WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Paramount Pictures Corporation v. Pete Gilchrist
Case No. D2007-0128
1. The Parties
The Complainant is Paramount Pictures Corporation of Los Angeles, California, United States of America, represented by Keats McFarland & Wilson, LLP, United States of America.
The Respondent is Pete Gilchrist of Brooklyn, New York, United States of America.
2. The Domain Names and Registrars
The disputed domain names <howtoloseitall.com>, <ironmanfilm.com>, <lifeanddefmovie.com>, <mightyheartmovie.com>, <redsunblacksandmovie.com>, <sevendayitchmovie.com>, <sweeneytoddmovie.com>, and <thingswelostinthefire.com> are registered with Go Daddy Software. The disputed domain name <norbitmovie.com> is registered with RegisterFly.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2007. On February 6, 2007, the Center transmitted by email to Go Daddy Software and RegisterFly.com, Inc. a request for registrar verification in connection with the domain names at issue. On February 7, 2007, RegisterFly.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for <norbitmovie.com> and providing the contact details for the administrative and technical contact. On February 6, 2007, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for the remaining domain names, except <shooterthemovie.com>, and providing the contact details for the administrative and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 13, 2007. The Center verified that the Complaint together with the amendment to 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 21, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 13, 2007. The Response was filed with the Center on March 14, 2007.
The Center appointed William R. Towns as the sole panelist in this matter on March 26, 2007. The Panel finds that it was properly constituted. 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.
The Panel issued a Procedural Order on April 10, 2007, inviting the Complainant to submit supplemental evidence regarding whether the movie titles in which the Complainant asserts trademark rights had acquired secondary meaning. The Respondent was given the opportunity to submit a supplemental response, if desired. Both parties submitted supplemental statements. In view of the additional time extended to the parties to make supplemental submissions, the time for the Panel to forward its decision was extended under paragraph 15(b) of the Rules to May 8, 2007.
4. Factual Background
The Complainant is a prominent motion picture production and distribution company based in Hollywood, California, United States of America. The Complainant has acquired rights for the development, production and distribution of the following movies: “Letters From Iwo Jima” (originally entitled “Red Sun, Black Sand”), “Norbit”, “Sweeney Todd”, “How To Lose It All”, “Iron Man”, “Seven Day Itch”, “Things We Lost In The Fire”, “Life and Def”, and “A Mighty Heart”. “Letters From Iwo Jima” and “Norbit” have been released. The remaining motion pictures are in production with scheduled release dates later this year or in 2008.
The Respondent on various dates between March 20, 2005 and August 22, 2006 registered the disputed domain names <howtoloseitall.com>, <ironmanfilm.com>, <lifeanddefmovie.com>, <mightyheartmovie.com>, <redsunblacksandmovie.com>, <sevendayitchmovie.com>, <sweeneytoddmovie.com>, <thingswelostinthefire.com>, and <norbitmovie.com>. The Respondent does not dispute that the domain names in question correspond to the Complainant’s movie titles. It is also undisputed that the Respondent has registered a number of other domain names incorporating the titles of motion pictures. The Respondent operates what he describes as a non-commercial “universal” fan site for moviegoers (“movie website”), providing release dates for new movies.
5. Parties’ Contentions
The Complainant contends that the Respondent has engaged in a deliberate pattern of registering domain names appropriating movie titles in which the Complainant has established trademark rights, in a bad faith attempt to trade on the goodwill developed in the marks. The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant further asserts that the Respondent’s use of the disputed domain names to attract Internet users to the Respondent’s website and the Respondent’s attempts to sell the disputed domain names to the Complainant for $45,000 establishes the Respondent’s registration and use of the domain names in bad faith.
