WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cinemark USA, Inc. v. PERBANY SA

Case No. D2011-2045

1. The Parties

Complainant is Cinemark USA, Inc. of Plano, Texas, United States of America (“U.S.”), represented by Mitrani, Caballero, Rosso Alba, Francia, Ojam & Ruiz Moreno Abogados, Argentina.

Respondent is PERBANY SA of Montevideo, Uruguay.

2. The Domain Name and Registrar

The disputed domain name <cinemaki.com> is registered with GoDaddy.com, Inc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2011. On November 21, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 21, 2011, the Registrar 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.

The Center verified that 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 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 13, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 15, 2011.

The Center appointed Ross Carson as the sole panelist in this matter on December 28, 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 is a motion picture exhibitor with theaters in the U.S., United Kingdom (“U.K.”), Brazil, Mexico, Chile, Columbia, Argentina, Peru, Ecuador, Honduras, El Salvador, Nicaragua, Costa Rica, Panama and Guatemala and Taiwan Province of China. Twenty three percent of its screens are in Latin America.

Complainant is the second largest film exhibitor in the Americas with 430 theaters and 4,945 screens. In terms of attendance, Complainant is the leader in film attendance in the Americas with over 241.2 million persons attending its theaters in 2010.

According to Motion Picture Association of America, total international box office revenues in the Americas for film exhibition was USD 21.2 billion in the year ending December 31, 2010. According to Complainant’s financial statements Complainant’s international box office revenues in the Americas was USD 2.1 billion for the financial period ending December 31, 2010.

Motion Pictures Association of America statistics show that Latin America film exhibitors box office revenues for the period ending December 31, 2010 were USD 2.1 billion. Complainant’s revenues from motion picture exhibitions in Latin America in the same period was USD 564.2 million or 26% of Complainant’s total revenue in 2010. Complainant’s percentage of box office revenues of film exhibitors in Latin America for the year ending December 31, 2010 was 22.2 % of the total Latin America film exhibitors’ revenue.

Complainant is the registered owner of the trademark CINEMARK in Argentina, Registration No. 2007161 registered March 2, 2005; Brazil, Registration No. 822122685 registered March 30, 2004; Chile, Registration No. 672902 registered September 9, 2003; Colombia, Registration No. 225783 registered December 22, 1999; Peru, Registration No. 3879 registered March 28, 1995 and renewed on January 18, 2005; U.K., Registration No. 2178371 registered July 2, 1999 and renewed on December 9, 2008; U.S., Registration No. 1660126 registered October 8, 1991 and renewed on October 21, 2010. The trademark registrations for the trademark CINEMARK listed above are the earliest dated registrations for CINEMARK owned by Complainant who also owns numerous other trademark registrations for or including CINEMARK in most of the above noted countries. The CINEMARK trademarks are registered in relation to movie theater services in International Class 41 among other goods and services.

Complainant is also the registrant of numerous domain names incorporating CINEMARK including: <cinemark.com> registered July 12, 1995; <cinemark.com.ar> registered November 9, 2009; <cinemark.com.br> registered June 18, 1997; <cinemark.cl> registered March 10, 2008; <cinemark.com.co> registered December 4, 2001; <cinemark.ec> registered June 3, 1999; and <cinemark.com.mx> registered September 30, 1998.

Respondent is a company based in Montevideo, Uruguay, which owns a range of movie related websites. The websites display the titles and material relating to current leading films being shown in various Latin American countries, the cities in which the films are being shown, the theaters in the cities which are showing the films and the times that the shows commence during the days and evenings. The websites include additional material concerning actors appearing in the films, etc. The disputed domain name was registered on March 31, 2008.

5. Parties’ Contentions

A. Complainant

A.1. Identical or Confusingly Similar

Complainant states that it is the owner of the renowned trademark CINEMARK registered and applied for in twenty territories around the world. Moreover aside from its registered trademarks Complainant is the owner of the <cinemark.com> domain name registration_. Complainant states that it owns several other Top Level domains which contain its trademark CINEMARK. Particulars of some of Complainant’s registered trademarks and domain names for or including its registered trademark CINEMARK are set out in Section 4 above.

Complainant submits that the disputed domain name <cinemaki.com> is almost identical to Complainant’s trademark CINEMARK and is therefore confusingly similar thereto.

