WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red.com, Inc. v. Zimrat Goldstein
Case No. D2011-0455
1. The Parties
The Complainant is Red.com, Inc. of California, United States of America (“USA”) represented by Weeks, Kaufman, Nelson & Johnson, United States of America.
The Respondent is Zimrat Goldstein of Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <redcamcanada.com> (the “Domain Name”) is registered with Melbourne IT Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2011, naming Spotz VPS / Redcam Canada as the respondent and Yahoo domains as the registrar. Further information in the Complaint as filed identified a Betan Yaron as a contact person for Spotz VPS / Redcam Canada.
The Center transmitted its request for registrar verification to the correct Registrar on March 10, 2011. The Registrar replied the same day, confirming that it was the registrar of the Domain Name, but stating that the Respondent identified in the Complaint as filed was not the registrant. The Registrar identified the registrant as Zimrat Goldstein and provided the full contact details held on its WhoIs database in respect of the registration. These identified both the registrant and the administrative contact as Zimrat Goldstein, but gave an email address for the administrative contact reflecting the name Betan Yaron.
The Registrar also confirmed that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied to the registration, that the Domain Name would be locked during this proceeding, and that the registration agreement was in English and contained a submission to the jurisdiction of the courts as provided in the UDRP. The Registrar stated that it had not received a copy of the Complaint.
The Center informed the Complainant on March 16, 2011, that the Complaint as filed incorrectly identified the registrar, provided the contact details in respect of the registration supplied by the Registrar, and requested that the Complaint be amended. The Complainant filed an amendment to the Complaint on March 16, 2011, amending the identification of the Respondent and Registrar in line with the information forwarded by the Center.
The Center verified that the Complaint as amended satisfied the formal requirements of the 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 17, 2011. In accordance with paragraph 5(a) of the Rules, the due date for Response was April 6, 2011.
Betan Yaron (or Yaron Betan) requested an extension of time for response by emails on April 6, 2011, stating that he had only recently been informed about these proceedings due to his time being spent away from his business and company. The Center declined the request by email of April 7, 2011, on the grounds that it was received close to the due date and there did not appear to be exceptional circumstances as required by paragraph 5(d) of the Rules. The Center added that the Panel has power to consider belated submissions and that if a belated response was submitted the Center would inform the Panel. The Center did not receive any further submission from the Respondent.
The Center appointed Jonathan Turner as the sole panelist in this matter on April 15, 2011. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint as amended complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant develops, manufactures and sells high resolution, HD digital cinema cameras, including a model called “Red One”. The Complainant has registered RED, RED CAMERA and RED ONE as trademarks for goods in International Class 9 in the USA and other countries.
The Domain Name has been directed to a website which purports to advertise the rental of Red Cam Canada cameras. This website has metatags with keywords which include “red cam”, “red one camera”, “red cam rentals Toronto”, “red cam equipment rentals”, “red cam Camera”, “red rentals”, “redonecamera”, “red digital camera”, “4k camera”, “redcam rentals”, “red cam los angeles”, “red cam new york”, “red cam Chicago” and “red cam America”.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to its registered trademarks RED, RED CAMERA and RED ONE.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name, pointing out that there is no evidence that the Respondent has any rights in the RED trademark or that he is commonly known by the Domain Name or that he is making a legitimate noncommercial or fair use of the Domain Name.
The Complainant alleges that the Domain Name was registered and is being used in bad faith. In particular, the Complainant alleges that the Domain Name has been registered primarily for the purpose of trading on the Complainant’s goodwill; that the Respondent apparently registered the Domain Name to facilitate the marketing of his movie; and that the Respondent has attempted to attract Internet users to his website for commercial gain by creating the impression that it is authorized or endorsed by the Complainant or affiliated to it. In this connection the Complainant draws attention to the metatags of the Respondent’s website mentioned above. The Complainant adds that the Respondent promised, but failed to transfer the Domain Name to the Complainant after it contacted the Respondent regarding the dispute.
The Complainant seeks a decision that the Domain Name be transferred to it.
