WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Columbia Pictures Industries, Inc. v. DN Support
Case No. D2006-0127
1. The Parties
The Complainant is Columbia Pictures Industries, Inc., Culver City, California 90232, United States of America, represented by Bryan Cave, LLP, United States of America.
The Respondent is DN Support, Saint Louis, Missouri, United States of America.
2. The Domain Name and Registrar
The disputed domain name <screengems.com> (“Domain Name”) is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2006. On January 30, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. eNom transmitted by email to the Center its verification response confirming that the Respondent 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 February 3, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 23, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 24, 2006.
The Center appointed Mark Partridge, Sally M. Abel and Sandra Franklin as panelists in this matter on March 20, 2006. 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.
4. Factual Background
Complainant is a wholly owned subsidiary of Sony Pictures Entertainment, engaged in motion picture and television production and distribution. Complainant and its predecessors in interest and related entities have used the mark SCREEN GEMS in connection with motion pictures and television programs since the 1930s, and own five U.S. trademark registrations for the mark (Reg. Nos. 680,821; 840,659; 2,488,023; 2,482,803; and 2,688,594).
Respondent registered the Domain Name on November 1, 2000. Complainant discovered the registration and use of the Domain Name in October 2005. The Domain Name was used for a commercial website offering links to various businesses, including movie sites related to Complainant, as well as sites related to other movie companies, sites identified as “porn” and sites for unrelated businesses such as travel, insurance and real estate.
5. Parties’ Contentions
Complainant claims that the Domain Name is identical to the SCREEN GEMS mark owned by Complainant, that Respondent has no right or legitimate interest in the Domain Name, and that the Respondent has registered and used the Domain Name in bad faith for commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 14 of the Rules provides in the event of default that the Panel “may draw such inferences therefrom as it considers appropriate”.
Paragraph 15(a) of the Rules instructs the Panel that “[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 or principles of law that it deems applicable”.
Where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts. Time Equipment Corp. v. Stage Presence, WIPO Case No. D2003-0850; Express Scripts, Inc. v. Roy Duke, WIPO Case No. D2003-0829; Mondich v. Brown, WIPO Case No. D2000-0004.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Here, since Respondent has defaulted, it is therefore appropriate to accept the facts asserted by Complainant and to draw adverse inferences of fact against Respondent where the Panel deems appropriate.
A. Identical or Confusingly Similar
Complainant has demonstrated that it owns trademark rights in the SCREEN GEMS mark based on prior use and registration. The material portion of the Domain Name is identical to Complainant’s mark. The absence of a space between the words or the addition of “.com” is not material. Therefore, the Panel concludes that Complainant prevails on this element of its claim.
B. Rights or Legitimate Interests
Complainant argues that Respondent is not known by the name Screen Gems, is not authorized to use the mark, and otherwise has no legitimate rights or interest in the Domain Name. Complainant further contends that Respondent is not making bona fide use of the Domain Name, but instead is using it for the illegal and improper commercial purposes of trading on Complainant’s mark, misdirecting Complainant’s customers, and tarnishing Complainant’s mark through association with pornographic sites. Respondent does not deny these allegations.
The record submitted here shows that the Domain Name was used to direct Internet Users to a site with commercial links to various goods and services, including pornographic videos and other sites unrelated to Complainant, as well as to sites relating to Complainant’s movies. The Panel agrees with Complainant that use of a domain name based on another’s mark to misdirect Internet users does not create a legitimate right or interest in the Domain Name.
Given the Respondent’s default, and the reasonable inferences flowing from that default, the Panel concludes that Respondent’s use does not constitute a bona fide use of the Domain Name and that Respondent lacks any legitimate rights or interests in the Domain Name.
C. Registered and Used in Bad Faith
Complainant argues that the domain name was registered and used in bad faith deliberately to divert Internet users to competing websites for commercial gain based on confusion with Complainant’s mark, and to disrupt or harm Complainant’s business. Again, Respondent has not denied these allegations or provided any evidence to support a finding that it registered and used the Domain Name in good faith.
The mark SCREEN GEMS appears to have long and extensive use associated with Complainant, and is the subject of long-standing federal registrations relating to movies, and it is reasonable to infer that Respondent was aware of Complainant’s mark when it registered and started use of the Domain Name. Based on the record presented, it further appears that the Domain Name was registered and used to obtain commercial gain from Internet users searching for sites relating to Complainant’s mark. Therefore, in the absence of evidence to the contrary, the Panel concludes the Respondent’s registration and use of SCREEN GEMS in connection with a commercial site with links to third party movies and other services constitutes bad faith registration and use in violation of the Policy.
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 <screengems.com> be transferred to the Complainant.
Sally M. Abel
Dated: April 3, 2006