The Complainant is Prime Pictures LLC of Dubai, United Arab Emirates (“UAE”), represented by Law offices of Vince Ravine, PC, United States of America (“USA”).
The Respondent is DigiMedia.com L.P. of Texas and Oklahoma, USA, represented by John Berryhill, USA.
The disputed domain name <cinemacity.com> (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2010.
The Center transmitted its request for registrar verification to the Registrar on November 5, 2010. The Registrar replied the same day, confirming that the Domain Name is registered with it, that the Respondent is the current registrant, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applies to the Domain Name, that the Domain Name is on Registrar Lock and will remain locked during this proceeding subject to scheduled expiry on September 23, 2011, and that the registration agreement is in English. The Registrar provided the full contact details held on its WhoIs database in respect of the Domain Name and stated that it had not yet received a copy of the Complaint.
The Center verified that the Complaint satisfied the formal requirements of the 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced November 23, 2010. In accordance with paragraph 5(a) of the Rules, the due date for Response December 13, 2010. The Response was filed with the Center on December 13, 2010. The Respondent requested the appointment of a three-member Panel.
The Center appointed Jonathan Turner, Hoda T. Barakat and David H. Bernstein as panelists in this matter on January 21, 2011. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
Having reviewed the file, the Panel finds that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
Cinemas are operated under the name “CINEMACITY” in Lebanon, UAE, Jordan and Syria. These include the largest cinema in Lebanon, which had a market share of 30% in 2009. Cinema City S.A.L. was registered as a company in Lebanon on September 22, 2005 and registered a device consisting primarily of the word CINEMACITY as a trademark in Lebanon on April 17, 2006. Cinema City LLC was registered as a company in UAE on July 14, 2008. Damascus for Cinema and Tourism Company LLC was registered as a company in Syria on March 12, 2009. The turnover of the CINEMACITY group exceeded $12.7 million in 2009 and was forecast to exceed $20 million in 2010. The group has 100 employees.
The Domain Name was registered by the Respondent on September 24, 1998. On January 25, 1999, the Domain Name resolved to a web page which displayed a logo containing the name “digimedia” and provided links primarily relating to Internet services. On July 2, 2005, it resolved to a web page which provided a search engine and links to searches on words or phrases primarily relating to films and DVDs. The Domain Name currently resolves to a web page at “www.yeah.com” which displays the name “Yeah!com” and links to pages of sponsored links relating to a variety of categories of goods and services, including DVDs. The page also provides a search facility which can be used to generate links relating to cinemas and films by entering an appropriate search term.
An email was sent to the Respondent on August 16, 2009, asking whether the Domain Name was available and what its suggested fee for transferring it would be. The Respondent replied on August 22, 2009, stating that it was not interested in parting with the Domain Name. On November 15, 2009, a further email was sent to the Respondent asking whether the Domain Name was sale. The Respondent replied on November 16, 2009, giving the same answer.
The Complainant contends that it has rights in the mark CINEMACITY and points out that the location of those rights is irrelevant for the purpose of the first requirement of the UDRP. The Complainant further contends that the Domain Name is identical or confusingly similar to its mark.
The Complainant submits that the Respondent does not have rights or legitimate interests in respect of the Domain Name since it merely redirects Internet users to another Domain Name and has not been developed or used legitimately.
The Complainant alleges that the Domain Name is being used in bad faith to provide sponsored links to services in competition with the Complainant’s services. The Complainant submits that paragraph 4(b)(iv) of the UDRP applies. The Complainant also notes that the Respondent was unwilling to engage in any negotiations to sell the Domain Name.
The Complainant requests a decision that the Domain Name be transferred to it.
The Respondent draws particular attention to the fact that it registered the Domain Name several years before any claimed activity of the Complainant identified in the Complaint. The Respondent also points out that the name “Cinema City” has been used by a number of other entities in relation to cinemas, film production or film festivals.
The Respondent accepts that it has used the Domain Name to provide paid advertising links to subject-matter relating to entertainment and states that it has done so since 1999. The Respondent considers that this use has been legitimate.
The Respondent submits that the bad faith criterion in the UDRP requires an element of specific intent directed at the Complainant and arising from rights known by the Respondent to belong to the Complainant when the Domain Name was registered. The Respondent contends that registration of the Domain Name with intent to exploit a known mark of the Complainant is chronologically impossible and refers to paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. The Respondent maintains that the Complaint is entirely misconceived in this regard.
The Respondent invites the Panel to make a finding under paragraph 15(e) of the Rules that the Complaint is an attempt at reverse domain name hijacking. The Respondent notes that the Complaint cites a number of decisions under the UDRP and suggests that the Complainant’s counsel should have recognized the fundamental deficiency of the Complaint, namely that the Domain Name was registered long before the existence of any of the rights claimed by the Complainant.
