WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MediaMation, Inc. v. Sharaih Romero, Romero Enterprises, Inc.

Case No. D2010-1973

1. The Parties

Complainant is MediaMation, Inc. of Torrance, California, United States of America, represented by Dawna Houston, United States of America.

Respondent is Sharaih Romero, Romero Enterprises, Inc. of Bakersfield, California, United States of America.

2. The Domain Name and Registrar

The Disputed Domain Name <mediamation.com> is registered with NameSecure L.L.C.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2010. On November 18, 2010, the Center transmitted by email to NameSecure L.L.C. a request for registrar verification in connection with the Disputed Domain Name. On November 18, 2010, NameSecure L.L.C. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on November 24, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 14, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 15, 2010.

The Center appointed Richard W. Page as the sole panelist in this matter on December 22, 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.

4. Factual Background

Complainant is an entertainment systems integrator who is engaged globally in designing and implementing multimedia solutions for complex interactive shows, rides, exhibits and theaters. Its products and services include show controls, audio/video and lighting systems and integration, automation, robotics, animation, motion control, motion simulators, custom show control software and hardware which has allowed Complainant to become a leader in its industry.

Its newest product offerings include Complainant’s X-4D theaters, and seating and mobile trailers, which include full motion control special effects seating (seat vibrators, front air and water blasts, seat ticklers, seat poppers, overhead environments (wind, rain, snow, bubbles, fog, aroma, lightening stores) and 5.1 surround sound. Complainant’s Virtual Foundation^TM is the newest fad in retail venues showcasing animated dancing fountain shows custom programmed to music.

Complainant has been operating under the common law trademark “Mediamation” (the “MEDIAMATION Mark”) since its founding in 1991, with incorporation in 1993. Complainant has supplied materials dating from 1993 using the MEDIAMATION Mark.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Disputed Domain Name is identical to the MEDIAMATION Mark and that the Respondent wrongfully chose Complainant’s trademark as a domain name. Complainant further contends that Respondent is not in any way associated with Complainant, that Respondent has never made any legitimate offering of goods or services under the Disputed Domain Name, that Respondent has never been commonly known as “MediaMation,” and that Respondent is not making any legitimate noncommercial or fair use of the Disputed Domain Name.

Complainant contends that Respondent is not using or preparing to use the “www.mediamation.com” website in connection with a bona fide offering of goods and services. Further, that Respondent has never been commonly known by the Disputed Domain Name.

Complainant contends that the registration of the Disputed Domain Name infringes upon or otherwise violates the rights of Complainant; that Respondent is using the Disputed Domain Name intentionally to attract Internet users by creating a likelihood of confusion with Complainant’s MEDIAMATION Mark as the source, sponsorship, affiliation or endorsement of the website for commercial gain.

Complainant further contends that Respondent’s conduct is designed to disrupt and to harm Complainant’s business by diverting unsuspecting Internet users to Respondent’s and other’s websites and has the effect of tarnishing Complainant’s MEDIAMATION Mark. Complainant has provided printouts of the website associated with “www.mediamation.com” and argues that the format suggests Respondent obtains “click-through” revenues from the website, which Complainant argues is an improper use of Complainant’s MEDIAMATION Mark and could further damage the reputation of Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”

Because both Complainant and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether Complainant has met its burden as established by paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, WIPO Case No. D2000-1772 (April 10, 2001), footnote 3.

A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System S.a.S., NAF Claim No. FA 0094637; David G. Cook v. This Domain is For Sale, NAF Claim No. FA0094957 and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge, NAF Claim No. FA0094925.

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the Policy are met.

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

(i) that the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,

(ii) that 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.

The Complaint contains the most basic allegations regarding the essential elements of the claim with supporting documentation attached in a series of annexes. The evidentiary basis for this Complaint is weak. However, Respondent has chosen not to contest any of the allegations or supporting factual record. The Panel has reviewed the annexes to confirm or infer the existence of the essential elements in these claims.

A. Identical or Confusingly Similar

Complainant has no registration of the MEDIAMATION Mark. Instead it relies on its assertion of a common law trademark. The evidence supporting a common law trademark is thin because it relies upon a corporate name registration and invoices sent under a heading of MediaMation. However, Respondent has chosen not to contest the allegations. Therefore, for purposes of this proceeding, the Panel finds that Complainant has sufficient common law trademark rights to sustain the Complaint.

Pursuant to the Policy paragraph 4(a)(i), Complainant further contends that the Disputed Domain Name is identical with and confusingly similar to the MEDIAMATION Mark.

As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (May 29, 2000) (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark.

The Panel finds that the Disputed Domain Name is identical to the MEDIAMATION Mark with the exception of the “.com” gTLD which is not distinctive.

Therefore, the Panel finds that the Disputed Domain Name is identical with and confusingly similar to the MEDIAMATION Mark pursuant to the Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) requires Complainant to prove that Respondent has no rights to or legitimate interests in the Disputed Domain Name. Once a complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to respondent to rebut the showing. The burden of proof, however, remains with complainant to prove each of the three elements of paragraph 4(a) of the Policy. See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000).

The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are 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 or service mark at issue.

Complainant contends that Respondent is not using or preparing to use the “www.mediamation.com” website in connection with a bona fide offering of goods and services. Further, that Respondent has never been commonly known by the Disputed Domain Name. Complainant contends that the registration of the Disputed Domain Name infringes upon or otherwise violates the rights of Complainant; that Respondent is using the Disputed Domain Name intentionally to attract Internet users by creating a likelihood of confusion with Complainant’s MEDIAMATION Mark as the source, sponsorship, affiliation or endorsement of the website for commercial gain.

Complainant has sustained its burden of coming forward with some proof that Respondent lacks rights to or legitimate interests in the Disputed Domain Name. Respondent has chosen not to contest these allegations. The file contains no evidence that the use of the Disputed Domain Name meets the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c).

Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Complainant must show that the Disputed Domain Name has been registered and is being used in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names.

Complainant has provided printouts of the website “www.mediamation.com” to which the Disputed Domain Name resolves and argues that the website’s format strongly suggests that Respondent obtains “click-through” revenues from the website which implies improper use of the Disputed Domain Name to profit from Complainant’s MEDIAMATION Mark and could further damage the reputation of Complainant.

Click-through revenues are not always in bad faith. The circumstances of the use of the Disputed Domain Name will be the determining factor. In this proceeding, Complainant has alleged that that Respondent is using the Disputed Domain Name intentionally to attract Internet users by creating a likelihood of confusion with Complainant’s MEDIAMATION Mark as the source, sponsorship, affiliation or endorsement of the website for commercial gain. These are the necessary elements of bad faith under the Policy, paragraph 4(b)(iv). Again the evidentiary support for the allegation is thin, but Respondent has chosen not to contest the allegations in this Complaint.

Therefore, the Panel finds that Complainant’s submissions are sufficient to establish the necessary element of bad faith under the Policy paragraph 4(b)(iv). Hence showing that the Disputed Domain Name has been registered and is being used in bad faith in violation of the Policy paragraph 4(a)(iii).

7. Decision

For all 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 <mediamation.com> be transferred to the Complainant.

Richard W. Page
Sole Panelist
Dated: January 7, 2011