WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Miramax Film NY, LLC v. Todt Nicolas

Case No. D2016-0299

1. The Parties

The Complainant is Miramax Film NY, LLC of Santa Monica, California, United States of America, represented by CSC Digital Brand Services AB of Sweden.

The Respondent is Todt Nicolas of Quebec, Canada.

2. The Domain Name and Registrar

The disputed domain name <miramax-films.com> is registered with 1&1 Internet AG (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2016. On February 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 17, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 9, 2016. The Respondent sent an informal email communication to the Center on March 5, 2016.

The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on March 22, 2016. 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 the parent company of Miramax, LLC, a film and television studio headquartered in Santa Monica, California. Miramax was founded in 1979 and has enjoyed considerable success, with its library of more than 700 titles having received 278 nominations for Academy Awards and won 68.

The Complainant has offered at least the following entertainment products and services under its MIRAMAX trade mark since 1983: fiction and non-fiction books and screenplays; prerecorded motion picture films; television programmes and music; production and distribution of motion picture and television programmes; music production; websites featuring film reference materials amongst other things.

The Complainant owns several registered trade marks around the world for MIRAMAX (the “Trade Mark”). The Complainant relies, in particular, on the following registrations, all of which are owned by Miramax, LLC:

- Canadian trade mark No. TMA631516, registered on January 31, 2005 for goods and services including, but not limited to, motion picture films and entertainment, sporting and cultural activities;

- US trade mark No. 2423329, registered on January 23, 2001 in class 16;

- US trade mark No. 2713215, registered on May 6, 2003 in classes 9 and 41;

- European Union trade mark No. 1794361, registered on February 12, 2004 in classes 9, 16, 35, 38, 41 and 42; and

- European Union trade mark No. 12741121, registered on August 22, 2014 in classes 9, 14, 16, 18, 21, 25, 28 and 41.

(together, the “Registrations”).

The Respondent appears to be an individual named Todt Nicolas, resident in Quebec, Canada.

The disputed domain name was registered on May 31, 2015. At the time at which the Complaint was filed, the disputed domain name resolved to the Complainant’s website at “www.miramax.com”. However, at the time of writing this Decision, the disputed domain name resolves to a website at “www.403forbidden.com” which appears to be a parking page which contains pay-per-click links.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions are as follows:

Identical or confusingly similar

The disputed domain name is confusingly similar to the Trade Mark. Top level domains should not be taken into account when determining confusingly similarity and the addition of a hyphen and a word which is descriptive of the complainant’s business to the Trade Mark to form the disputed domain name does not diminish the confusing similarity. Further, the use being made of the disputed domain name to re-direct users to the Complainant’s website as part of a phishing operation suggests that the Respondent intended the disputed domain name to be confusingly similar to the Trade Mark.

Rights or Legitimate Interests

The grant of the Complainant’s Registrations by the Canadian Intellectual Property Office, the United States Patent and Trade Mark Office and the Office for Harmonisation in the Internal Market (now the European Union Intellectual Property Office) respectively, is prima facie evidence of the validity of those Registrations. The Respondent registered the disputed domain name after each of the trade marks relied on had become registered and significantly after the Complainant’s first use of the Trade Mark in 1983.

The Respondent is not sponsored by, or affiliated to, the Complainant and the Complainant has not given the Respondent permission to use the Trade Mark.

The Respondent is not commonly known by the disputed domain name, so the Respondent cannot be regarded as having acquired rights or legitimate interests in the disputed domain name.

The Respondent was, at the time the Complaint was filed, using the disputed domain name to send emails impersonating the Complainant in an attempt to form partnerships with the recipients for monetary gain. Further, the disputed domain name resolved to the Complainant’s own website in order to take advantage of the trust and goodwill that the Complainant has generated to scam unsuspecting Internet users. These uses do not constitute a bona fide offering of goods or services.

Registration and Use in Bad Faith

The Respondent has deliberately created a domain name which is confusingly similar to the Trade Mark. Given how well known the Trade Mark is, it is not possible that the Respondent was not familiar with the Complainant’s business. The Respondent’s knowledge of the Complainant’s business is confirmed by the disputed domain name being redirected to the Complainant’s website. Further, the Trade Mark is so closely associated with the Complainant that any use by a third party implies bad faith.

The Respondent has used the disputed domain name to masquerade as the Complainant in order to operate a phishing scheme. In particular, any Internet user who mistakenly visits the disputed domain name and is deceived into believing that it is associated with the Complainant, may supply personal details, such as financial information to the Respondent. The Respondent has attempted to pass off the Complainant’s website as its own as part of its phishing scheme. This constitutes bad faith registration and use of the disputed domain name.

B. Respondent

The Respondent did not file a formal reply in accordance with the provisions of paragraph 5(c) of the Rules, but he did send an email to the Center in reply to the Notification of commencement of administrative proceedings sent by email. It is worth setting out the full content of the email:

“Dear,
When we ordered they did we were not therefore refuse we thought it was free to right, therefore we do not use more
Sincerely,
Mr Todt”

Although the meaning of this email is not entirely clear, it is possible to discern that: (i) the Respondent thought that, as he was able to purchase and register the disputed domain name, he was entitled to use it as he saw fit; and (ii) in the light of the Complaint, the Respondent will no longer use the disputed domain name. This may explain why, since the Complaint was filed, the disputed domain name no longer resolves to the Complainant’s website.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, for the Complainant to succeed in obtaining its requested order for transfer of the disputed domain name, it must prove each of the following:

(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith by the Respondent.

