The Complainant is Dreamworks Animation, L.L.C. of Glendale, California, United States of America, represented by Seyfarth Shaw, United States of America.
The Respondent is Michael Ioannou of Nycosia, Cyprus, represented by Papacharalambous & Angelides LLC, Cyprus.
The disputed domain name <dreamworkstudios.com> is registered with Omnis Network, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2009. On October 13, 2009, the Center transmitted by email to Omnis Network, LLC a request for registrar verification in connection with the disputed domain name. On October 13, 2009, Omnis Network, LLC transmitted by email to the Center its verification response confirming that:
(a) the domain name was registered with it;
(b) the Respondent is listed as the registrant;
(c) the contact details for the Respondent in the Registrar's records were those set out in the Complaint;
(d) the language of the registration agreement is English; and
(e) the Respondent registered the domain name with the Registrar on October 11, 2004.
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), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 19, 2009. In light of a communication by Respondent, the Complainant on November 3, 2009, requested a suspension of the proceedings for 1 week. On the same day the Center suspended the proceedings until November 10, 2009. After a request from the Complainant, the Center on November 10, 2009 re-instituted the proceedings. The new due date for the Response was November 15, 2009.
On November 12, 2009, the Complainant submitted an amended Complaint revised to deal with matters arising during the suspension of proceedings.
The Response was filed with the Center on November 15, 2009.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on November 23, 2009. 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 Complainant is the successor in title to SKG Studio and Dreamworks LLC. SKG Studio was formed in 1994 by the film director, Steven Spielberg, and the entertainment industry executives, David Geffen and Jeffrey Katzenberg. This business was assigned to Dreamworks LLC in 1995.
In 2004, the Complainant was formed and the DREAMWORKS trademarks discussed below as well as the animated motion picture business of Dreamworks LLC were assigned to it. The Complainant licensed the DREAMWORKS trademarks back to Dreamworks LLC for use in connection with live action motion pictures and other purposes.
The Respondent is a national of, and resident in, Cyprus. In 2004, he was a student at the University of Reading in England. He says he registered the domain name in preparation for his return to Cyprus at the completion of his course.
In July 2007, the Complainant's attorneys in Cyprus wrote to the Respondent alleging his activities were in breach of the Complainant's rights and calling on him to surrender the disputed domain name.
Currently, the disputed domain name resolves to a website at the URL “http://citronwebs.com”, which is the website of Infologix Ltd. The Respondent registered this company in June 2007. It provides IT consulting services including software packages, website programming and domain name registration.
According to the website, Infologix Ltd has associate firms called Accounts Tech Solutions, Brand Infection Services, Big Red Giant Mobile Solutions and Lavisoft Software Systems. It also has a subsidiary firm, M.A.K. Accounting.
Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
(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 interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
The Panel addresses each in turn.
There are two parts to this inquiry: does the Complainant have trademark rights in a sign and, if so, is the disputed domain name identical or confusingly similar to that mark?
The evidence submitted with the Complaint establishes that the Complainant has owned numerous registered trademarks for DREAMWORKS in connection with live action films, animated films, television programming, music home video and DVD products and other entertainment goods and services from well before the Respondent registered the disputed domain name. Exhibits C and D to the declaration of Cheryl M. Friedman (“Friedman declaration”). The evidence establishes registrations in many countries including the United States of America (“USA”), the European Union and Cyprus.
In addition, the Complainant and its predecessors have used the trademark DREAMWORKS (alone and in conjunction with a device of a boy fishing from the moon) on a very extensive scale throughout the world in connection with, particularly, many extremely successful motion pictures.
These films include: Road to Perdition, Minority Report, A Beautiful Mind, A.I. Artificial Intelligence, Cast Away, The Legend of Bagger Vance, Gladiator, American Beauty, Amistad, Saving Private Ryan, Deep Impact, Catch Me If You Can, Seabiscuit, Collateral, Munich, Dreamgirls, Transformers, and Sweeney Todd, the Demon Barber of Fleet Street, and in animated films: Spirit, Stallion of the Cimarron, Shrek, Shrek 2, Shrek the Third, Chicken Run, Antz, The Road to El Dorado, Prince of Egypt, Madagascar, Over the Hedge, Flushed Away, Bee Movie, and Kung Fu Panda.
