Complainant is Blockbuster Inc. of Dallas, Texas, United States of America, represented by Eric Macramalla, of Ottawa, Ontario, Canada.
Respondent is WWWServer Ltd. (a/k/a OOOWWWServer) of St. Petersburg, Russian Federation, represented by its General Director, Alexander Serov of St. Petersburg, Russian Federation.
The disputed domain name <blockbusterathome.com> (the “Domain Name”) is registered with NICCO Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2008, naming DomainProtect LLC-Whois Privacy Services as Respondent. On July 23, 2008, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On August 6, 2008, the Registrar transmitted by e-mail to the Center its verification response, informing the Center that the name of the actual registrant of the Domain Name was WWWServer Ltd and providing the contact details. Following notification from the Center of the correct identity of the registrant and invitation to file an amendment of the Complaint, Complainant filed an Amended Complaint on August 22, 2008. On the same date, in response to the Center's notification that the Registration Agreement was in Russian and request that Complainant elect between providing evidence of an agreement with Respondent to use English as the language of the proceedings, or submitting a Russian translation of the Complaint, or making a request that the proceedings be conducted in English, Complainant chose the third option and submitted an appropriate request. On August 25, 2008, the Center received an e-mail in English and in Russian, which referenced the present case and the disputed
Domain Name but was signed by an entity identifying itself as “Eurocontrol Ltd” (and “ООО Евроконтроль“ in Russian), and which stated an objection to Complainant's request to have this proceeding conducted in English instead of Russian.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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), on September 1, 2008, the Center formally notified Respondent of the Complaint and, at the same time, informed the parties of its decision to accept the Complaint as filed in English, the Response in Russian, and to appoint a Panel familiar with both languages, if available. On September 19, 2008, Respondent submitted its Response in Russian, together with supporting attachments, some in English and some in Russian.
The Center appointed Natasha Lisman, who is familiar with both Russian and English, as the sole panelist in this matter and so notified the parties on September 30, 2008. The Panel has submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On October 28, 2008, the Panel issued Procedural Order No. 1, in which, exercising its authority under paragraphs 10, 11, and 12 of the Rules to consider and resolve the matter of the language of the proceedings, it indicated that it anticipated that the language of the proceedings in this case would be English but that Respondent would not be required to submit translations of its Response and supporting documents. In addition, noting that the electronic message to the Center setting forth an objection to Complainant's request concerning the language of the proceedings was signed by “Eurocontrol Ltd” and invoking its authority under paragraph 12 of the Rules, the Panel requested (without prejudice to the Panel's ultimate decision in this case) that Respondent submit on or before November 7, 2008, an explanation of the relationship (if any) between WWWServer, Ltd. and Eurocontrol Ltd. and provide documents supporting the explanation, and invited Complainant to submit any information or documents it might have concerning the relationship between those entities (if any) within the same time. Neither party has made any submission in response to Procedural Order No. 1.
On November 4, 2008, Complainant submitted a request for an opportunity to make a brief supplemental filing for the purpose of presenting new information it had allegedly acquired about Respondent and commenting on Respondent's alleged actions with respect to its website. In its Procedural order No. 2, issued on November 5, 2008, the Panel granted Complainant's request, set November 10, 2008 as the deadline for the supplemental filing, and, in the interests of fairness, also granted Respondent leave to submit a brief reply to Complainant's supplemental submission no later than November 12, 2008. Notwithstanding the grant of its request, Complainant made no supplemental submission and has confirmed that it decided not to do so. On November 21, 2008, Respondent sent an e-mail to the Center strongly criticizing both the allegations made in Complainant's request for leave to make a supplemental submission and its failure to make the submission and provide proof of its allegations.