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the 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. It is clear that these are cumulative requirements and it is therefore appropriate to consider each of them in turn.
The Complaint refers to a trademark registration in Lebanon for a logo consisting primarily of the name CINEMACITY by Cinema City S.A.L. The Complaint also provides evidence of use of this trademark by Cinema City S.A.L. in Lebanon, by a company called Cinema City LLC in UAE, and by a company called Damascus for Cinema and Tourism Company LLC in Syria, and the Panel would regard the use so demonstrated as sufficient to establish common law rights in the mark.
The Panel finds that the Domain Name is confusingly similar to this mark. It is well-established that the generic top level domain suffix should be discounted when making the assessment required by this condition of the UDRP. The second level domain of the Domain Name consists of the word “cinemacity”, which is the dominant element of the mark. The Panel considers that a significant number of customers and potential customers of cinemas operating under this mark would be liable to assume that the Domain Name locates a website of their owner or operator.
It remains necessary to consider, however, whether the Complainant has rights in the mark relied upon. There is some evidence that the three companies mentioned above are connected, but no details of the connection are provided. More seriously there is no evidence at all that any of these companies is connected with the Complainant, Prime Pictures LLC, or that Prime Pictures LLC has any right in this mark on any other basis.
Decisions under the UDRP have confirmed that the rights in the mark, which the Complainant must have to satisfy the first requirement, are not limited to ownership of the mark and can include the rights of a licensee or of a parent or subsidiary of the owner of the mark to use it: see, for example, Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington, WIPO Case No. D2003–0796. On the other hand, it must be shown that the Complainant has some right in the mark: see PartyGaming Plc v. Kriss Vance, WIPO Case No. D2006-0456.
Had there not been another, and incurable, deficiency in the Complaint, as described below, the Panel might have afforded the Complainant an opportunity to file evidence that it had rights in the mark relied upon or even to add or substitute one or more of the companies mentioned in the first paragraph of this section of the Decision as Complainant(s), if authorized to do so: see News Holdings Limited, Dow Jones & Company, Inc. and Dow Jones, LP v. noblemay, WIPO Case No. D2008-0220, and NFL Properties LLC and New York Jets LLC v. Link Commercial Corp., WIPO Case No. D2004-1087.
However, since the Complaint must fail for other reasons, the Panel sees no reason to prolong the procedure. It suffices to state that, quite apart from the points made below, the Complaint as filed fails in limine for lack of evidence that the Complainant has any rights in the mark relied upon.
The Panel considers that the mere registration and retention of a domain name in good faith do not of themselves confer a right or legitimate interest in respect of it on its registrant for the purposes of the UDRP. If they did, the second requirement of the UDRP would be meaningless and redundant, since it would be satisfied by any respondent who would succeed under the third requirement of the UDRP. See for example, the discussion in Wildfire, Inc. v. Namebase, WIPO Case No. D2007-1611, and cases cited therein on the issue of mere registration.
Although not exhaustive, the circumstances identified in paragraph 4(c) of the UDRP as demonstrating that a respondent has a right or legitimate interest in a domain name may fairly be regarded as indicating the kind of situation which those who framed and adopted the UDRP intended to cover by this condition; and which those who accepted the UDRP, either by registering a domain name to which it applies or by making a complaint under it, expected to be covered by the condition.
The circumstances identified in paragraph 4(c) of the UDRP cover situations where the registrant of the domain name has an independent goodwill, reputation or recognition under the disputed domain name or a corresponding name, or at any rate has invested in preparations which will develop such a goodwill or reputation.
In this Panel’s view, these circumstances reflect an underlying concept that, even where a domain name corresponds to a complainant’s mark and even where it was registered and is used in the knowledge that it will interfere with that mark, it will not be regarded as abusive under the UDRP if the registrant has its own entitlement or interest in the domain name because it is known by that name or a corresponding name or has in good faith invested in becoming known by such a name.
Some panels have accepted that paragraph 4(c) also extends to situations where the registrant has in good faith used or made demonstrable preparations to use a generic domain name solely and genuinely for its generic meaning: see, for example, Landmark Group v. DigiMedia.com, L.P., NAF Claim No. 285459, National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424, cf. mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141. However, it is not necessary, for the purpose of this Decision, to resolve whether such use can come within paragraph 4(c) or otherwise confer a right or legitimate interest, since the Domain Name in the present case is not generic. Although it comprises descriptive elements, the composite phrase “Cinema City” is not a term in ordinary English usage.