A. Identical or Confusingly Similar

The Complainant has established, through its ownership of the Registrations, that it has rights in the mark MIRAMAX.

Determination of the identity or confusing similarity necessitates a comparison between the disputed domain name and the Trade Mark. The disputed domain name is comprised of three elements, in the following order: (i) the Trade Mark; (ii) the suffix “-films”; and (iii) the generic Top Level Document (“gTLD”) “.com”.

The UDRP panel in Dr. Ing h.c.F. Porsche AG v. Vadiliy Terkin, WIPO Case No. D2003-0888, noted that “…a domain name that wholly incorporates a Complainant’s registered mark may be sufficient to establish confusing similarity for the purposes of the UDRP”. In addition, it is well established that: (i) the presence of the gTLD “.com” may be disregarded when comparing a domain name to a trade mark; and (ii) the addition of a descriptive term which alludes to the Complainant’s business is not sufficient to distinguish a domain name from a trade mark. Accordingly, the inclusion of the gTLD “.com” and the suffix “-films” in the disputed domain name is insufficient to distinguish the disputed domain name from the Trade Mark.

The Panel finds that the disputed domain name is confusingly similar to the Trade Mark.

B. Rights or Legitimate Interests

The Complainant contends that:

(i) the Respondent has never been authorised by the Complainant to register a domain name which incorporates the Trade Mark;

(ii) the Respondent has never been authorised by the Complainant to use the Trade Mark in any way whatsoever;

(iii) the Respondent has not made any use of the disputed domain name in a way that establishes a legitimate interest arising from a bona fide offering of goods or services. On the contrary, the Complainant contends that the disputed domain name has been used as part of a phishing scam;

(iv) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name; and

(vi) the Respondent is not commonly known by the disputed domain name.

The Panel is satisfied that the Complainant has made out a prima facie case against the Respondent, which requires rebuttal. Although the Respondent has filed an informal reply to the Complaint, that email communication does not particularise any rights or legitimate interests that the Respondent may have in the disputed domain name. In addition, there are no obvious reasons as to how or why the Respondent could be said to have any rights or legitimate interests in the disputed domain name.

The Panel finds that the Respondent has no such rights or legitimate interests.

C. Registered and Used in Bad Faith

As set out above, the disputed domain name originally resolved to the Complainant’s own website at “www.miramax.com”. At some point in time between the filing on the Complaint on February 12, 2016, and the date of this decision, the disputed domain name stopped resolving to that website and instead started to resolve to the website at “www.403forbidden.com”. Each of these uses of the disputed domain name will be addressed in turn.

“www.miramax.com”

The Respondent registered the disputed domain name in May 2015, more than 30 years after the Complainant first started to use the Trade Mark. The Trade Mark is the key brand of the Complainant and is also its name; the Trade Mark is synonymous with the Complainant. Accordingly, the use of the Trade Mark as part of a domain name by someone with no connection to the Complainant implies “opportunistic bad faith” (Parfums Christian Dior v. Javier Garcia Quintas, WIPO Case No. D2000-0226).

The Complainant has an extensive presence on the Internet and a worldwide reputation. The Respondent’s decision to add a word to the Trade Mark to create the disputed domain name which describes the Complainant’s core business and to make the disputed domain name resolve to the Complainant’s own website, strongly indicate that the Respondent had actual knowledge of the Complainant, its Trade Mark and its business. Accordingly, at the time of registration of the disputed domain name, the Respondent knew, or at least should have known, of the existence of the Trade Mark. Registration of the disputed domain name which contains the Complainant’s well-known Trade Mark constitutes bad faith.

The Respondent was using the disputed domain name to resolve to the Complainant’s website as part of a phishing operation which also involved sending emails to Internet users pretending to be the Complainant in an attempt to solicit sensitive personal and financial information. This constitutes a bad faith use of the disputed domain name (see Wells Fargo & Co v Maniac State, NAF Claim No. 12000608239; Juno Online Servs v Nelson, NAF Claim No. 0402000241972; Monsanto Company v Decepticons, NAF Claim No. 0110000101536).

“www.403forbidden.com”

Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which indicate that the Respondent may have registered and used the disputed domain name in bad faith. In particular, paragraph 4(b)(iv) of the Policy states that: “by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [its] web site or location or of a product or service on [its] web site or location.”

The Panel considers that the circumstances described in paragraph 4(b)(iv) of the Policy apply in this case and indicate that the Respondent has acted in bad faith. The Respondent’s bad faith conduct is demonstrated by the fact that the disputed domain name now resolves to a page which features a number of links. The Panel assumes that the Respondent benefits from click-through advertising revenue each time an Internet user clicks on one of the links displayed. Further, in Nine West Development Corporation v. Registrant [1168318] / Moniker Privacy Services / Registrant [1260512]: Domain Administrator, WIPO Case No. D2008-0154, it was held that the diversion of Internet users in order to obtain click-through commission is an indication of bad faith.

The Panel finds that the disputed domain name has been registered and is being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <miramax-films.com> be transferred to the Complainant.

Charters Macdonald-Brown
Sole Panelist
Date: April 5, 2016