In accordance with paragraph 11(a) of the Rules, the language of the registration agreement here, Russian is presumptively the language of the proceedings, but the Panel has the authority to determine otherwise. As the Panel noted in its Procedural Order No. 1, Respondent has not only submitted communications to the Center in connection with this case that reflect good command of English, but in another recent case, Dogan Gazetecilik A.S. v. OOO WWWServer, WIPO Case No. D2008-0500, in which Respondent was also represented by Mr. Alexander Serov, it did not object to Complainant's request that English be the language of the administrative proceedings, communicated with the Center in English, and filed its submissions in English. For these reasons, given that the Panel is familiar with both languages, it re-affirms that allowing the parties to make their submissions and communications in their respective languages without translations but rendering the decision in English strikes a fair and appropriate balance between the parties' interests.
Complainant, a US-based company in existence since 1985, is a global provider of in-home movie, television and game entertainment. Complainant is the owner of numerous trademark registrations and applications in the United States and other countries that contain or are comprised of the element BLOCKBUSTER, including two BLOCKBUSTER and BLOCKBUSTER & Design in the Russian Federation.
Respondent is a Russian limited liability company. It registered the disputed Domain Name on January 8, 2007.
Complainant submits that it is a leading global provider of in-home movie, television and game entertainment for purchase or rental by consumers through a world-wide network of stores and a website located at “www.blockbuster.com”. It has approximately 1,200 trademark registrations and applications worldwide consisting of, or incorporating, the element BLOCKBUSTER, including two LOCKBUSTER and BLOCKBUSTER & design in the Russian Federation. According to Complainant, thanks to extensive use and publicity spanning over 20 years, the BLOCKBUSTER trademark has become famous and enjoys widespread recognition.
Complainant contends that Respondent registered the disputed Domain Name on January 8, 2008 without Complainant's permission, concealed its identity by availing itself of the Registrar's privacy service, and pointed the Domain Name to a pay-per-click website hosted by DomainSponsor.com, which operates a so-called “monetization of parked domain names” revenue program allowing domain name holders that park their domain names at DomainSponsor.com to earn a referral fee. When visited by Complainant, the website at “www.blockbusterathome.com” displayed links to, and provided means of conducting searches to access links of, Complainant's competitors, as well as triggered various pop-up advertisements and provided links to websites displaying adult content. In addition, Complainant found the disputed Domain Name listed for sale at the domain name auction website, Sedo.com. Complainant further alleges that at the end of February 2008, it directed a cease-and-desist letter to Respondent by email and courier. While the courier mail was returned, the email was not returned as undeliverable. Complainant received no response, but following the issuance of the letter, the “www.blockbusterathome.com” website became inactive.
In Complainant's view, the disputed Domain name is identical or confusingly similar to its trademarks and that the circumstances of Respondent's registration and use of the Domain Name demonstrate lack of legitimate interest and good faith on Respondent's part. More specifically, Complainant alleges that Respondent registered and used the Domain name for the purposes of creating a likelihood of confusion with Complainant as to source of sponsorship in order to attract Internet users to Respondent's website for commercial gain, disrupting Complainant's business, and selling the Domain Name for a price exceeding Respondent's registration fees.
For all these reasons, Complainant requests that the Domain Name be transferred to it.
As an initial matter, Respondent mounts a lengthy attack on the credibility of Complainant's claims as to its leading position in the online film rental business, accuses it of employing dishonest methods of competition, and asserts that in recent years Complainant has suffered acute declines of market capitalization and has substantially reduced the geographic scope of its business activity. With respect to the Russian Federation, Respondent contends that Complainant has never had any stores, affiliates, or representatives, and that a survey commissioned by Respondent showed that the vast majority associated the word “blockbuster” with a film having great commercial success and only a tiny minority with the firm name and trademarks of Complainant.
Respondent goes on to assert that the domain name <blockbusterathome.com> is neither identical nor confusingly similar to Complainant's trademarks, for two reasons. First, the element “blockbuster” is a commonly known and commonly used word not deserving of trademark status and Complainant's endeavor to bar others from using it is a manifestation of its desire to discriminate, establish an unlawful monopoly, and unlawfully limit competition. By contrast, the element “athome” has a distinctive meaning because it is rooted in the universally recognized freedom of choice as to residence and, by means of a simple technique of neurolinguisitic programming, is rendered indistinguishable from the construct “@home” and thus evokes an association with a first level domain.