As noted above, the Respondent has not submitted a Response to the Complaint.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. It is clear that these are cumulative requirements and it is therefore appropriate to consider each of them in turn.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered and unregistered rights in the marks RED and RED CAMERA.
The Panel further finds that the Domain Name is confusingly similar to these marks. Many Internet users would understand the “cam” in the Domain Name to be short for “camera”, a generic word which describes the Complainant’s products and is also part of the second trademark mentioned above. Internet users would further understand “Canada” in the Domain Name as indicating that it locates a website of a subsidiary or distributor of the Complainant in that country and/or provides for customers and potential customers there. Accordingly, the addition of “cam” and “Canada” and the generic top level domain name suffix do not avert the likelihood of confusion arising from the inclusion in the Domain Name of the Complainant’s mark RED.
The first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
The Complaint does not directly address whether the Respondent has used or made demonstrable preparations to use the Domain Name or any corresponding name in connection with any bona fide offering of goods or services prior to notice of the dispute. The Panel, however, regards this issue as central to the case.
As noted above, the Domain Name has been directed to a website which purports to advertise the rental of Red Cam Canada cameras. In this kind of situation, panels appointed under the UDRP have generally applied the criteria identified in the decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903: see point 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (Second Edition).
According to the Oki Data decision, the use of a domain name reflecting a trademark for a website which promotes an offering of the genuine product marketed under the trademark can normally be regarded as a bona fide offering of goods or services for the purposes of paragraph 4(c)(i) of the UDRP, provided the following, cumulative conditions are met: first, that the user of the domain name is actually offering the genuine products marketed under the trademark; second, that he uses the website identified by the domain name to promote only those products; third, that the website accurately and sufficiently clearly indicates the user’s relationship (or lack of relationship) with the owner of the trademark; and, fourth, that the user has not sought to register all domain names which reflect the trademark.
The information in the file does not show whether the Respondent is actually hiring out genuine “Red One” cameras of the Complainant. However, the Complainant’s undisputed evidence is that the Respondent’s website also markets the Respondent’s movie. Examination of the Respondent’s website following submission of the dispute to this Panel reveals that it now promotes other goods and services including rental of cameras of other suppliers. In these circumstances the Panel finds that the second condition of legitimate use identified in the Oki Data decision is not met in this case.
In addition, the homepage of the Respondent’s website carries at its foot the statement “Official Canadian Red Cam Rental Specialists”. This conveys the impression that the Respondent is an authorised dealer in the Complainant’s products, which appears to be contrary to the fact and hence to the third of the Oki Data conditions.
The Panel therefore finds that the conditions of legitimate use identified in the Oki Data case are not satisfied and that the Respondent does not have rights or legitimate interests in the Domain Name on the ground that he has used it in connection with a bona fide offering of goods or services.
It is clear from the undisputed evidence that the Respondent is not commonly known by the Domain Name. Furthermore, it does not appear that the Respondent is making legitimate noncommercial or fair use of the Domain Name. On the contrary, the Respondent’s website purports to offer the Complainant’s cameras for hire on a commercial basis, while not satisfying the Oki Data criteria for this use to be regarded as legitimate.
In the circumstances described in the file, the Panel does not see any other basis on which the Respondent could claim any right or legitimate interest in respect of the Domain Name. The Panel accordingly finds that the second requirement of the UDRP is satisfied.
C. Registered and Used in Bad Faith
As mentioned above, although the Respondent’s website purports to offer the Complainant’s cameras for hire, it also offers other goods and services, and furthermore it represents that the Respondent is an authorized dealer of the Complainant when he is not.
In the circumstances, the Panel finds that the Respondent has used the Domain Name intentionally to attract Internet users to his website for commercial gain by creating a likelihood of confusion with the Complainant's mark as to the affiliation or endorsement of his website and his services promoted on it. In accordance with paragraph 4(b)(iv) this constitutes evidence of registration and use of the Domain Name in bad faith.
This presumption is not displaced by any contrary evidence on the file. In all the circumstances the Panel finds that the third requirement of the UDRP is satisfied.
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 <redcamcanada.com> be transferred to the Complainant.
Dated: April 25, 2011