Furthermore, the Respondent has merely directed the Domain Name to web pages which have merely displayed sponsored links to a variety of third party web pages, not exclusively concerned with cinemas or cities. Although this use has continued over a number of years, the Panel considers that it is most unlikely to have created any independent goodwill, reputation or recognition of the Respondent under this Domain Name. There is nothing to suggest and it is inherently unlikely that any Internet users regard the Domain Name as locating a convenient portal or as providing any other useful service. Nor does it appear that there has been any real investment by the Respondent which might lead to the creation of any independent goodwill or reputation under the Domain Name.
In all the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name within the meaning of the second condition of the UDRP in its paragraph 4(a)(ii).
It is clear from the wording of the UDRP, and has been confirmed in many cases under it, that the two elements of its third requirement are cumulative: the Complainant must prove that the Domain Name both was registered in bad faith and is being used in bad faith.
Numerous recent decisions under the UDRP have reconfirmed that this requirement cannot be met where a domain name was originally registered in good faith, even if it has since been used in bad faith: see Camon S.p.A. v. Intelli-Pet, LLC, WIPO Case No. D2009-1716, BioClin B.V v. MG USA, WIPO Case No. D2010-0046, Heraeus Kulzer GmbH v. Dr. Walt Stoll, WIPO Case No. D2010-0137, Tata Communications International Pte Ltd (f/k/a VSNL International Pte Ltd) v. Portmedia Inc. / TRUEROOTS.COM c/o Nameview Inc. Whois, WIPO Case No. D2010-0217, Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470, India Infoline Ltd. v. Myles Hare, WIPO Case No. D2010-0542, Editions Milan v. Secureplus, Inc., WIPO Case No. D2010-0606, and RapidShare AG and Christian Schmid v. The holder of the domain name rapidshare.net, WIPO Case No. D2010-0598, Nattermann & Cie. GmbH and Sanofi-aventis v. Watson Pharmaceuticals, Inc., WIPO Case No. D2010-0800, and Red Bull GmbH v. Roy Kenneth Nabben, WIPO Case No. D2010-1358.
In this case the Complaint contains no evidence of any use of “Cinema City” as a mark or company name prior to September 2005. The Domain Name was registered by the Respondent in September 1998. There is no evidence whatsoever that the Domain Name was registered in bad faith. The third requirement of the UDRP has not been satisfied and the Complaint must therefore be rejected.
In accordance with paragraph 15(e) of the Rules, “if after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking …. the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
The application of that definition has been discussed in a number of cases. In Ville de Paris v. Salient Properties LLC, WIPO Case No. D2009-1279, the Panel observed:
“In Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309, the majority of the three-member panel noted that the onus of proving that a complainant has acted in bad faith is on the Respondent, and that mere lack of success of the complaint is not of itself sufficient to constitute reverse domain name hijacking. The majority in Al Jazeera went on to note that:
‘Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy (see Goldline International, Inc v. Gold Line, WIPO Case No. D2000-1151). See also Deutsche Welle v. DiamondWare Limited, WIPO Case No. D2000-1202, where an allegation of reverse domain name hijacking was upheld in circumstances where the complainant knew that the respondent used the at-issue domain name as part of a bona fide business, and where the registration date of the at-issue domain name preceded the dates of the complainant’s relevant trademark registrations.
The three-member panel in Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091 noted that whether a complainant should have appreciated at the outset that its complaint could not succeed, will often be an important consideration.’”
This Panel considers that these observations accurately reflect the purpose of paragraph 15(e) of the Rules and the intention of those who framed and adopted the Rules in including this provision.
In the present case, the Complaint correctly identified that the Domain Name was registered in 1998. Given that the earliest date of any registration or use of the mark relied upon in the Complaint was in 2005, the registration of the Domain Name could not have been in bad faith on any interpretation of the facts and cases cited in the Complaint.
The Complainant is represented in this proceeding by legal counsel who has evidently examined the UDRP and a number of cases decided under it, which are cited in the Complaint. Any reasonable investigation would have revealed that there was a fundamental weakness in the Complainant’s case, in that there was no basis in the Complaint and cases cited therein for alleging that the Domain Name was registered in bad faith. (See by contrast, the observations of the three-member panel in Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
The point is also made very clearly in paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions that “Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.” Furthermore, on this point the UDRP reflects a widely applied principle of trademark and other laws, that priority generally prevails.
In the light of these observations, the Panel considers it unlikely that this deficiency was overlooked by the Complainant’s counsel and more probable that it was deliberately ignored in framing the Complaint. In all the circumstances, the Panel finds that the Complaint was brought in bad faith, in an attempt at Reverse Domain Name Hijacking.
For all the foregoing reasons, the Complaint is denied and the Panel declares that it was brought in bad faith and constitutes an abuse of this proceeding.
Hoda T. Barakat
David H. Bernstein
Dated: February 2, 2011