Complainant submits that (i) the initial and central parts of the disputed domain name are identical; (ii) both have the same number of letters; (iii) the only difference between them is their respective ends (“Ki” and “rK”) that have the same strong and distinctive letter “K” on them and only one different letter (“i” and “r”) which is not enough to have rights over it and certainly not enough to avoid confusion in consumers. See, Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441, (“A domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive.”).

Complainant submits that the following rules for trademark comparison apply: (i) the confusion results from the first-sight impression as a whole impression arising out of the trademarks; (ii) whoever examines the resemblance must undertake to stand in the place of the potential consumer and take into account the nature of the products or services involved; and finally (iii) existing similarities_, but not differences between the trademarks must be taken into account.

Complainant submits that in this case the three rules apply as follows: (i) at first-sight impression the disputed domain name <cinemaki.com> is almost identical and therefore confusingly similar to Complainant’s trademark CINEMARK; (ii) by standing in the place of the potential consumer of products and services related to movie industry it is easy to understand the confusion in consumers; and finally (iii) there are more similarities than differences in this case and the only and insignificant difference is their respective ends (“Ki” and “rK”) that have the same strong and distinctive letter “K” in them and only one different letter (“i” and “r”).

Complainant further submits that Respondent has registered a domain name that is visually and phonetically similar to Complainant’s trademark. There is no reason why Respondent would choose a domain name so similar to Complainant’s trademark for a site which offers services similar to Complainant except to attract customers to Respondent’s site through potential confusion.

A.2. No Rights or Legitimate Interests in respect of the Domain Name

Complainant states that it does not have any relationship or association with Respondent and neither their former nor its subsidiary or affiliated companies have ever authorized Respondent nor otherwise given permission to apply for or use any domain name confusingly similar to Complainant’s trademark CINEMARK. Thus any use Respondent might put of any of confusingly similar term is illegitimate and infringes Complainant’s intellectual property rights and particularly Complainant’s trademarks.

Complainant further submits that the disputed domain name is used in the same field as Complainant’s trademarks and trade name (the movie industry) which were used registered and had become well known a long time before the registration of the disputed domain name.

Complainant states that the disputed domain name has been recently created on March 31, 2008, while the first use of Complainant’s trademarks and trade name CINEMARK began back in 1984. Complainant states that its trademark CINEMARK is indeed famous and Respondent knew of Complainant’s trademark at the time it registered the disputed domain name. Matias Alejo Garcia cofounder and CEO of Respondent and technical and administrative contact of the disputed domain name is Argentine. This year Complainant acquired ten theaters in Argentina representing 95 screens from Hoyts General Cinema South America Inc. Complainant is focused on strengthening its position in Latin America through acquisitions and organic growth. The theaters that Complainant acquired are primarily located in the greater Buenos Aires area among others. With this acquisition Complainant increased its presence in Argentina where cinema has such a rich tradition. Complainant has been successfully operating in Latin America since 1993 and this acquisition has raised its screen total in the region to more than 1250 screens. It is clear that Respondent knew about Complainant’s trademark when it registered the disputed domain name showing an explicit bad faith pattern of behavior.

Complainant states that Respondent registered and is using the disputed domain name in bad faith. This is shown by the election of the name which is confusingly similar to Complainant’s trademarks and by its use in the same field as Complainant’s trademarks_, being aware of its existence and similarity. Out of all of the potential derivations of letters Respondent could have chosen to create its domain name it chose one so similar to Complainant’s trademark that it cannot be inferred without benefit of explanation that it has a valid right or legitimate interest in the disputed domain name. By choosing and using the disputed domain name_, Respondent is using Complainant’s reputation prestige and the power to be known by millions of consumers. These qualities have been reached by Complainant with years of investment and hard work. Respondent could have chosen another term but in that case it should have acquired said reputation prestige and power by itself with years of investment and hard work; it is much easier to appropriate someone else’s. Moreover, it is not a coincidence that Respondent is using this term Cinemaki in all countries where Complainant has theaters and screens on_, and except for Venezuela_, Respondent is not using the term in countries in which Complainant does not have businesses. It is clear that Respondent’s intention is to use the term only in those countries where Complainant has already acquired reputation and prestige and only in those countries where consumers know Complainant’s businesses.