With respect to its interest in the disputed Domain Name, Respondent alleges that starting before its receipt of notification of Complainant's Complaint, it has been, and continues to be, actively engaged in the development of a business project under the working title “Блокбастер у Вас дома” (“Blockbuster In Your Home”), which is to be connected with the use of the Domain Name. Respondent is planning to use the Domain Name to create an Internet portal for the following purposes: providing informational and advertising services to third parties for the promotion of rental and sale of video and film production and computer games; advancing and dissemination to the public of information and critical materials on the best exemplars of the cinematic and dramatic arts; and eventual publication of a print version of “Blockbuster In Your Home”, based on the Internet version, for distribution by subscription. According to Respondent, this business plan does not contemplate competition against Complainant because services for advertising the production of products and services for distribution and sale of the corresponding products are distinct in their legal nature and content.
Respondent denies that its placement of the Domain Name on an auction website evidences bad faith because Complainant has offered no proof of Respondent's attempt to sell the name for an amount higher than its documented out-of-pocket expenses and, furthermore, Respondent had no actual intent to sell the name but, rather, only desired to establish its fair market value so as to use it as collateral for a secured loan from a Russian savings bank.
Finally, Respondent denies having ever received Complainant's cease-and-desist letter.
Based on these grounds, Respondent urges the Panel not only to deny Complainant's request for the transfer of the Domain name, but also to declare Complainant culpable of reverse domain name hijacking.
Pursuant to Policy, paragraph 4(a), Complainant must prove each of the following to justify the transfer of the Domain Name:
(i) That the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That Respondent has registered and is using the Domain Name in bad faith.
Before applying this test to the evidence in this case, the Panel wishes to comment on certain of the parties' allegations and contentions it has decided disregard. The first set are Complainant's allegations about Respondent presented as grounds for Complainant's request for leave to make a supplemental submission. Because Complainant, without explanation, chose not to avail itself of the leave the Panel granted, it left those allegations unsupported, turning its request for leave, effectively, into a “hit and run” attack. Mindful of the unfair and prejudicial nature of this conduct, the Panel has completely disregarded the allegations contained in Complainant's request for opportunity to make a supplemental submission.
At the same time, the Panel has also disregarded the allegations in Respondent's Response concerning Complainant's financial performance, relative status in the marketplace, and methods of competition. For all the length and stridency of Respondent's presentation of these allegations, and assuming (without so deciding) that they are true, the Panel finds them entirely irrelevant to its task under paragraph 4(a) of the Policy. Whether a party is entitled to relief in accordance with paragraph 4(a) of the Policy surely does not depend on its financial condition or performance and conduct in the market.
Complainant has provided evidence of its rights in trademarks consisting of the word BLOCKBUSTER or including it in combination with other words or designs.1 However, none of those other words include “athome”; therefore, the disputed Domain Name cannot be said to be identical to Complainant's marks. Hence, the only question with respect to the first element of Complainant's case is whether the Domain Name is confusingly similar to Complainant's marks. As both parties acknowledge, the answer to this question turns on whether “athome” is a distinctive term. The Panel is not persuaded by Respondent's rather fanciful linguistic and neurolinguistic analysis, nor does it attach much weight to the results of the survey commissioned by Respondent of a sample of residents of St. Petersburg concerning their associations with the word “blockbuster”. While actual customer confusion in a particular local market may be an element of a trademark infringement claim under some national laws, it is not an element of a claim under Policy. The distinctiveness of a term is a matter of common sense, and the Panel finds that “athome” is not distinctive.
According, the Panel finds that the Complainant has successfully established the first element of the Policy.
