WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Panavision, Inc. and Panavision International, L. P. v. Ed Meyer, d/b/a/ Panavisions Eyewear and Sunglasses, Domains by Proxy, Inc., and M.P.W., Inc. d/b/a Panavisions Eyewear and Sunglasses, Inc.
Case No. D2004-0002
1. The Parties
The Complainants are Panavision, Inc., and Panavision International, L.P., Woodland Hills, California, United States of America (hereinafter, jointly and severally, "Complainant").
The Respondent is Ed Meyer, d/b/a Panavisions Eyewear and Sunglasses, and M.P.W., Inc., d/b/a Panavisions Eyewear and Sunglasses, Indian Lake, New York, United States of America; and Domains by Proxy, Inc., Scottsdale, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name, <panavisions.com>, is registered with GoDaddy Software, Inc., located in Scottsdale, Arizona, United States of America.
3. Procedural History
The Complaint was filed electronically with the WIPO Arbitration and Mediation Center (the "Center") on January 6, 2004. On January 8, 2004, the Center transmitted by email to Go Daddy Software, Inc. a request for registrar verification in connection with the domain name at issue. On January 8, 2004, Go Daddy Software, Inc. transmitted by email to the Center its verification response confirming that the Respondent Panavision Eyeware and Sunglasses is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 12, 2004. In accordance with the Rules, paragraph 5(a), the due date for the Response was February 1, 2004. The Response was filed with the Center on January 31, 2003.
The Center appointed M. Scott Donahey, Jeffrey M. Samuels and Lynda M. Braun as panelists in this matter on March 3, 2004. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On February 4, 2004, Complainant submitted a Supplemental Filing. On February 5, 2004, Respondent submitted a Reply to Complainantís Supplemental Filing. Both documents were forwarded to the Panel for its determination as to whether it will accept and consider the supplemental submissions.
4. Factual Background
Complainant was founded in 1953, to design and manufacture wide-screen film photographic and projection lenses. Since that time, Complainant has been a leader in the cinematographic industry, and now designs, manufactures and supplies optical lenses, photographic equipment, and other film and digital imaging equipment in the United States and around the world, through its affiliates in Australia, Brazil, Canada, China, Denmark, France, Germany, Hong Kong, Italy, Japan, Malaysia, Mexico, New Zealand, the Philippines, South Africa, Spain, Sweden, Thailand, and the United Kingdom.
Complainantís equipment is used by filmmakers around the world, and many successful and highly acclaimed films have been photographed using Complainantís camera systems
Since 1954, Complainant. has used PANAVISION and related trademarks in connection with its optical lenses, photographic equipment, and other film and digital imaging equipment. In a prior dispute concerning a domain name, a federal district court held that "the Panavision marks are famous marks," and that "the ĎPanavisioní mark in particular has developed strong secondary meaning because of Panavision' s long period of exclusive use of the mark and its status as a major supplier of photographic equipment." Panavision International, L.P. v. Toeppen, 945 F. Supp. 1296, 1302-03 (C.D. Cal. 1996), affd, 141 F.3d 1316 (9th Cir. 1998).
Complainant has obtained numerous trademark registrations for the PANAVISION mark in the United States, all of which predate the registration of the domain name at issue. Complaint, Annex 8.
Complainant has also obtained registration for the PANAVISION trademark in a multitude of international classes in the following countries around the world: Algeria, Argentina, Australia, Austria, Bahamas, Bangladesh, Benelux, Bermuda, Bolivia, Botswana, Bosnia-Herzegovina, Brazil, Canada, Chile, China, Colombia, Cyprus, Czech Republic, Democratic Rep. of Congo, Denmark, Dominica, Dominican Republic, Ecuador, Egypt, El Salvador, European Union, Fiji Islands, Finland, France, Germany, Gibraltar, Greece, Guatemala, Haiti, Honduras, Hong Kong, Hungary, Iceland, India, Indonesia, Iran, Ireland, Israel, Italy, Jamaica, Japan, Jordan, Kenya, Kuwait, Liechtenstein, Macedonia, Malaya, Malta, Mexico, Monaco, Morocco, Myanmar, Namibia, New Zealand, Nicaragua, Nigeria, Norway, Pakistan, Panama, Papua New Guinea, Paraguay, Peru, Philippines, Portugal, Puerto Rico, Romania, Sarawak, Singapore, Slovak Republic, Slovenia, South Africa, South Korea, Spain, Sri Lanka, Sweden, Switzerland, Taiwan, Tangier, Thailand, Trinidad and Tobago, Tunisia, Turkey, United Kingdom, Uruguay, Venezuela, Virgin Islands, Yugoslavia, and Zimbabwe. Complaint, Annex 9.
