WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Odeon Cinemas Holdings Limited v. Sandor Balazs
Case No. D2012-1007
1. The Parties
The Complainant is Odeon Cinemas Holdings Limited of Manchester, Cheshire, United Kingdom of Great Britain and Northern Ireland (“U.K.”) represented by Bristows, U.K.
The Respondent is Sandor Balazs of Shrewsbury, U.K.
2. The Domain Name and Registrar
The disputed domain name <odeonlive.com> (the “Domain Name”) is registered with Ascio Technologies Inc (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2012. On May 14, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with Domain Name. On May 21, 2012, the Registrar 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 May 22, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 11, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 12, 2012.
The Center appointed Jon Lang as the sole panelist in this matter on June 15, 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 Complainant is part of the Odeon & UCI Cinemas Group, one of the largest cinema chains in Europe (together “Odeon”). Odeon has been trading under the ODEON mark since it was founded in 1930. Odeon is one of the largest cinema chains in the U.K. Its chain of over one hundred and ten cinemas accounts for nearly one third of all cinema tickets sold in the U.K. Amongst the cinemas operated by Odeon is the Odeon Leicester Square, which hosts numerous European and world film premieres.
The Complainant has used, registered or applied to register the following marks:
U.K. Trade Mark No. 1510967, registered from August 20, 1992, for the mark ODEON for goods in class 9;
U.K. Trade Mark No. 1283322, registered from October 1, 1986, for the mark ODEON for services in class 41;
U.K. Trade Mark No. 2414835, registered from February 10, 2006, for the mark ODEON DIRECT for goods and services in classes 9, 35, 41;
U.K. Trade Mark No. 2598918, filed on October 24, 2011, for the mark ODEON PREMIERE CLUB for goods and services in classes 9, 16, 35, 36, 38 and 41;
The Complainant has substantial goodwill in relation to the mark ODEON.
The Complainant has been active on the Internet for a number of years and has actively operated the Internet website at “www.odeon.co.uk” since before August 1996.
The Domain Name was registered on December 9, 2011.
Not much is known about the Respondent given that it has not taken part in these proceedings.
5. Parties’ Contentions
The Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
The only difference between the Domain Name and the Complainant’s ODEON trade marks is the addition of the non-distinctive word, “live”. The dominant and distinctive element to U.K. Trade Marks Nos. 2414835 and 2598918 is ODEON, which is also the dominant and distinctive element of the Domain Name.
Odeon has a pre-eminent reputation in its ODEON brand within the cinema and entertainment industries. The ODEON mark instantly evokes the well-known cinema chain and therefore the Domain Name suggests that it is connected to the Complainant. Indeed it was undoubtedly chosen by the Respondent in an effort to free-ride off of the goodwill associated with the ODEON marks in which the Complainant enjoys exclusive rights.
The Respondent has no rights or legitimate interests in respect of the Domain Name
Given the reputation of the ODEON trade marks, it is inconceivable that the Domain Name could have been registered without knowledge of the mark. It is not a domain name which another trader would legitimately choose unless that trader sought to either create an impression of an association with the Complainant and/or misleadingly divert consumers.
The Complainant has not licensed or otherwise permitted the Respondent to use the ODEON trade marks or any other trade mark incorporating ODEON, or licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating ODEON.
The Domain Name was registered and is being used in bad faith
The Complainant submits that the Respondent has intentionally attempted to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of a product or service on the website.
The Complainant contends that the Respondent registered the Domain Name knowing that it was misappropriating the intellectual property of the Complainant. The Respondent's website is used in connection with the watching of online movies and, therefore, is directly related to the Complainant’s activities. There is no conceivable reason for the Respondent to use the ODEON mark in connection with the viewing of movies other than to attempt to associate himself in some way with the Complainant’s business and trade off the Complainant’s reputation.
The Complainant’s solicitors wrote to the Respondent on March 19, 2012 and March 30, 2012
in an attempt to resolve this dispute without having to resort to filing this Complaint. The Respondent did not respond.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that a 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. A complainant must prove each of these three elements.
A. Identical or Confusingly Similarity
The Complainant has rights in its ODEON mark.
As the Complainant’s mark and Domain Name are not identical, the issue of confusing similarity must be considered.
Under the UDRP, the test for confusing similarity involves a comparison between the trade mark and the domain name to determine likelihood of Internet user confusion. To satisfy the test, the trade mark to which the domain name is said to be confusingly similar would generally need to be recognisable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent Internet user confusion. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trade mark and the domain name.
In this case, the Domain Name incorporates the Complainant’s mark ODEON in its entirety and is very much its dominant element, being a mark of considerable fame placed first in the Domain Name and followed by the generic term, “live”.
Given the distinctive nature of the ODEON mark which is readily recognisable within the Domain Name (and very much its dominant element), the Panel is satisfied that the Domain Name <odeonlive.com> is confusingly similar to the Complainant’s trade mark, ODEON and thus this element of paragraph 4(a) of the Policy has been established.
Even if one were to adopt a possibly slightly higher burden and require, as some UDRP panels have done, a risk that Internet users may actually believe that there is a real connection between the Domain Name and the Complainant and/or its goods and services, the Complainant would succeed in showing confusing similarity. The impression created by the Domain Name may well give rise to the possibility that Internet users would think that the owner of the Domain Name is in fact the owner of the Complainant’s mark to which it is similar, or that there is some form of association between the Respondent and the Complainant.
B. Rights or Legitimate Interests
A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with the complainant. For instance, it can show that it has been commonly known by the domain name or that it 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 trade mark or service mark at issue.
Here, however, the Respondent does not appear to be known by the Domain Name. Moreover, given the nature of the website to which the (confusingly similar) Domain Name resolves i.e., a site used in connection with the watching of online movies, the Panel would not accept that there is legitimate noncommercial or fair use. In any event, it is difficult to conclude that the Respondent does not derive a commercial benefit from the use to which the Domain Name has been put or that there was no intent to mislead. On the contrary, it is likely (in the absence of any alternative explanation), that the very purpose in the Respondent choosing the Domain Name was to deliberately create a false impression of association with the Complainant. In Drexel University v. David Brouda, WIPO Case No. D2001-0067, the panel stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”.
A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. Here however, the Domain Name is used in connection with the watching of online movies, an activity clearly related to the Complainant’s activities, and obviously takes advantage of the fame of the trade mark to which it is confusingly similar. In these circumstances, it could not be said that the Domain Name is being used in connection with a bona fide offering.
By its allegations the Complaint has clearly made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with appropriate arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so. Moreover, there is nothing in the factual background to this proceeding, as demonstrated by the above analysis, to suggest it would be inappropriate for the Panel to find, given the prima facie case made out by the Complainant, that the Respondent lacks rights or legitimate interests in the Domain Name. In the circumstances, the Panel finds that paragraph 4(a)(ii) of the Policy has been established.
C. Registered and Used in Bad Faith
It is extremely likely, particularly given the use made of the Domain Name by the Respondent, that it must have been aware of the Complainant’s ODEON mark at the time of registration.
One way a complainant may demonstrate bad faith registration and use, is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. Given that these appear to be the circumstances in the present case, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <odeonlive.com> be transferred to the Complainant.
Dated: June 20, 2012