WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Panavision International L.P., Panavision Inc. v. Institute for Insight and Transformation
Case No. D2012-0501
1. The Parties
The Complainants are Panavision International L.P. and Panavision Inc. of Woodland Hills, California, United States of America represented by Bryan Cave LLP, United States of America.
The Respondent is Institute for Insight and Transformation of San Francisco, California, United States of America, internally represented.
2. The Domain Names and Registrar
The disputed domain names <pannavision.net> and <pannavision.org> (the “Domain Names”) are registered with GoDaddy.com, LLC (“GoDaddy”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2012. On March 14, 2012, the Center transmitted by email to GoDaddy a request for registrar verification in connection with the Domain Names. On March 16, 2012, GoDaddy transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 March 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 8, 2012. The Response was filed with the Center on April 8, 2012.
The Complainants submitted a supplemental filing on April 13, 2012. The Respondent submitted a supplemental filing on April 24, 2012.
The Center appointed Michelle Brownlee as the sole panelist in this matter on April 17, 2012. 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.
4. Factual Background
The Complainants own United States (“U.S.”) Registration No. 627,362 for the mark PANAVISION (Stylized) for “anamorphosers that are used in the projection and taking of motion pictures” in International Class 9; U.S. Registration No. 845,014 for the mark PANAVISION in connection with “motion picture films produced by special purpose or conventional lenses supplied by applicant” in International Class 16, and U.S. Registration No. 834,705 for the mark PANAVISION in connection with “motion picture cameras and lenses therefore, and associated photographic equipment” in International Class 9. The Complainants also own more than 160 registrations in other countries throughout the world for the mark PANAVISION or stylized or composite marks that include the word PANAVISION.
The Domain Names were registered on December 13, 2011.
5. Parties’ Contentions
The Complainants, and their related and affiliated entities and licensees, are the world’s leading provider of ultra-precision visual cinematographic and digital imaging equipment, including cameras, optical lenses, camera cranes, photographic equipment, lighting, and other film and digital imaging equipment for the motion picture, television, and related industries. Since the 1950’s, creators and viewers of motion pictures and other visual arts have come to associate the Complainants with a high quality visual experience. The Complainants’ predecessor in interest was founded in 1954 to design and manufacture wide-screen film photographic and projection lenses. Since that time, the Complainants or their predecessor companies have consistently been at the forefront of cinematographic equipment development.
The Complainants’ Panavision equipment is used by the most well-known and respected filmmakers in the world, and many of the most successful and highly acclaimed films and television shows have been photographed using the Complainants’ Panavision camera systems, lighting equipment and other equipment. The Complainants have won numerous prestigious awards, including “Oscar” awards from the American Academy of Motion Picture Arts and Sciences, and “Emmy” awards from the Academy of Television Arts & Sciences. As a result of this long and extensive use and recognition, the Complainants and their PANAVISION marks have acquired extremely valuable goodwill and reputation among consumers and professionals in the motion picture, television, and related industries.
Since at least as early as 1998, the Complainants have maintained an active presence on the Internet, including through their website “www.panavision.com”, where it promotes their cinematographic and digital imaging equipment and related products in connection with the PANAVISION mark. The Complainants also own at least ninety other domain names that include the PANAVISION mark or variant spellings of the mark, including:
In the case of Panavision International, L.P. v. Toeppen, 945 F. Supp. 1296 (C.D. Cal. 1996), a United States District Court held that the PANAVISION mark is a famous mark entitled to protection under the Dilution Act. Other courts and UDRP panels have ordered the transfer to the Complainants of domain names that were found confusingly similar to the PANAVISION trademark.
At the time the Complaint was filed the Domain Names resolved to parked pages that displayed links to various third party websites, including websites purporting to offer cinematographic and digital imaging equipment and related goods and services, many in direct competition with the Complainants.
The Complainants contend that the Domain Names are confusingly similar to the PANAVISION trademark. The Complainants submit that the Respondent has no rights to or legitimate interests in respect of the Domain Names. The Complainants argue that the Respondent has never been known by the name “Pannavision.” The Complainants contend that the Domain Names were registered and are being used in bad faith. The Complainants state that the Respondent knew of the Complainants’ rights in the PANAVISION mark, and registered the Domain Names in order to earn click-through advertising revenue by “typosquatting” to take advantage of a common misspelling of the Complainants’ trademark.