Complainant has also filed numerous additional applications to register PANAVISION and related marks with the Unites States Patent & Trademark Office, including Application Serial Number 78/261,744, filed on June 12, 2003, to register
PANAVISION in International Class 11 (f-or "lamps, lighting, lighting fittings, lighting apparatus, lighting installations for use in photography, cinematography, stage and theatrical performances and architectural lighting; parts of the aforementioned goods"); and Application Serial No. 78/134,743, filed June 11, 2002 (with a first use date of July 1, 2000) and published August 26, 2003, to register PANAVISION SMARTLENS in International Class 9 (for "an electronic display for photographic and cinematographic cameras comprised of a sensor to be affixed to a camera lens and display screen or providing real-time visual and electronic information about the mechanical and optical state of camera lens settings, namely, the focal length, focus distance and depth of field."). Complaint, Annex 10.
Complainant has also registered the domain name <panavision.com> and uses it to resolve to a web site providing information about PANAVISION goods and services. Complaint, Annex 11.
Respondent registered the domain name at issue on October 5, 2002. Complaint, Annex 2. On or about November 12, 2002, Complainants became aware that Second Respondent had registered the Disputed Domain Name and was using it in connection with a web site advertising "Digital Cinematography and Digital Editing."
In or about November 2002, Complainants sent Respondent a letter demanding that it immediately cease all uses of "panavisions" and transfer the Disputed Domain Name to Complainant. By email dated December 12, 2002, Respondent asserted trademark rights in PANAVISIONS and PANAVISIONS.COM and refused to transfer the domain name at issue. Complaint, Annex 15.
Following the exchange of correspondence referenced above, Respondent removed the "Digital Cinematography and Digital Editing" web page and began to redirect visitors to the Disputed Domain Name to a web page under the <edmeyer.com> domain name. The web site advertised the building of theme park rides. Complaint, Annex 16. On or about January 29, 2003, Complainantís counsel sent Respondent a second letter disputing Respondentís claim of rights in the PANAVISIONS trademark. Complaint, Annex 17. By email dated February 14, 2003, Respondent again asserted trademark rights to PANAVISIONS. Complaint, Annex 18.
On or about October 15, 2003, Complainantís counsel sent Respondent a third letter repeating the demands made in the previous two letters. Complaint, Annex 19. As of the date of this third letter, Respondent had transferred the domain name at issue to "Panavisions Eyewear and Sunglasses" and had again changed the web site, so that it now contained the following text: "Future Home of PanavisionsTM Eyewear and Sunglasses. PanavisionsTM and Panavisions.comTM are trademarks. All Rights Reserved." Complaint, Annex 20. By email dated October 24, 2003, Respondent again asserted trademark rights in PANAVISIONS and PANAVISIONS.COM and asserted the right to use them in conjunction with eyewear and sunglasses. Complaint, Annex 2.
5. Partiesí Contentions
Complainant contends that the domain name at issue is identical or confusingly similar to Complainantís PANAVISION mark, that Respondent has no rights or legitimate interest in respect of the domain name, and that Respondent has registered and is using the domain name in bad faith.
Respondent contends that the domain name is neither identical to nor confusingly similar to Complainantís mark, that the domain name reflects Respondentís trademark PANAVISIONS and will be used in Respondentís eyewear and sunglasses business, and that the domain name was registered and is being used in good faith.