Not all of these films were released before the Respondent registered the disputed domain name; many were. Those that were have been very successful, commercially and critically. Revenues generated worldwide exceed several billion dollars and within Cyprus, several million dollars. They have received numerous nominations for Academy awards and a number have been winners in various categories.
The Panel has no hesitation in finding that the trademark DREAMWORKS, both alone or conjunction with the device, is extremely well-known around the world including in Cyprus.
The second part of this inquiry requires a comparison between the proved trademark rights and the disputed domain name. On this part of the inquiry what is required is simply a comparison and assessment of the domain name itself to the Complainant's proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420.
It is well established that the gTLD “.com”, being a functional requirement of the domain name system, can be disregarded for the purposes of this inquiry. See for example Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046; Ticketmaster Corporation v. DiscoverNet Inc., WIPO Case No. D2001-0252; Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493.
The Complainant relies on the close resemblance of the disputed domain name, apart from the gTLD, to its trademark for a finding of confusing similarity.
The Respondent contends that there should be no finding of confusing similarity because each word individually is a plain English word. That may be accepted. However, the combined phrase “dreamwork(s)” is not a plain or ordinary English word. It does not directly describe anything. It is at most an allusive reference to works of the imagination. In ordinary English usage, the term has significance only because it is the trademark of the Complainant. The Respondent draws attention to the absence of the “s” in its disputed domain name. The Respondent also points out that “studio” is not limited in meaning to a movie studio but can refer generally to an artist's studio or other types of studio.
Apart from the addition of the functionally required gTLD, “.com”, the disputed domain name differs from the Complainants proved trademark rights in DREAMWORKS by (a) the omission of the single letter “s” and (b) the addition of the descriptive word “studios”.
These differences do not save the disputed domain name from a finding of confusing similarity. The difference of the plural to the singular is trivial. The addition of the descriptive word “studio” does not detract from the distinctive force of “dreamwork(s)”. Indeed, accepting that there are different types of studio, many users of the Internet are likely to consider that it reinforces the association with the Complainant as film production companies are often referred to as movie studios or studios.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant's registered trademark DREAMWORKS. Although strictly not necessary, the Panel would make the same finding in respect of the Complainant's trademark which features the device of the boy fishing from the moon with the word DREAMWORKS. DREAMWORKS is the obvious and natural reference for that composite mark.
The second requirement that the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. In view of the difficulty in proving a negative, the Complainant must adduce sufficient material to raise a prima facie case under this factor and then an evidential burden shifts to the Respondent to rebut that prima facie case. For convenience the Panel refers only to WIPO Overview of WIPO Panel Views on Selected UDRP Questions paragraph 2.1.
Paragraph 4(c) sets out three examples of rights or legitimate interests for the purposes of the Policy. They are:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
These are examples only and not an exhaustive enumeration of the ways in which rights or legitimate interests can be shown. They do provide, however, a guide to what is contemplated as permissible under the Policy.
The Complainant states that it has not authorized the Respondent to use the disputed domain name and denies that the Respondent is in any way associated with the Complainant's business. The disputed domain name is also not derived from the Respondent's own name or the name of the company he formed to carry on his business, Infologix Ltd or, for that matter, any of the other businesses identified on the Respondent's website.
These points have been widely accepted by Panels as sufficient to establish a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name.
The Respondent advances three points to rebut that inference. First, he claims that he thought of the name completely independently of the Complainant's trademark, as an apt description of his proposed business as a freelance web designer and IT consultant. Secondly, he claims that he is using the disputed domain name in a wholly unrelated field to the motion picture business operated by the Complainant. Thirdly, he claims that he was using the name Dreamwork Studios as a kind of trading name while he was operating as a freelance IT consultant for a number of years from 2004 until he formed his present company in 2007.