The Respondent contends that the Complainant does not have trademark rights in the movie titles in question. The Respondent argues that the Complainant has submitted no evidence that the movie titles have acquired secondary meaning, which is necessary to establish trademark rights in these titles. The Respondent alternatively argues that he registered the domain names prior to the Complainant establishing trademark rights in the movie titles. The Respondent asserts that he is making a legitimate, noncommercial fair use of the domain names in connection with has movie website. The Respondent denies approaching the Complainant in an effort to sell the domain names. According to the Respondent, the Complainant had previously approached him to purchase another domain name, <lastkissmovie.com>, and it was the Complainant who initiated contact regarding the possible purchase of the disputed domain names.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See also Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) 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
(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three non-exhaustive means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, a number of panels have concluded that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainant must demonstrate rights in the marks to which it asserts the disputed domain names are identical or confusingly similar. The term “trademark or service mark” as used in paragraph 4(a)(i) encompasses both registered marks and common law marks. See, e.g., The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc., WIPO Case No. D2002-0005; The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO Case No. D2001-0218.
The Complainant asserts trademark rights in movie titles that it claims the Respondent has appropriated. Courts in the United States of America uniformly have given trademark protection to literary titles of single works only upon a showing of secondary meaning, even where the title may not be merely descriptive of the contents of the work. 2 McCarthy on Trademarks and Unfair Competition § 10:2 (4th ed.) (hereinafter cited as “McCarthy”). A literary or artistic title has acquired secondary meaning if, in the minds of a significant number of people, the title is associated with a single source, even if the public does not know the source by name. See First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378, 1383 (9th Cir.1987). See also 1 McCarthy § 10:4, at 331-32.1
The Complainant relies primarily upon evidence of pre-release publicity and media coverage in support of its argument that the movie titles in question have acquired secondary meaning and thus are entitled to trademark treatment for purposes of the paragraph 4(a)(1) of the Policy. This evidence consists largely of publicity generated by Internet sites that provide information about upcoming movies, including casts, plots, behind-the-scenes developments, trailers, and release dates. In addition, the Complainant points out that several of the motion pictures are adaptations of prior works whose titles the Complainant contends have acquired secondary meaning. See Dreamworks L.L.C. v. Grantics, WIPO Case No. D2000-1269. These titles include “Sweeney Todd”, “Iron Man”, “A Mighty Heart”, and “Life and Def”. In addition, “How To Lose It All” is a sequel, and “Norbit”, released in early 2007, has generated sales in excess of $94 million.
It is established under United States trademark law that the knowing or intentional copying of another’s symbol may constitute evidence of secondary meaning. 2 McCarthy § 15:38. The Complainant has not submitted any information regarding expenditures relating to the pre-release promotion and marketing of the motion pictures in question, but the Panel finds sufficient evidence in the record of pre-release promotion, marketing and other media coverage, when considered with the other factors noted above, to indicate that the movie titles have acquired secondary meaning, with the exception of “Red Sun, Black Sand”. The movie with which that title was initially associated was released under the title “Letters From Iwo Jima”, which appears to be the designation by which the movie is generally recognized by the public. Accordingly, the Panel finds that the Complainant has on the provided evidence established trademark rights in the following movie titles: “Norbit”, “Sweeney Todd”, “How To Lose It All”, “Iron Man”, “Seven Day Itch”, “Things We Lost In The Fire”, “Life and Def”, and “A Mighty Heart” (hereinafter collectively referred to as “Complainant’s marks”).
The Respondent does not contest that the disputed domain names incorporate the Complainant’s movie titles. Although the Panel has now determined that the movie titles had acquired secondary meaning by the time of the filing of the Complainant, the Respondent also has argued that there can be no finding of confusion because he registered the disputed domain names prior to the time the movie titles acquired secondary meaning. The Respondent’s argument, however, is misplaced in relation to the first element of the Policy. It is not necessary under paragraph 4(a)(i) for a complainant to demonstrate that its rights in a mark arose prior to a respondent’s registration of a confusingly similar domain name. See, e.g., Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827; Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc), WIPO Case No. D2003-0320; AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527.2
The disputed domain names incorporate the Complainant’s marks in their entirety, and the Panel finds that the disputed domain names and the Complainant’s marks, when directly compared, are confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. Accordingly, the Panel finds that the Complainant has met its burden under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant has not authorized the Respondent to use the Complainant’s marks or to register domain names reflecting those marks. Nevertheless, the Respondent has registered multiple domain names that reflect the Complainant’s marks, and has used these domain names in order to attract Internet traffic to his website.