6. Discussion and Findings
At the outset, the Panel notes that Complainant and Respondent submitted additional, arguments without a prior request to the Panel to permit such submissions. Because there is no provision in the Policy or the Rules for such filings, because no request was made by the panel for additional documents, and because the additional filings do not assist the Panel in reaching a decision, the Panel disregards the Supplemental Filing submitted by the Complainant and the Reply to Supplemental Filing submitted by the Respondent. J.P. Morgan v. Resource Marketing, WIPO Case No. D2000-0035.
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) 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
(2) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The addition or subtraction, of a single character, such as a letter or number, to a mark for use in a domain name has not precluded Panels from finding the domain name to be identical or confusingly similar to a mark, especially where the conversion is from singular to plural. Play Network, Inc. v. Play Industries. NAF Case No. FA94232 (<playnetworks.com>); InfoSpace.com, Inc. v. Registrar Administrator Lew Blanck, WIPO Case No. D2000-0069 (<wwwinfospaces.com>, finding a deliberate attempt to take advantage of typographical errors by users, i.e., "typosquatting").
Accordingly, the Panel finds that <panavisions.com> is confusingly similar to the registered and famous PANAVISION mark in which Complainant has rights.
B. Rights or Legitimate Interests
Respondent contends that it has trademark rights in PANAVISIONS and PANAVISIONS.COM. However, Respondent produces no evidence of such rights, whether in the form of registration rights or proof that the terms have acquired secondary meaning sufficient to designate Respondent as the source of particular goods and services. Absent such evidence, the Panel must disregard Respondentís bald assertion.
Respondent also contends that the name is being used in conjunction with Respondentís eyewear and sunglasses business. Once again, Respondent fails to produce any evidence of the existence or planning for such business. Moreover, at the time Respondent was first notified of the dispute, it did not purport to be engaged in such business. It was only long after Complainantís initial cease and desist letter that the domain name was used to resolve to a web site at which a future Internet business in connection with eyewear and sunglasses was to be located. This late conversion cannot satisfy the requirements of 4(c)(i) to demonstrate rights and legitimate interests. Respondent has also failed to show that Respondent has commonly been known by the domain name. Respondentís initial use of the domain name at issue to resolve to a web site where services confusingly similar to those offered by Complainant under its famous mark cannot constitute a legitimate noncommercial or fair use.
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name at issue.
C. Registered and Used in Bad Faith
Before being notified by Complainant of the dispute as to the domain name <panavisions.com>, Respondent was using the domain name at issue to resolve to a web site at which Respondent was offering for sale services to the television and motion picture industry which are confusingly similar to the products and services marketed by Complainant under its well known PANAVISION mark. Complaint, Annex 14. The Panel finds that Respondent has intentionally attempted to attract for commercial gain, Internet users to Respondentís web site by creating a likelihood of confusion as to the sponsorship of the products and services offered on the web site. Policy, paragraph 4(b)(iv). This constitutes bad faith registration and use under the Policy.
The Panel is aware that subsequent to being contacted by Complainant and prior to the filing of the Complaint Respondent changed the use of the domain name at issue, so that it presently resolves to a web site that indicates it will be the future home of a business involving eyewear and sunglasses. Complaint, Annex 20. The Policy section on bad faith speaks of "is being used" in bad faith. Despite the use of the present tense, it has long been held that any bad faith use subsequent to registration is sufficient to satisfy the "bad faith use" test:
The Panel is cognizant of the fact that paragraph 4(a)(iii) uses the present tense when referring to use. The Panel believes that the term "is being used" does not refer to a particular point in time (such as when the Complaint is filed or when the Panel begins deliberations), but refers to the period of time following registration of the domain name at issue. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, paragraph 7.6, at 9. If at any time following the registration the name is used in bad faith, the fact of bad faith use is established. Thus, the fact that upon remonstrance by Complainantís counsel, Respondent ceased using the domain names at issue as links to pornographic sites, cannot alter the fact that the bad faith act had occurred during the period following registration. Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <panavisions.com> be transferred to the Complainant.
M. Scott Donahey
Jeffrey M. Samuels
Lynda M. Braun
Dated: March 17, 2004