Complainant is Imax Corporation of Ontario, Canada, represented by Kilpatrick Stockton LLP, United States of America.
Respondent is Imaxcinemas.com c/o Nameview Inc. Whois Identity Shield/ “Imax Corporation” of St. Michael, Barbados.
The disputed domain name <imaxcinemas.com> is registered with Nameview, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center”) on February 9, 2010. On February 9, 2010, the Center transmitted by email to Nameview, Inc. a request for registrar verification in connection with the disputed domain name. On February 15, 2010, Nameview Inc. transmitted by email to the Center its verification response advising that the registrant and the contact details for the disputed domain name appear to match those of Complainant. The Center notified Complainant of the registrar verification response and Complainant confirmed that Complainant is not in actual control of the domain name at issue. 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 February 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 18, 2010.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on March 24, 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.
The trademark upon which the Complaint is based is IMAX. According to the documentary evidence and contentions submitted, Complainant owns a number of trademark registrations for the IMAX mark in different countries, including the United States Registrations Nos. 0942747, issued on September 12, 1972; 1283679, issued on June 26, 1984; 2121078, issued on December 16, 1997; 2270681, issued on August 17, 1999; and 2426984, issued on February 6, 2001, as well as for combinations of the word “IMAX”, for a variety of motion picture and theatre services.
According to the documentary evidence and contentions submitted, since 1969 Complainant has used the IMAX mark to identify its characteristic theatres, motion picture equipment, and related goods and services. Complainant currently operates directly or indirectly over 400 theatres in 44 countries throughout the world, and the IMAX brand is identifiable worldwide with Complainant's motion and theatre services.
According to the documentary evidence and contentions submitted, since at least January, 1998 Complainant has used the IMAX marks online at the Internet site located at “www.imax.com”.
Pursuant to the documentary evidence, the domain name <imaxcinemas.com> was registered with Nameview, Inc. on August 29, 2005.
Complainant argues that the disputed domain name is virtually identical to the IMAX mark because it adopts the IMAX mark exactly and in its entirety, differing only by adding a non-distinguishing generic term that describes the very services for which the IMAX mark is known.
Complainant further contends that Respondent does not have rights or legitimate interests regarding the disputed domain name because (i) in view of Complainant's IMAX trademark registrations having been issued long before Respondent registered the <imaxcinemas.com> domain name, Respondent is charged with constructive knowledge of them; and (ii) Complainant has found no evidence that Respondent has ever used (other than Respondent's domain name registration) the trademark or trade name <imaxcinemas.com> or been commonly known as “imaxcinemas.com” or anything similar.
Finally, Complainant contends that Respondent registered and uses the disputed domain name in bad faith because (i) Respondent, prior to its adoption and use of the domain name <imaxcinemas.com>, was aware that Complainant was the owner of the IMAX mark in view of the widespread and long-standing advertising and marketing of goods and services under the IMAX names and marks around the world, including on-line, (ii) Respondent is not making any legitimate noncommercial or fair use of the disputed domain name at issue, but is rather using the domain name at issue to operate a sponsored results, or “pay-per-click,” site to which it drives Internet traffic with the intent to derive profits, (iii) Respondent is intentionally seeking consumers who are searching for information about IMAX cinemas and is relying on consumer confusion to profit from the fact consumers will intuitively type in Complainant's mark, (iv) Respondent attempted to attract for commercial gain internet users to its site by creating a likelihood of confusion with the Complainant's IMAX mark as to source, sponsorship, affiliation, or endorsement of the Respondent's website, and (v) Respondent's homepage also offers to sell the disputed domain name by displaying an offer.
Respondent did not reply to Complainant's contentions.
When the Complaint was filed, the disputed domain name was registered in the name of Imaxcinemas.com, c/o Nameview Inc. Whois Identity Shield of St. Michael, Barbados. However, by the time the Center transmitted a request for registrar verification, the registrar Nameview, Inc. advised that the registrant and the contact details for the disputed domain name appear to match those of Complainant. The Center and the Panel verified by independent research that in the WhoIs Search Results provided by Internic, Inc. the registrant of the disputed domain name continues to be Imaxcinemas.com.
Complainant confirmed that Complainant is not in actual control of the disputed domain name. The Panel notes that a similar situation apparently occurred in prior WIPO UDRP cases involving the same registrar. See, e.g., FOSS A/S, FOSS NIRSystems INC v. fossnirsystems.com c/o Whois IDentity Shield /Admin, Domain, WIPO Case No. D2008-1256; Golden Gate Bridge, Highway and Transportation District v. Whois IDentity Shield / Golden Gate District / Administrator, Domain, WIPO Case No. D2009-0863; The Coca-Cola Company v. LIMCABOOKOFRECORDS.COM c/o Whois IDentity Shield / Administrator, Domain; “The Coca-Cola Company”, WIPO Case No. D2009-1120.
The Panel is satisfied that Respondent appears as registrant in Internic WhoIs Search Results, and concludes that the Complaint should be accepted as filed.
The consensus view is that respondent's default does not automatically result in a decision in favor of complainant and that complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel finds that there are no exceptional circumstances for the failure of Respondent to submit a Response. As a result, the Panel infers that Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contac, WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. Reuters Limited v. Global Net 2000, Inc., supra; RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in Paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.
