WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Red.com, Inc. v. Brian Schoenholtz, Trio Films / Cine Red

Case No. D2011-1063

1. The Parties

Complainant is Red.com, Inc. of Lake Forest, California, United States of America, represented by Weeks, Kaufman, Nelson & Johnson, United States of America.

Respondent is Brian Schoenholtz, Trio Films / CineRed, of Reeds Spring, Missouri, United States of America and Playa Bejuco, Puntarenas Province, Costa Rica.

2. The Domain Name and Registrar

The disputed domain name <cineredcr.com> is registered with Melbourne IT Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2011. On June 23, 2011, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the disputed domain name. On June 24, 2011, Melbourne IT Ltd transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the disputed domain name. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on June 30, 2011. The Center verified that the Complaint together with the amended 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 July 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2011. The Response was filed with the Center on July 9, 2011.

The Center appointed Mark Partridge as the sole panelist in this matter on July 19, 2011. 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 Red.com, Inc. develops and manufactures professional cameras and accessories. Complainant owns the following United States (“U.S.”) federal trademark registrations:

RED (Reg. No. 3,703,504, registered October 27, 2009) for camera lenses;

RED (Reg. No. 3,732,638, registered December 29, 2009) for electronic data storage devices;

RED (Reg. No. 3,800,535, registered June 8, 2009) for batteries;

RED (Reg. No. 3,804,193, registered June 15, 2010) for electronic input / output modules for digital camera data transmission;

RED (Reg. No. 3,832,666, registered August 10, 2010) for electronic digital image sensors for use with digital cameras;

RED DIGITAL CINEMA (Reg. No. 3,765,064, registered March 23, 2010) for cameras;

REDCINE-X (Reg. No. 3,923,788, registered February 22, 2011) for digital cinema camera systems and accessories comprised of cameras, camera lenses, flash memory cards, electronic memories, video monitors and flat panel display screens, all for use in the creation, storage, delivery, manipulation, recording, playback or viewing of video, music, graphics, photos, audio, text, and multimedia data; cinematographic projectors; photographic projectors; slide projectors; exposed camera film; photographic slide transparencies; audio and visual educational and teaching apparatus and instruments, namely, computer hardware and computer software programs for the integration of text, audio, graphics, still image and moving pictures into an interactive delivery for multimedia applications, computer white boards, video projectors and video display monitors. The first use in commerce was July 27, 2009; and

REDCINE (Reg. No. 3,628,966, registered May 26, 2009) for computer software programs for the integration of text, audio, graphics, still image and moving pictures into an interactive delivery for multimedia applications. The first use in commerce was November 14, 2007.

Respondent, CineRed, also referred to as CineRed CR and owner of <cineredcr.com>, is a film production, logistics, and rental company located in Costa Rica. The company and its website have been in operation since 2007. The company is in the control of M. Araya and B. Schoenholtz.

Prior to this proceeding, the parties had engaged in dialogue over the content of the disputed domain name <cineredcr.com> and Respondent’s logo. Through these negotiations Respondent agreed to change its logo, the content of, and include a disclaimer on the bottom of the webpage at the disputed domain name stating it is not affiliated or endorsed by Complainant. Respondent refused to transfer the disputed domain name to Complainant.

5. Parties’ Contentions

A. Complainant

Complainant asserts that the disputed domain name <cineredcr.com> is confusingly similar to its trademarks because the disputed domain name includes the entirety of its registered trademark for RED as well as the inverse of Complainant’s REDCINE trademark coupled with nothing more than the geographic descriptor “cr” for Costa Rica where Respondent is based.

Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name <cineredcr.com> for three reasons: (1) Respondent has no rights the RED trademark, (2) Respondent is not commonly known by the disputed domain name, and (3) there is no evidence that Respondent is making a legitimate non-commercial or fair use of disputed domain name <cineredcr.com> without the intent for commercial gain to misleadingly divert consumers or tarnish the trademarks at issue.

Complainant also contends that disputed domain name <cineredcr.com> was registered and is being used in bad faith because Respondent is using, and continues to use, Complaint’s trademarks in connection with the cinema industry. Complaint asserts that Respondent has registered and continues to use its trademarks to trade on the enormously successful goodwill of Complainant.

B. Respondent

Respondent contends that the disputed domain name <cineredcr.com> is not confusingly similar because in all of Complainant’s trademarks “red” always precedes “cine”.

Respondent also contends it has been operating as, and generating revenue, under the name “CineRed” since 2007, prior to Complainant’s trademark registrations. Respondent maintains that the disputed domain name <cineredcr.com> was registered in the normal course of business and not with any intent to interfere with Complainant’s operations or its trademarks. It also claims that has USD 1.5 million dollars worth of equipment for its business.

Respondent claims its use of the disputed domain name is not in bad faith because the company has continually operated a legitimate business since 2007.

