Complainant is Imax Corporation of Ontario, Canada, represented by Kilpatrick Stockton LLP, United States of America.
Respondent is Whois Privacy Service Pty Ltd/Privacy Ltd. Disclosed Agent for YOLAPT of Brisbane, Australia and Isle of Man, United Kingdom of Great Britain and Northern Ireland, respectively.
The disputed domain name <imaxcinema.com> is registered with Fabulous.com Pty Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2010. On February 9, 2010, the Center transmitted by email to Fabulous.com Pty Ltd. a request for registrar verification in connection with the disputed domain name. On February 10, 2010, Fabulous.com Pty Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 19, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 24, 2010. The Center verified that the amended 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 Respondents of the Complaint, and the proceedings commenced on February 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2010. Respondents did not submit any response. Accordingly, the Center notified Respondents' default on March 18, 2010.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on March 23, 2010. 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 trademark upon which the Complaint is based is IMAX. According to the documentary evidence and contentions submitted, Complainant owns a number of trademark registrations for the IMAX mark in different countries, including the United States Registrations Nos. 0942747, issued on September 12, 1972; 1283679, issued on June 26, 1984; 2121078, issued on December 16, 1997 2270681, issued on August 17, 1999; and 2426984, issued on February 6, 2001, as well as for combinations of the word “ imax”, for a variety of motion picture and theatre services.
According to the documentary evidence and contentions submitted, since 1969 Complainant has used the IMAX mark to identify its characteristic theatres, motion picture equipment, and related goods and services. Complainant currently operates directly or indirectly over 400 theatres in 44 countries throughout the world, and the IMAX brand is identifiable worldwide with Complainant's quality services.
According to the documentary evidence and contentions submitted, since at least January, 1998 Complainant has used the IMAX marks online at the Internet site located at “www.imax.com”.
Pursuant to the documentary evidence, the domain name <imaxcinema.com> was registered with Fabulous.com Pty Ltd. on September 25, 2004.
Complainant argues that the disputed domain name is virtually identical to the IMAX mark because it adopts the IMAX mark exactly and in its entirety, differing only by adding a non-distinguishing generic term that describes the very services for which the IMAX mark is known.
Complainant further contends that Respondents do not have rights or legitimate interests regarding the disputed domain name because (i) in view of Complainant's IMAX trademark registrations having been issued long before Respondents registered the <imaxcinema.com> domain name, Respondents are charged with constructive knowledge of them; and (ii) Complainant has found no evidence that Respondents have ever used (other than Respondents' domain name registration) the trademark or trade name “imaxcinema.com” or been commonly known as “imaxcinema.com” or anything similar.
Finally, Complainant contends that Respondents registered and uses the disputed domain name in bad faith because (i) Respondents, prior to their adoption and use of the domain name <imaxcinema.com>, were aware that Complainant was the owner of the IMAX mark in view of the widespread and long-standing advertising and marketing of goods and services under the IMAX names and marks around the world, including online, (ii) Respondents are not making any legitimate, noncommercial or fair use of the disputed domain name, but are rather using the disputed domain name to operate a sponsored results, or “pay-per-click,” site to which it drives Internet traffic with the intent to derive profits, (iii) Respondents are intentionally seeking consumers who are searching for information about IMAX cinemas and is relying on consumer confusion to profit from the fact consumers will intuitively type in Complainant's mark, and (iv) Respondents attempted to attract for commercial gain Internet users to their site by creating a likelihood of confusion with Complainant's IMAX mark as to source, sponsorship, affiliation, or endorsement of Respondents' website.
Respondents did not reply to Complainant's contentions.
When the Complaint was filed, the disputed domain name was registered in the name of Whois Privacy Services Pty Ltd, which is obviously a proxy service. By the time the Center transmitted a request for registrar verification in connection with the disputed domain name, the registrar Fabulous.com Pty Ltd. disclosed as registrant Privacy Ltd. Disclosed Agent for YOLAPT.
Complainant amended the Complaint to include both Whois Privacy Service Pty Ltd and Privacy Ltd. Disclosed Agent for Yolapt as Respondents. Both Respondents have been served with copies of the amended Complaint and neither has responded. The Panel sees no reason to distinguish between the two. See Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei, WIPO Case No. D2005-0642.