The domain name <imaxcinemas.com> incorporates the IMAX mark in its entirety. In this type of combination it is clear that the IMAX mark stands out and leads the public to think that the disputed domain is somehow connected to the owner of the registered trademark.
Previous WIPO UDRP panels have held that when a domain name wholly incorporates a complainant's registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd, WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S. r. l., WIPO Case No. D2001-1206; Utensilerie Associate S. p. A. v. C & M, WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd., WIPO Case No. D2007-0282.
The addition of the generic term “cinemas” increases the likelihood of confusion because it describes the very services for which the IMAX mark is known, as correctly pointed out by Complainant.
Also, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Mattew Smith, supra.
Therefore, the Panel finds that the <imaxcinemas.com> domain name is confusingly similar to the IMAX mark and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.
Complainant contends that, because the IMAX trademark registrations were issued long before Respondent registered the <imaxcinema.com> domain name, Respondent is charged with constructive knowledge of them.
Most panels have declined to introduce the concept of constructive notice into the UDRP. See WIPO Overview, paragraph 3.4. However, there are special circumstances that strongly suggest actual knowledge, such as a famous mark, a distinctive mark, a mark not in any way descriptive of the goods or services offered. See Affinion Publishing LLC v. Link Domain/ Daniel Concepcion, WIPO Case No. D2008-0316.
Complainant also contends that Complainant has found no evidence that Respondent has ever used (other than Respondent's domain name registration) the trademark or trade name “imaxcinemas.com” or been commonly known as “imaxcinemas.com” or anything similar.
The Policy outlines in paragraph 4(c) circumstances which, if found by the panel to be proved, shall demonstrate respondent's rights or legitimate interest in the domain. The Panel finds that none of the conditions outlined in paragraph 4(c) have been made out by Respondent. The Panel accepts Complainant's contentions that (i) Complainant's use of the mark predates the registration of the disputed domain name and has extended over thirty years in many countries; and (ii) Respondent does not carry on any business and was not commonly known by the name “IMAX” or any other words including the word “IMAX” before the domain name was registered.
In fact, the use by Respondent of the fictitious name “Imaxcinemas.com” is clearly a device to conceal its true identity. Besides that, while a registrant might have a legitimate interest in using as tradename the domain name, Respondent cannot have a legitimate interest in using the disputed domain name <imaxcinemas.com> because that use takes advantage of the trademark value of the IMAX mark.
In short, the Complainant has satisfied its burden of providing sufficient evidence that Respondent lacks rights to or legitimate interests in the disputed domain name, and the Respondent by defaulting has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain name. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
In light of the foregoing, the Panel finds that the requirement of Paragraph 4(a)(ii) of the Policy is met.
The Panel finds that Respondent was undoubtedly aware of the existence of Complainant and of its trademark IMAX when Respondent registered the disputed domain name. That finding is reinforced by the fact that Respondent chose to combine the word “IMAX” with “cinemas”, a term which describes the core business in which Complainant is engaged.
As a matter of fact, in the case of a domain name so obviously connected to a widely known mark and the main services identified thereby, its use by someone with no legitimate interest in respect of the registered domain name constitutes what has been called as “opportunistic bad faith”. See SSL International PLC v. Mark Freeman, WIPO Case No. D2000-1080; Parfums Christian Dior v. Javier Garcia Quintas and Christian Dior. net, WIPO Case No. D2000-0226; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.
As a result of an independent research made on April 4, 2010 by attempting to access a website at “www.imaxcinemas. com” , the Panel noted that the disputed domain name is currently inactive. Complainant submitted evidence to the effect that the domain name directed Internet users to a website displaying sponsored link pages related inter alia to movies, movie theaters and tickets, which is the core business of Complainant. It also provided evidence that the disputed domain name was offered for sale.
The circumstance that the domain name <imaxcinemas.com> is apparently inactive does not affect a finding of bad faith use of the disputed domain name. The facts of the case show an evasive and wrongful conduct on the part of Respondent. First, because the use of a proxy registration service, in similar circunstances, to avoid disclosing the name and coordinates of the real party in interest is consistent with an inference of bad faith in registering and using a domain name. Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696.
Second, because the consensus view in WIPO URDP Panel decisions has been that “[t]he lack of active use of the domain name does not as such prevent a finding of bad faith”, and that a panel must examine such circumstances as “complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name”. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 3.2). See Telstra Corporation Limited v. Nuclear Marshmallos, WIPO Case No. D2000-0003; Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022; J. García Carrión, S.A. v. Mª José Catalán Frias, WIPO Case No. D2000-0239; Bayer Aktiengesellschaft v. Henrik Monssen, WIPO Case No. D2003-0275; Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483; MasterCard International Incorporated v. North Tustin Dental Associates, WIPO Case No. D2007-1412.
The Panel is of the opinion that, under appropriate circumstances, passive holding evidences bad faith use. In the instant case all of the facts referred to above are present and, therefore, the Panel concludes that the disputed domain name was registered and is being used in bad faith.
Therefore, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.
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 <imaxcinemas.com> be transferred to Complainant.
Manoel J. Pereira dos Santos
Dated: April 5, 2010