The application of this element of paragraph 4(a) of the Policy requires a burden-shifting analysis. First, complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. If it meets this burden, the burden then shifts to respondent to demonstrate affirmatively that it does have rights or legitimate interests in the domain name. If respondent fails to meet this burden, complainant is deemed to have satisfied paragraph 4(a)(ii). See, e.g., Belupo d.d. v. WACHEM d.o.o. WIPO Case No. D2004-0110.
The Panel finds that here, Complainant has made out its requisite prima facie case by showing that it has never authorized Respondent to use its trademark for any purpose, and that Respondent's actual use of the disputed Domain Name, until its corresponding website's de-activation, was to park it with the pay-per-click site DomainSponsor.com for “monetizing” the traffic attracted by the Domain Name. As the UDRP case law cited by Complainant demonstrates, such use of domain names identical or confusingly similar to other parties' trademarks has been widely recognized as a crude form of illegitimate cybersquatting.
Without in any way addressing, much less refuting, Complainant's evidence of Respondent's “monetizing” use of the Domain Name for а pay-per-click host site, Respondent seeks to establish its legitimate interest on the basis of a business plan for a web portal it alleges to have been actively developing and plans to implement in the future, and attaches copies of the plan and an allegedly related agreement for programming services with an entity called OOO WebDesign Services. In so doing, Respondent is obviously relying on paragraph 4(c)(i) of the Policy in an endeavor to show that before it received any notice of the dispute, it made “demonstrable preparations to use the [Domain Name] in connection with a bona fide offering of goods or services”. The Panel finds that Respondent's evidence lacks the specificity and concreteness that the standard “demonstrable preparations” connotes. The description of the services to be provided by the would-be portal is rather sweeping and vague and there is no specific reference to those services or to the business plan itself in Respondent's contract with OOO WebDesign Services. Those two documents are insufficient to support a finding of demonstrable preparations.2 Therefore, the Panel concludes that Respondent has not met its burden and deems Complainant to have satisfied paragraph 4(a)(ii) of the Policy.
In accordance with paragraphs 4(b), registration and use of a domain name in bad faith can be demonstrated by, among other things, “circumstances indicating that [the registrant] registered or … acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration … for valuable consideration in excess of [the registrant's] documented out-of-pocket costs directly related to the domain name”, or has “intentionally attempted to attract, for commercial gain, Internet users to [the registrant's] website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the registrant's] web site or location or of a product or service on [the registrant's] web site or location”. The Panel finds that Respondent's parking of the Domain Name on a pay-per-click host website that touts its “monetizing” power, as well as listing the Domain Name on an auction website, fall into both of the above categories of circumstances showing registration and use in bad faith. Respondent's explanation that it listed the Domain Name on the auction website solely to establish its fair market value for use as a loan collateral, even if taken as true, does nothing to dispel bad faith because surely it was Respondent's hope that the fair market value so established would exceed its out of-pocket-costs and placing an encumbrance on a domain name to secure a loan is a form of “otherwise transferring” it.
According the Panel finds that Complainant has successfully established this element of the Policy.
The Panel's above findings and conclusions preclude a finding of Reverse Domain Name Hijacking against Complainant.
For all the foregoing reasons, the Panel orders that the Domain Name, <blockbusterathome.com> be transferred to Complainant.
Natasha C. Lisman
Dated: December 5, 2008
1 Respondent's opinion that “blockbuster” is essentially a common generic term unworthy of legal monopoly on its use is beside the point. The undisputed fact is that Complainant has succeeded in registering it in the United States and the Russian Federation, among other countries, and thereby has established its rights in the mark. See, e.g., Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano WIPO Case No. D2003-0661.
2 In addition, the credibility of Respondent's representations about its plans was impaired by the Respondent's unexplained failure to comply with the Panel's Procedural Order No. 1 requesting an explanation of its relationship to Eurocontrol Ltd. The Panel infers from that failure that Respondent is unwilling to be fully forthcoming about who it is and what it does.