Given the foregoing, the Panel finds that the Complainant has made a prima facie showing under paragraph 4(a)(ii) of the Policy. The circumstances as set forth and documented in the Complaint and its Annexes are sufficient to require the Respondent to come forward with evidence under paragraph 4(c) of the Policy demonstrating rights to or legitimate interests in the disputed domain name. See Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s 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) the Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is 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’s claim of legitimacy appears to rest largely on the argument that he registered the disputed domain names prior to the Complainant’s establishment of trademark rights in any of the movie titles in question.3 As this argument also relates closely to the question of bad faith, it is convenient to note the following under the present heading. As a general rule, when a domain name is registered before any trademark rights are established, the registration of the domain name is not in bad faith since the registrant could not have contemplated the complainant’s non-existent right. See, e.g., General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, WIPO Case No. D2003-0845. Bad faith registration can be found, however, when at the time of the domain name registration the respondent was clearly aware of the complainant, or the respondent’s aim was to take advantage of the confusion between the domain name and any potential complainant rights. See ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669 <execujet.com> and Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc), WIPO Case No. D2003-0320 <kangwonland.com>.
The Panel finds from the totality of the circumstances in this case that the Respondent was clearly aware of the Complainant at the time of the domain name registrations, and that the Respondent’s aim in registering the disputed domain names was to take advantage of the Complainant’s existing or potential trademark rights. The record reflects the Respondent’s stockpiling of domain names based on motion picture titles, with their only apparent function being to attract Internet traffic to the Respondent’s website. The appropriation of movie titles that possessed secondary meaning or likely would acquire secondary meaning logically would attract the most Internet traffic.
The Respondent further alleges that he falls within the safe harbor provisions of paragraph 4(c)(iii), in that he is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain. The Panel, however, finds that the Respondent’s stockpiling of domain names incorporating movie titles in which the Complainant has trademark rights, and the Respondent’s use of these confusingly similar domain names primarily to attract Internet traffic, does not constitute a legitimate noncommercial or fair use of the domain names.
The Respondent’s stockpiling of domain names appropriating the Complainant’s movie titles in their entirety effectively prevented the Complainant from registering domain names reflecting its own marks. Even assuming that the Respondent’s movie website was intended solely for informational purposes, which for reasons discussed below the Panel does not find established by the record, Internet users seeking information about the Complainant or its movies would instead be brought to a general website with information about a variety of movies, most of which have no connection with the Complainant. This does not constitute a fair use of the domain names for purposes of paragraph 4(c)(iii) of the Policy. See Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560.
Moreover, to successfully invoke paragraph 4(c)(iii), the Respondent must demonstrate that the disputed domain names are being used without intent for commercial gain. See Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case No. D2000-1000. The Respondent has failed to do so. Although the Respondent posted a disclaimer on his website stating that “no profit is gained from [the movie] website”, the Panel has noted multiple links from the Respondent’s website to the Dark Horizons website, <darkhorizons.com>, a commercial website providing information, reviews, trailers and release dates for upcoming movies. The Respondent is conspicuously silent regarding these links to the Dark Horizons website, but the Panel notes that Dark Horizons is the registered United States trademark of Dark Futures Pty. Limited, to which the content of Respondent’s movie website is attributed. Beyond this copyright attribution, however, the Respondent also is silent regarding his affiliation with the Dark Horizon website and the owners of that site.
