Complainant is South Pacific Pictures Limited of Auckland, New Zealand, represented internally.
Respondent is Hamanaka, Miyoko of Okinawa, Japan.
The disputed domain name <whaleriderthemovie.com> is registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2010. On February 3, 2010, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On February 3, 2010, Network Solutions, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on February 26, 2010.
The Center appointed Mark Partridge as the sole panelist in this matter on March 4, 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.
Complainant registered the disputed domain name <whaleriderthemovie.com> on December 20, 2001, and went ahead to produce a film called Whale Rider in 2002. The film was well-recognized in the film industry, receiving the 2002 Toronto International Film Festival AGF People's Choice Award. Upon worldwide release in 2003, Complainant received the 2003 Sundance Film Festival World Cinema Audience Award, and ranked the second highest grossing independent film in the world.
When the registration renewal was due on December 20, 2009, Complainant did not renew its registration.
Respondent acquired the disputed domain name after its expiration. On January 28, 2010, Respondent emailed Complainant offering to sell the domain name for EUR 3,500. Currently, Respondent operates the disputed domain name as a parking page with pay-per-click advertising movie related items, such as posters and DVDs.
Complainant has been operating its website under the domain name <whaleriderthemovie.co.nz> since January 29, 2010.
The Complainant contends that the domain name is identical or confusingly similar to a mark in which Complainant has prior rights; that Respondent lacks any right or legitimate interest in the domain name; and that Respondent has registered and used the domain name in bad faith.
Respondent did not reply to Complainant's contentions.
Under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which it 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.
Complainant has used the name WHALE RIDER on an international basis to identify its movie and related services since 2002. The movie has received wide acclaim and media attention. The name remains in current use for a website operated by Complainant at “www.whaleriderthemovie.co.nz”. It appears from this information that the name has acquired significance as an indication of Complainant as the source of products and services offered under that name. Therefore, the Panel concludes that Complainant has established rights in the name WHALE RIDER as a trademark though use in the countries in its area of trade where common law rights are recognized.
Complainant registered the disputed domain name in 2001 and had used the words to identify its film Whale Rider until the registration expired in December 2009. Also, since registrar's reminder emails were sent to out-of-date address, expiration appears to be a mistake, rather than an actual intent to abandon.
The disputed domain name as registered and used by Respondent is confusingly similar to that mark. The addition of the apt descriptive phrase “the movie” does not avoid confusion, but instead increases the likelihood of association with Complainant.
The Panel, therefore, concludes that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
The Policy requires Complainant to first make prima facie showing that Respondent does not have rights or legitimate interests in the domain name.
Here, Complainant satisfactorily showed that there was no legitimate connection between the disputed domain name “Whale Rider The Movie” and Respondent's use for parking page.
Therefore, the burden shifts to Respondent to prove that s/he has rights or legitimate interests in the disputed domain name. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. FA 741828 (holding that burden shifts to the respondent to show that it does have rights or legitimate interests in the domain name after the complainant establishes a prima facie case under paragraph 4(a)(ii) of the Policy); See also AOL LLC v. Jordan Gerberg, NAF Claim No. FA 780200 (“Complainant must make a prima facie (sic) showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”).
Since Respondent here did not submit any Response to the Complaint, Respondent has not met the burden.
The Panel, therefore, concludes that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
Respondent registered and used the disputed domain name in connection with pay-per-click advertising for movie-related websites, including movie showtimes, tickets, posters and DVDs. None of these appears related to the film Whale Rider. Respondent also sought to sell the disputed domain name to Complainant for profit.
This conduct demonstrates bad faith registration and use in two ways. First, bad faith is shown where a registrant seeks to profit from the sale of a domain name that is identical or confusingly similar another's mark for profit to the owner of that mark. That has occurred here. Respondent demanded Complainant to make purchase decision on the same date it was offered. Respondent's January 28, 2010 e-mail to Complainant reads “If you are interested in it (the disputed domain name), please let us know before 6:00 pm, Thursday, Jan 28, 2010 GMT. After that, this domain may not be available anymore.” Respondent created certain atmosphere of emergency and fear of losing rights to the domain name in order to make quick sales. Such demand for rapid transaction strongly suggests Respondent intends to take advantage of Complainant's mistake of not renewing the domain name.
Second, bad faith is shown where a registrant deliberately uses a domain name based on another's mark to mislead Internet users for commercial gain. Here, Respondent uses a domain name that is confusingly similar to Complainant's mark to profit from pay-per-click advertising by leading Internet users to a site featuring the products and services of others.
The Panel, therefore, concludes that Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <whaleriderthemovie.com> be transferred to Complainant.
Mark Partridge
Sole Panelist
Dated: March 26, 2010