6. Discussion and Findings

To obtain relief under the Uniform Domain Name Dispute Resolution Policy, paragraph 4(a) of the Policy requires the complainant to prove each of the following:

(i) that the disputed domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

(iii) that the disputed domain name has been registered and used in bad faith

A. Identical or Confusingly Similar

It is unclear to the Panel whether Complainant finds only its RED trademark confusingly similar to the disputed domain name, or whether it is also relying on its trademarks in RED DIGITAL CINEMA, REDCINE, and REDCINE-X. The Complaint itself is inconsistent. Paragraph 13(A) of the Complaint lists several of Complainant’s trademarks, but Paragraph 13(B) refers to “the Red trademark.” And in an email included in the record (see Annex 3 to the Complaint) Complainant informed Respondent that <cineredcr.com> was impermissibly using RED without mention of any other of its trademarks. The Response focuses on REDCINE and REDCINE-X. In spite of this inconsistency, the analysis will consider all Complaint’s. trademarks.

It is the consensus view among Panelists that a finding of confusing similarity between a trademark and a domain name is not necessarily refuted by the fact that the domain name contains the word elements of the trademark in inverse order. See Official Site Hotel Limited. v. 1001 Web Promotions, WIPO Case No. D2006-0322.

Moreover, prior UDRP decisions have found that geographical additions, like the “cr” in <cineredcr.com> do not alter the underlying meaning of a domain name so as to avoid confusion. See Four Seasons Hotels Ltd. v. Daniel Kirchhof / Unister GmbH, WIPO Case No. D2011-0948.

Nevertheless, these principles are not absolute and the key issue for confusing similarity remains whether the mark and name create an overall commercial impression that is likely cause confusion, mistake or deception.

With these principles in mind, it remains a close question whether REDCINE and REDCINE-X are confusingly similar to <cineredcr.com>. Nevertheless, based on our findings below, this question need not be determined in this proceeding. Because Respondent has a legitimate interest in the domain name and has not registered or used it in bad faith, the question of confusingly similar does not need to be decided here.

B. Rights or Legitimate Interests

Under the Policy, rights or legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Policy, paragraph 4(c). Complainant bears the burden of showing that Respondent lacks rights or legitimate use. American Eyewear, Inc. v. Thralow, Inc., WIPO Case No. D2001-0991.

It is appears from the record that Respondent has used the disputed domain name in connection with a bona fide offering of services in Costa Rica. Respondent has continuously used CineRed and CineRed CR since 2007, which is now used as its domain name. Respondent claims the disputed domain name was registered to continue normal business and make its services known online. A copy of the web site included in the record shows that Respondent has continually conducted and solicited its services in Costa Rica.

For these reasons, Complainant has not satisfied its burden on this element of its claim.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, bad faith registration and use can be found when the registrant seeks to profit from the sale of a domain name in which it has no legitimate interests; or if the respondent intentionally attempted to attract for commercial gain users to its website by creating a likelihood of confusion with complainant’s mark.

The record shows that CineRed was created in Costa Rica, July of 2007, several months before the first use of REDCINE by Complainant. Complainant has no registrations in Costa Rica. Even if Respondent knew of Complainant’s trademark rights in the U.S., it does not necessarily mean the domain name was registered in bad faith. See Drake Bliss v. Cyberline Enterprises, WIPO Case No. D2001-0718. It is possible to adopt a domain name that is similar to another’s name in good faith and with the belief that it would not be an infringement of another’s rights. See also UMB Financial Corporation v. Cynthia Galant, WIPO Case No. 2010-1855.

On the contrary, the record supports a finding of Respondent’s good faith registration and use. Respondent offers actual services that do not compete with Complainant’s business. Respondent attempted to register <cinered.com>, the actual name of its company, but found it was taken by another party; the disputed domain name <cineredcr.com> was the next closest domain name available. Moreover, Respondent never tried to sell the domain name for profit. Rather, Respondent agreed to make changes proposed by Complainant to differentiate the web sites, and include a disclaimer at Complainant’s demand. The only condition Respondent did not concede was to transfer the disputed domain name.

The record does not support the claim that Respondent attempted to attract commercial gain by creating confusion. The companies are not direct competitors. The fact that both companies exist in the broader film or cinema industry does not necessarily create a likelihood of confusion. See Checkpoint Systems Inc. v. Check Point Software Technologies Inc.,104 F. Supp. 2d 427, 467-68 (D. N.J. 2000) aff’d 269 F.3d 270 (3d Cir. 2001) (discussing similar names in the context of broader industry do not necessarily infringe). Complainant develops and manufactures high-end cinema cameras and accessories. Respondent, on the other hand, rents production equipment for film projects in Costa Rica; they do not offer RED cameras, but they will obtain them at the request of a client. Given Respondent’s use as a legitimate film production, logistics, and rental company in Costa Rica since 2007, Complainant has not shown Respondent operated in bad faith.

It should be noted that the use of a disclaimer on a web site does not clear a respondent of bad faith. A disclaimer may be ignored or misunderstood by Internet users, and it does nothing to dispel initial interest confusion that is inevitable from a respondent’s actions. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847 (citing Brookfield Commons Inc. v. West Coast Entm’t Corp., 174 F.3d 1036 (9th Cir. 1999)). Yet the disclaimer here was added at the request of Complainant, which indicates Respondent’s good faith in use.

On the record presented, it appears more likely than not that Respondent registered and used the disputed domain name in good faith based on its prior use of the name in Costa Rica, and not for the purpose of cybersqatting in violation of the Policy.

7. Decision

For the foregoing reasons, the Complaint is denied.

Mark Partridge
Sole Panelist
Dated: August 18, 2011