Further, although not disclosed by the Respondent, while attempting to visit the Respondent’s movie website online by using the disputed domain names, the Panel discovered that only two of the disputed domain names, <sweeneytoddmovie.com> and <redsunblacksandmovie.com>, currently direct Internet users to the Respondent’s movie website.4 Internet users entering the disputed domain names <ironmanfilm.com>, <sevendayitchmovie.com>, and <mightyheart.com> are directed to domain parking sites, on which links to other sites are organized and indexed. The Panel notes that typically these links operate on a “pay-for-click” basis, with the domain name registrant and the parking service sharing revenues generated from web traffic.
Accordingly, there are in the Panel’s opinion additional indications in the record that the Respondent registered the disputed domain names primarily with the intention of taking advantage of the Complainant’s existing or prospective trademark rights. In view of all of the foregoing, the Panel does not consider that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, and the Panel finds that the Complainant has met its burden under paragraph 4(a)(ii) of the Policy to demonstrate that the Respondent lacks rights or legitimate interests in the disputed domain names.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230. Nevertheless, paragraph 4(a)(iii) embodies a requirement that is “satisfied only if the Complainant proves that the registration was undertaken in bad faith and that the circumstances of the case are such that Respondent is continuing to act in bad faith”. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
For the reasons set forth above in connection with the Panel’s analysis under paragraph 4(a)(ii) of the Policy, the Panel finds that the Respondent registered the disputed domain names primarily with the intention of taking advantage of the Complainant’s trademark rights. As noted above, the Panel considers the Respondent’s claim to be using the domain names only for legitimate noncommercial purposes unpersuasive and likely pretextual, given the Respondent’s stockpiling of domain names, the unexplained links on the Respondent’s movie website to a commercial website from which the content of the Respondent’s website is derived, and the use of the disputed domain names to direct Internet users to what appear to be parked “pay-for-click” portal sites. In view of the foregoing, the Panel finds that the Complainant has met its burden under Paragraph 4(a)(iii) to demonstrate bad faith registration and use of the disputed domain names.
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 names, <howtoloseitall.com>, <ironmanfilm.com>, <lifeanddefmovie.com>, <mightyheartmovie.com>, <sevendayitchmovie.com>, <sweeneytoddmovie.com>, <thingswelostinthefire.com>, and <norbit.movie.com>, be transferred to the Complainant. The Complaint is denied as to the domain name <redsunblacksandmovie.com>.
William R. Towns
Dated: May 8, 2007
1 Evidence cited by United States Courts as relevant in determining secondary meaning includes evidence as to (1) the length and continuity of a mark’s use, (2) sales, advertising, and promotional activities, (3) expenditures relating to promotion and marketing, (4) unsolicited media coverage, and (5) sales or admission figures. See First Brands, 809 F.2d at 1383; 1 McCarthy § 10:4, at 335. The factors listed above are not meant to be exhaustive.
2 While paragraph 4(a)(i) embodies no requirement that the complainant’s trademark rights must have arisen before the disputed domain name was registered, this factor is nonetheless relevant for purposes of paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. See, e.g., Nãofumomais, Clínica de Homeopatia Antitabágica, Lda. v. Re-Surgir - Consultores em Desenvolvimento Individual e Organizacional, Lda., WIPO Case No. D2004-0399.
3 The Panel makes no determination whether the disputed domain names were in fact registered prior to the time when the corresponding movie titles became entitled to trademark protection as a result of acquiring secondary meaning. However, even assuming such to be the case, the Respondent’s claim of legitimacy fails under the circumstances of this case.
4 The disputed domain name <lifeanddefmovie.com> points to a web page consisting of the cover of the book Life and Deaf, written by Patricia Molloy. The disputed domain name <howtoloseitall.com> points to the website of a gambling addiction self-help organization, and <thingswelostinthefire.com> points to an unrelated article published on the Village Voice website. The disputed domain name <norbitmovie.com> does not appear to be in active use at this time.