been considered as evidence of lack of rights or legitimate interest in the Domain Name by other UDRP Panels. This Panel does not regard this situation as evidence of use of the Domain Name "in connection with a bona fide offering of goods or services," as required by the Rules.
There is no way to consider, in the light of the evidences submitted by the Complainant, and the personal access of the Panel to the disputed site that the Respondent is making a legitimate non-commercial or fair use of the Domain Name.
The Panel considers that offering services like those previously mentioned is not fair use of the Domain Name, and is a common use of the Domain Name in cases of cybersquatting.
The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
(iii) Bad Faith Registration and Use
Rule 4(a) of the Policy requires that the Respondent registered and used the Domain Name in bad faith, and provides various circumstances as possible means of registration and use in bad faith. These are not exclusive circumstances, however, and the Panel is authorized to make its determination on any other basis of law or fact deemed appropriate.
As to the fulfillment of the bad faith requirement, it should be stressed first of all that Complainant is holder of several trademarks with the word "CINE COLOMBIA". These trademarks cover services related with film distribution and exhibition of films. The fact that Respondent is offering services related with personal relationships, business services, and insurance activities do not give the impression that the Respondent is using the Domain Name in a bona fide manner.
The fact of the well-known trademarks of the Complainant and the offer of videos in the site corresponding to the Domain Name demonstrates the existence of association between Respondent and Complainant, since both of them are offering the same class of products and services for which the trademarks of the Complainant have been registered.
Therefore, it must be assumed, as a iuris et de iure presumption, that the Respondent registered the Domain Name in order to prevent the Complainant from using it, being that Complainant is well-known in Colombia by the word "CINE COLOMBIA", which, needless to say, is registered as trademark. In the Panelís opinion, the fact of choosing a similar name for the Domain Name was something deliberate and sought in order to create confusion and risk of association.
Additionally, the Respondent is obtaining commercial gain from the use of the disputed site, since there are a number of banners (commercial publicity) which are direct publicity of services with economic purpose.
Due to the above-mentioned trademark registrations, the well-known name of the Complainantís trademarks and corporate name in the Colombian market, it cannot be accepted that Respondent was not aware of the name or trademark "CINE COLOMBIA", when registering the Domain Name at issue, or after when using it (see WIPO Cases Nos. D2000-0003, D2000-0110, D2002-0776, D2002-0735, inter alia).
As a result, the Panelist must come to the reasonable conclusion that the Respondent was aware of the fact that the registration of the Domain Name <cinecolombia.com>, to which the Respondent has not proven to have any rights or legitimate interest, was something deliberate that caused a damage to and collides with the rights and legitimate interests of Complainant (see WIPO Cases Nos. D2000-0018, D2000-0020, D2000-0239 and D2000-0277, inter alia).
Therefore, the Domain Name <cinecolombia.com> was registered and is being used in bad faith.
Complainant has proved that the Domain Name is confusingly similar to some of its trademarks, that Respondent has no rights or legitimate interest in the Domain Name at issue, and that Respondent did register and is using the Domain Name in bad faith. Therefore, according to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel requires the registration of the Domain Name <cinecolombia.com> to be transferred to Complainant.
Jose Carlos Erdozain
Dated: October 24, 2003