The consensus view is that the respondent's default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel finds that there are no exceptional circumstances for the failure of Respondents to submit a Response. As a result, the Panel infers that Respondents do not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and Respondents will be subject to the inferences that flow naturally from the information provided by Complainant. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.
The disputed domain name <imaxcinema.com> incorporates the IMAX mark in its entirety. In this type of combination it is clear that the IMAX mark stands out and leads the public to think that the disputed domain name is somehow connected to the owner of the registered trademark.
Previous WIPO UDRP panels have held that when a domain name wholly incorporates a complainant's registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., TELSTRA CORPORATION LIMITED V BARRY CHENG KWOK CHU, WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd, WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S.r.l., WIPO Case No. D2001-1206; Utensilerie Associate S p A. v. C & M, WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd., WIPO Case No. D2007-0282.
The addition of the generic term “cinema” increases the likelihood of confusion because it describes the very services for which the IMAX mark is known, as correctly pointed out by Complainant.
Also, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Matthew Smith, supra.
Therefore, the Panel finds that the <imaxcinema.com> domain name is clearly confusingly similar to the IMAX mark and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.
Complainant's first contention is that, because the IMAX trademark registrations were issued long before Respondents registered the <imaxcinema.com> domain name, Respondents are charged with constructive knowledge of them.
Most panels have declined to introduce the concept of constructive notice into the UDRP. See WIPO Overview, paragraph 3.4. However, there are special circumstances that strongly suggest actual knowledge, such as a famous mark, a distinctive mark, a mark not in any way descriptive of the goods or services offered. See Affinion Publishing LLC v. Link Domain/ Daniel Concepcion, WIPO Case No. D2008-0316.
Complainant also contends that Complainant has found no evidence that Respondents have ever used (other than Respondents' disputed domain name registration) the trademark or trade name “imaxcinema.com” or been commonly known as “imaxcinema.com” or anything similar.
The Policy outlines in paragraph 4(c) circumstances which, if found by the panel to be proved, shall demonstrate the respondent's rights or legitimate interests in the domain name. The Panel finds that none of the conditions outlined in paragraph 4(c) have been made out by Respondents. In fact, the Panel accepts Complainant's contentions that (i) Complainant's use of the mark predates the registration of the disputed domain name and has extended over thirty years in many countries; and(ii) Respondents do not carry on any business and were not commonly known by the name IMAX or any other words including the word IMAX before the domain name was registered.
In short, Complainant has satisfied its burden of providing sufficient evidence that Respondents lack rights to or legitimate interests in the disputed domain name, and Respondents by defaulting have failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondents have any rights or legitimate interests in the disputed domain name. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
In light of the particulars of the instant case, the Panel finds that Respondents were undoubtedly aware of the existence of Complainant and of its trademark IMAX when Respondents registered the disputed domain name. That finding is reinforced by the fact that Respondents chose to combine the word “ imax” with “cinema”, a term which describes the core business in which Complainant is engaged.
As a matter of fact, in the case of a domain name so obviously connected to a widely known mark and the main services identified thereby, its use by someone with no legitimate interests in respect of the registered domain name constitutes what has been called as “opportunistic bad faith”. See SSL INTERNATIONAL PLC v. MARK FREEMAN, WIPO Case No. D2000-1080; Perfumes Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.
As a result of an independent research made on April 4, 2010 by accessing the website to which the disputed domain name resolves, the Panel noted that the website at “www.imaxcinema.com> displays sponsored link pages related inter alia to movies, movie theaters and tickets, which is the core business of Complainant.
The Panel concurs with the understanding of several other UDRP panels that the use of a domain name to point to a website that offers sponsored links to complainant's competitors or other websites is evidence of bad faith. Mudd, (USA) LLC v. Unasi Inc. (MUDDPRODUCTS-COM-DOM)., WIPO Case No. D2005-0591; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556.
Finally, the Panel also finds that another factor that weighs in Complainant's favour on the issue of bad faith is the use of a proxy registration service to avoid disclosing the name and coordinates of the real party in interest. See Bacchus Gate Corporation d/b/a International Wine Accessories v. CKV and Port Media, Inc., WIPO Case No. D2008-0321; Canadian Tire Corporation Limited v. CK Aspen, WIPO Case No. DTV2007-0015; Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696.
Therefore, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.
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 <imaxcinema.com> be transferred to Complainant.
Manoel J. Pereira dos Santos
Dated: April 5, 2010