The Respondent is a California Public Benefit Corporation which is dedicated to promoting self awareness through the pursuit of self-revealing experiences by the participants in its programs and events. The Respondent has never marketed or sold a product of any kind. The Respondent states that its founder and president, Panna Jaroch, PhD, registered the Domain Names, as well as some other domain names of interest to the Respondent, because the Respondent only had one domain name, <i4transformation.com>, and wished to expand the Respondent’s web presence.
On February 1, 2012, an attorney for the Complainants sent a letter to the Respondent accusing the Respondent of registering the Domain Names “to confuse, mislead, deceive, divert, and misdirect consumers to directly competitive websites and entities advertising cameras and related products, in direct competition with Panavision.” The Respondent replied to these allegations in a letter dated February 10, 2012. The Respondent stated that the links to advertising were not placed by the Respondent, but, rather, were placed by GoDaddy, which reserves the right in its terms of service to place advertising on parked pages and collect revenues from such advertising. When an employee of the Respondent attempted to access websites available at the Domain Names, he did not see the advertising posted by GoDaddy. He only saw a message that said something like “the site is not available at this time. Please try again later.” The first time that the employee saw the advertising content was when the Respondent was served with a copy of the Complaint in this matter and printouts of the pages were included in the annexes. At that time, the Respondent’s employee used a different computer to try to access the sites, and was able to see the advertising content. The following day, the Respondent posted the Respondent’s mission statement and a picture of the Respondent’s president on the sites available at the Domain Names so that the advertising would no longer be displayed. The Respondent contends that it did not profit from the advertising that was posted by GoDaddy.
The Respondent acknowledges that the Domain Names are similar to the Complainants’ trademark. However, the Respondent states that it is not in the camera business. The Respondent offers to place a disclaimer and agree not to enter into or promote any type of business that would be in direct competition with the Complainants. The Respondent states that its founder has been known as “Panna” since 1979 and argues that she has the right to use her name to bring attention to consciousness consistent with the Respondent’s mission statement. The “vision” that the Respondent is promoting is internal and not associated with cameras. The Respondent denies that it registered or used the Domain Names in bad faith. The Respondent claims that it was unaware of the advertising that GoDaddy was posting on the site, and when it discovered this activity, it promptly took action to remove it.
C. Supplemental Filings
The Complainants argue in their supplemental filing that even though the Respondent may not have been aware that the advertising was displayed on the web pages displayed at the Domain Names and did not profit from such advertising, the Respondent is responsible for the content displayed on the site, and this display of advertising is evidence of bad faith use of the Domain Names. The Complainants state that the Respondent’s claim that its founder’s name is “Panna” is unsupported by any evidence. The Complainants state that they do not object to the Respondent’s use of other domain names that include “Panna” as long as they are not confusingly similar to the well-known PANAVISION mark. The Complainants also argue that the Respondent cannot now cure its bad faith acts by putting up legitimate content after the Complaint was filed. Finally, the Complainants contend that the Respondent’s offer of a disclaimer does not cure its bad faith, and is tantamount to an admission that Internet users are likely to be confused.
The Respondent responded to the arguments in the Complainants’ supplemental filing in a supplemental filing of its own. The Respondent submits evidence that shows that its founder goes by the name “Ma Prem Panna,” including a decree of change of name from the Circuit Court for Wasco County, Oregon dated 1983, a photo identification card from the Rajneeshpuram, Oregon Peace Force dated 1985, and two emergency medical certification cards dated 1987 that show the name “Ma Prem Panna.”
Given the circumstances of this case, and according to paragraphs 10 and 12 of the Rules, the Panel will consider both parties’ supplemental filings.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove 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 to or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainants have demonstrated that they own rights in the PANAVISION mark. Further, the Panel finds that the Domain Names, which both use “pannavision” for the second level, are confusingly similar to the Complainants’ PANAVISION mark.
B. Rights or Legitimate Interests
This Panel finds that the Complainants have made a prima facie case that the Respondent lacks rights or legitimate interests.
Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights to or legitimate interests in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name at issue in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; 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 at issue.
