WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Academy of Motion Picture Arts and Sciences v. Chego Nado
Case No. D2003-0541
1. The Parties
The complainant is Academy of Motion Picture Arts and Sciences, c/o Scott Miller, Beverly Hills, California, United States of America, represented by Quinn Emanuel Urquhart Oliver & Hedges, LLP, United States of America.
The respondent is Chego Nado, Sosi, Turkey.
2. The Domain Name and Registrar
The disputed domain name <porno-oscar.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 10, 2003. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 July 21, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2003. The respondent did not submit any response. Accordingly, the Center notified the respondentís default on August 14, 2003.
The Center appointed George R. F. Souter as the Sole Panelist in this matter on August 14, 2003. 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, Academy of Motion Picture Arts and Sciences, was founded in 1927, for the purposes, inter alia, of advancing motion picture arts and sciences and promoting cultural, educational, and technological progress by fostering cooperation among the motion picture industryís creative leadership. As a constant incentive for members of the industry to strive to achieve those purposes, and as a means of recognizing persons who make outstanding contributions to their respective fields, the complainant holds an annual "Academy Awards" ceremony where it confers an "Award of Merit," known to the public as an "Oscar," in over twenty categories of achievement. The Academy Awards ceremony, also known as "The Oscars" is seen in either a live or delayed broadcast in over 100 countries, including Turkey (where the respondent is located).
The complainant has provided the panel with copy certificates of registration of the trademark OSCARS in the USA, and OSCAR in the USA and Turkey. The Turkish registration of OSCAR, No 173152, which dates from 1996, is registered in respect (in English translation) of "Entertainment services including the presentation of awards for meritorious achievement."
5. Partiesí Contentions
The complainant contends that the domain name at issue is confusingly similar to the complainantís well known OSCAR and OSCARS marks, that the respondent has no rights or legitimate interests in the domain name, and that the domain name was registered and used in bad faith.
In particular, the complainant alleges that the respondent is not "making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue according to paragraph 4(c)(iii) of the Policy," by drawing Internet users to a pornographic website for commercial gain. The complainant provided evidence to the panel of such usage. The complainant also alleges that this usage constitutes evidence of registration and use in bad faith.
The respondent did not reply to the complainantís contentions.
6. Discussion and Findings
Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy lists three tests which a complainant must satisfy in order to succeed:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
(i) Identical or Confusingly Similar
The question of whether the mere addition of a common word to a trademark (in this case the word "porno," plus a non-distinctive hyphen, which can be disregarded) is sufficient to avoid a finding of confusing similarity has been raised a number of times in previous cases, and, generally, the finding has been that it is not. In Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102, for example, the panel decided that the mere addition of "girls" to the NOKIA trademark did not avoid a finding of confusingly similar. In this case, the panel takes the view that the addition of "porno" (plus hyphen) to the trademark merely suggests that the products/services to be expected are those of the trademark ownerís "Oscar" type or class, but with a pornographic context. The panel finds that there is confusing similarity in this case.
In this connection, and also in connection with tests (ii) and (iii) below, the panel is aware that the term "Oscar," deriving from the complainantís activities, is well known to such an extent that it is defined in Websterís Encyclopedic Unabridged Dictionary of the English Language (ISBN 0-517-88781-X, at page 1018), as follows: "one of a group of statuettes awarded annually by the Academy of Motion Picture Arts and Sciences for professional achievements in motion picture production and performance (said to have been named in 1931 by an employee of the Academy of Motion Picture Arts and Sciences after her uncle)."
(ii) Rights or Legitimate Interests
The respondent has not taken the opportunity accorded to him under these proceedings of justifying its adoption of the domain name. There appear to be no circumstances attached to the respondentís name or address which might lead to any suspicion of legitimate interest. In these circumstances, the panel decides that the complainant, whose Complaint was transmitted to the respondent under this procedure, has satisfied the second test. In particular, the panel accepts the complainantís contention that the respondent has no rights or legitimate interests in the domain name, mentioned above, in the specifics of this case.
(iii) Registered and Used in Bad Faith
In Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102, the panel found that "[t]he trademark NOKIA is currently enjoying such fame internationally that it cannot reasonably be argued that respondent Ö could have been unaware of the trademark rights vested therein when registering the domain name." The panel approves that decision, mutatis mutandis, in the circumstances of the present case, and finds that the domain name at issue was registered in bad faith.
The third test is, in reality, a dual test, requiring the panel to be satisfied both that the domain name has been registered in bad faith and used in bad faith.
AOL Time Warner Inc. v. John Zuccarini, WIPO Case No. D2002-0827, is an example of one of the many cases where use in bad faith has been found in the circumstances where a website operated under a deceptively confusing domain name has been used to direct Internet users to a pornographic website to the potential detriment of the complainant, as has been proved to the panelís satisfaction in this case, where the panel considers that the potential detriment to the complainantís reputation is acute. Accordingly, a finding that there has been use in bad faith in this case is inevitable, and the panel so finds.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the panel orders that the domain name, <porno-oscar.com>, be cancelled.
George R. F. Souter
Dated: August 24, 2003