In support of the third proposition, the Respondent contends that he printed the domain name on business cards which he distributed to clients and potential clients from his return to Cyprus in 2005. The Respondent also appears to contend that his website was operating from the domain name throughout that period.
The Panel is also unable to accept the bare, unsupported assertions that the Respondent was commonly known as DreamWork Studios. As the Respondent positively advances these matters in his defence, the onus lay on him to substantiate the claims. No business card, invoices or other supporting materials have been produced.
Exhibit E to the Friedman declaration is a print out of a web page which the disputed domain name resolved to dated October 27, 2004. It states that:
Dream Work Studios
“Make Your Dream of A Website Come Professionally True”
Page Under Construction
According to the Complainant, the disputed domain name never resolved to an active website until some time in 2008 or 2009 after the Complainant's letter of demand had been sent to the Respondent in 2007.
It is very surprising that the Respondent, who is apparently a website designer, did not seek to create a page to promote his own services. Given the nature of the business he claims to have been operating, the argument that he had insufficient funds does not seem particularly credible. More fundamentally, the Respondent does not offer any explanation for using a completely different company name, Infologix Ltd, and URL, <citronweb.com>, as the co-ordinates for his business if, as he claims, he was well known throughout Cyprus by the name DreamWork Studios. Paragraph 4(c)(ii) of the Policy, therefore, does not apply.
The Respondent himself concedes in the Response that he was well aware of the Complainant's trademark and reputation when he adopted the disputed domain name. For the reasons discussed above, it is not a common descriptive term, it has significance only because of the Complainant's use and fame in the trademark.
In these circumstances, it seems much more likely that the Respondent adopted the disputed domain name with the intention of taking advantage for his own benefit of the Complainant's trademark rights and reputation. Such use is not a bona fide offering of goods or services for the purposes of paragraph 4(c)(i) of the Policy: e.g. The Nasdaq Stock Market Inc. v. NSDAQ.COM, NASDQ AND NASAQ.COM, WIPO Case No. D2001-1492 and Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847.
Accordingly, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
The third requirement that the Complainant must demonstrate to succeed is that the disputed domain name has been registered and used in bad faith. In connection with this factor, paragraph 4(b) of the Policy provides:
“(b) Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
As the terms of the paragraph make clear, these are examples only and not an exhaustive enumeration of the circumstances in which registration and use in bad faith are found.
As noted above, the Respondent admits that he adopted the disputed domain name with knowledge of the Complainant's trademark rights and fame. For the reasons explained in connection with the second requirement of the Policy, the Panel has found that the Respondent registered the domain name with the intention of taking advantage of those trademark rights and renown. Accordingly, the Panel finds that the Respondent registered the disputed domain name in bad faith within the meaning of the Policy. See e.g. The Nasdaq Stock Market Inc v. NSDAQ.CO, NASDQ AND NASAQ.COM, above.
The Respondent is continuing to use the disputed domain name in bad faith by using the domain name now to redirect traffic in the manner described to his Infologix Ltd business' website.
After the Complaint was filed, the Respondent contacted the Complainant and requested a suspension of the proceeding to see if a negotiated solution could be adopted. When the proceeding was suspended, the Respondent then offered to sell the disputed domain name to the Complainant for the sum of EUR 280,000.
Consistently with practice under the Policy, the Panel may have regard to such an offer. See e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions § 3.6 and cases cited therein.
That sum is far in excess of any out-of-pocket expenses the Respondent could have incurred. The Respondent also has not sought to justify the sum by reference to any changeover expenses he might incur or the value of any accrued goodwill. Given the way he in fact uses the domain name, the changeover expenses would seem very unlikely to reach anything approaching the amount demanded. In the circumstances, the Panel concludes that the amount demanded can really be supported only on the fame and reputation attaching to the Complainant's trademark. This offer, therefore, reinforces the conclusion that the Respondent is using the disputed domain name in bad faith.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.
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, <dreamworkstudios.com>, be transferred to the Complainant.
Warwick A. Rothnie
Dated: November 30, 2009