At the time the Complaint was filed, the websites associated with the Domain Names were resolving to parking pages hosted by GoDaddy that were displaying advertising. Thus, the Panel finds that they were not being used in connection with a bona fide offering of goods or services at that time.
The Respondent has not offered much in the way of evidence that it made demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services. The Respondent states that the Domain Names were “of interest” among several others that had been registered as the not-for-profit company intended to expand its Internet presence.
The Respondent did not offer evidence that it has been commonly known by the Domain Names, but states that its use of the term “Pannavision” has sometimes been used by people to describe the unique perspective offered by the organization’s founder. Although the content that the Respondent posted on the site to which the Domain Names resolve, after the Complaint was filed would suggest a possible legitimate noncommercial use of the Domain Names without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark at issue, the content that was posted at the time the Complaint was filed cannot be considered a legitimate noncommercial use. Although GoDaddy was posting the advertising content, the Respondent was in control of the site and is responsible for the content posted on the site.
Accordingly, the Panel finds that the Respondent has not demonstrated rights to or legitimate interests in the Domain Names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) 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; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
In order for a complainant to succeed in an action under the Policy, the complainant must demonstrate by a preponderance of the evidence that the respondent has both registered and used the disputed domain name in bad faith.
In this case, the Respondent argues that it did not know that the Domain Names were being used by the Registrar (GoDaddy) to display advertising. Previous UDRP panels have found that owners of domain names are responsible for the content displayed thereon, even when the content was generated by a third party, such as the content posted by GoDaddy on the parked pages in this case. Although this Panel believes that a finding of bad faith use is debatable based on the evidence that has been presented, it is not necessary to decide whether there has been bad faith use because the Panel finds that the registration of the Domain Names was not in bad faith.
The Panel is satisfied based on the record before it that the Respondent presented credible evidence that the Domain Names were chosen because of their connection to the name of the Respondent’s founder and that while the Respondent was aware of the Complainant’s trademark rights, it acted on a good faith belief that its use of the Domain Names in connection with services that are not related to the Complainant’s goods and services did not violate the Complainant’s rights. After careful consideration of the facts and circumstances in the record, the Panel finds that the Complainants did not present any evidence that would call into question the Respondent’s motives in registering the Domain Names, such as evidence that the Respondent had a history of registering other terms that were similar to well-known trademarks. Under the specific circumstances, the Panel finds that the Complainants have failed to meet their burden of demonstrating that the Respondent registered the Domain Names in bad faith. See Georgia-Pacific Consumer Products v. Mark Gallo, WIPO Case No. D2010-2062.
In the Panel’s view, this case looks less like a clear case of cyber squatting and more like a case of a legitimate trademark dispute that is better left to a court litigation.1 While the Complainants might ultimately be able to prove a case of trademark infringement or dilution in court, it has not provided enough evidence of bad faith to carry its burden to persuade the Panel by a preponderance of the evidence that bad faith registration and use has occurred. The UDRP does not include a mechanism for cross-examination or discovery and may not the appropriate forum through which to resolve such matters of disputed evidence, and as stated above the courts may be the better option in the circumstances of this particular case.
For all the foregoing reasons, the Complaint is denied.
Dated: April 24, 2012
1 The ICANN Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy (“Second Staff Report”) Paragraph 4.1.c (October 24, 1999) states that the Policy “calls for administrative resolution for only a small, special class of disputes,” namely, “abusive registrations,” i.e., cases of cybersquatting and cyberpiracy. The Second Staff Report further states:
Except in cases involving "abusive registrations" made with bad-faith intent to profit commercially from others' trademarks (e.g., cybersquatting and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts (or arbitrators where agreed by the parties) and calls for registrars not to disturb a registration until those courts decide. The adopted policy establishes a streamlined, inexpensive administrative dispute-resolution procedure intended only for the relatively narrow class of cases of "abusive registrations." Thus, the fact that the policy's administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute (and may ultimately be found to violate the challenger's trademark) is a feature of the policy, not a flaw. The policy relegates all "legitimate" disputes--such as those where both disputants had longstanding trademark rights in the name when it was registered as a domain name--to the courts; only cases of abusive registrations are intended to be subject to the streamlined administrative dispute-resolution procedure.
Second Staff Report paragraph 4.1.c.