Complainant further submits that not only does the disputed domain name and its content confuse consumers that may surely think that Respondent is related with Complainant, but they also have another important and harmful effect: the disputed domain name causes Internet users to reach an unintended site which is an illegal practice called typosquatting. Typosquatting is the intentional registration of a domain name (and in this case accompanied with the use of a trademark) that is similar to a distinctive or famous mark causing an Internet user who makes a slight spelling or typing error to reach an unintended site and finally confusing consumers as to the relation between the original trademark (in this case Complainant’s trademark) and the similar site (in this case the disputed domain name’s site).

Complainant states that although both websites provide some different services, similarities between the two are shown. Both websites provide search information_' and several services related to the movie industry.

Complainant states that Respondent is not using the disputed domain name or name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. The Complainant contends that it is clearly not a bona fide behavior to take advantage of all benefits that a well-known trademark has, such as Complainant’s trademarks, by trying to attract consumers of said well-known trademark and gaining users of the web site by generating a clear confusion in consumers.

A.3. Registration in Bad Faith

Complainant states that its registered trademarks for CINEMARK were registered and widely used in Latin America and had become well known in the movie theater business long time before the registration of the disputed domain name <cinemaki.com> was registered on March 31, 2008. Matias Alejo Garcia cofounder and CEO of Respondent and technical and administrative contact of the disputed domain name is Argentinian. Respondent must have been aware of Complainant’s reputation as a leading exhibitor of movies in Latin America as Respondent’s websites includes information on movies appearing in all the countries in Latin America in which Complainant operates movie theaters.

A.4. Use in Bad Faith

Complainant submits that Respondent registered the disputed domain name which is almost identical and therefore confusingly similar to Complainant’s trademarks and trade name except for a slight difference in the end (“Ki” and “rK”) which have the same strong and distinctive letter “K” in them. Because of the close similarity between the disputed domain name and Complainant’s trademarks Internet users are likely to misspell the mark and reach Respondent’s web site or see the web site published and think that is related to Complainant, both effects of which are unfair for customers and for Complainant and put in risk commerce good practices.

Complainant submits that Respondent has prepared and used advertising material which closely resembles Complainant’s advertising material enhancing the misleading concept that Respondent is associated with or otherwise connected with Complainant. Complainant operates the most geographically diverse theater circuit in Latin America with over 137 theaters and 1,113 screens in 13 Latin American countries. Complainant’s website in Latin America associated with its domain name <cinemark.com> displays a series of national flags with the name of the country below the flag limited to the 13 Latin American countries in which Complainant currently operates movie theaters. Internet users can click on a flag to determine the location of Complainant’s theaters in each country. Respondent’s advertising material uses a circle with an identifiable part of a national flag with the country name below the flag to direct Internet users to movies and movie theaters in each of the Latin American countries represented by a flag.

Complainant further states that Respondent registered and is using the confusingly similar domain name in bad faith to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location, (Policy, paragraph 4(b)(iv)).

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

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

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

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

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

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

The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response may result in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following therefrom in the Complaint as true. Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.

Complainant has submitted a well-presented Complaint with a series of assertions concerning the intentions and behavior of Respondent. Complainant has established that it is the owner of numerous trademark registrations for the trademark CINEMARK in the U.S. and Latin America in relation to goods and services relating to promotion and operation of movie theaters and the exhibition of movies as described in section 4 above. Complainant’s CINEMARK trademarks were registered and extensively used and were well-known in the U.S. and Latin America long before the disputed domain name <cinemaki.com> was registered on March 31, 2008.

Complainant contends that the disputed domain name <cinemaki.com> is confusingly similar to Complainant’s registered trademarks for CINEMARK. Complainant contends that the following rules for determining confusing similarity apply: (i) the confusion results from the first-sight impression as a whole impression arising out of comparison of the disputed domain name and the trademark; (ii) whoever examines the resemblance must undertake to stand in the place of the potential consumer and take into account the nature of the products or services involved; and finally (iii) existing similarities but not differences between the trademarks must be taken into account.

Complainant further contends that in this case the three rules apply as follows: (i) at first-sight impression the disputed domain name <cinemaki.com> is almost identical and therefore confusingly similar to Complainant’s trademark CINEMARK; (ii) by standing in the place of the potential consumer of products and services related to the movie industry it is easy to understand the confusion in consumers; and finally (iii) there are more similarities than differences in this case and the only and insignificant difference is their respective ends (“Ki” and “rK”) that have the same strong and distinctive letter “K” in them and only one different letter (“i” and “r”). Complainant cites the decision in Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441, (“A domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive.”).

The Panel has reviewed the WIPO Overview of WIPO Panel Views On Selected UDRP Questions. Second Edition (“WIPO Overview, 2.0”), Section 1.2 to determine the test for confusing similarity which is summarized as follows : “The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms [regarding the latter see further paragraph 1.3 below] typically being being regarded as insufficient to prevent threshold internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string of in the domain name”.

Applying the above test the Panel is of the view that the relevant trademark CINEMARK is not generally recognizable as such either visually or aurally in the disputed domain name <cinemaki.com>. It is the Panel’s view that Complainant’s contention that existing similarities, but not differences between the trademark and the disputed domain name must be taken into account is not consistent with a straightforward visual or aural analysis to determine if the relevant trademark is generally recognizable in the disputed domain name. A trademark is not generally recognizable as such within the disputed domain name when letters in a domain name have to be deleted, added and transposed by mental effort to make the trademark recognizable.

In applying Complainant’s contended rules to its trademark CINEMARK and the disputed domain name <cinemaki.com>, Complainant contends there are more similarities than differences between its trademark and the disputed domain name and the only and insignificant differences is their respective ends (“Ki” and “rK”) that have a strong and distinctive letter “K” in them and only one different letter (“I” and “r”). Neither Complainant’s word mark registrations or design mark registrations for CINEMARK include a distinctive letter “K”. Complainant’s design mark registrations for “Cinemark” feature a distinctive “M” in the middle of “Cinemark” in which the base of the vertical members of the letter “M” extend horizontally forwardly and rearward under “cine” and “ark”. The disputed domain name <cinemaki.com> is necessarily comprised of small letters. The letter “k” is not distinctive in Complainant’s registered trademarks or in the disputed domain name as contended by Complainant. Furthermore the test applied by Complainant is not consistent with the threshold test for determining confusing similarity under Section 1.2 of WIPO Overview 2.0 discussed above.

The Panel has reviewed the Reuters case cited by Complainant. In that case the panel found that the domain names <wwwreuters.com> and <reutersnews.com> were confusing similar to the complainant’s trademark. The panel noted that the domain names incorporate the complainant’s trademark in its entirety among other factors. With respect to domain names <reters.com>, <ruters.com> and <reuers.com> the panel noted that the domain names differed from the complainant’s trademark by one letter. The panel believed the facts in the Reuters case are different from the facts in this case. previous cases are not of much assistance when a test of visual or aural comparison are applied in a subsequent case. The Panel noted the panel’s comment that: “A domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar where the trademark is highly distinctive.” While distinctiveness may be a factor to consider it cannot override the threshold test for confusing similarity discussed above. See, The Football Association Limited v. Websitebrokers Limited, WIPO Case No. D2001-0156, where the panel found that the domain name in dispute was not confusingly similar with complainant’s trademark even though the Football Association is a British Household name.

Applying the threshold test for confusingly similar reviewed above the Panel finds that the trademark CINEMARK is not generally recognizable as such either visually or orally in the disputed domain name <cinemaki.com>, the “.com” not being a part in the consideration.

The inclusion of the top level domain descriptor “.com” in the disputed domain name does not affect a finding of confusingly similarity or lack thereof. Other UDRP panels have repeatedly held that the specific top level of the domain name such as “.org”, “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

The Panel finds that Complainant has failed to prove that the disputed domain name <cinemaki.com> is confusingly similar to Complainant’s registered trademarks for CINEMARK under paragraph 4(a)(i) of the Policy. As Complainant has failed to establish its case under paragraph 4(a)(i) of the Policy, the Panel finds it unnecessary to proceed with consideration and reasons under paragraphs 4 (a) (ii) and (iii) of the Policy. Thus, the Panel need not address the arguments which Complainant has advanced on Respondent’s rights or legitimate interests and bad faith; the Panel’s above finding is without prejudice to any appreciation of those in a legal context.

7. Decision

For the foregoing reasons, the Complaint is denied.

Ross Carson
Sole Panelist
Dated: February 1, 2012