WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DreamWorks Animation LLC v. Phoebus Morides / Phivos Morides
Case No. D2013-1424
1. The Parties
The Complainant is DreamWorks Animation LLC of Glendale, California, United States of America (“US”), represented by HGF Law, United Kingdom of Great Britain and Northern Ireland (“UK”).
The Respondent is Phoebus Morides / Phivos Morides of Limassol, Cyprus.
2. The Domain Name and Registrar
The disputed domain name <dreamworks-corpworldwide.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2013. On August 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 13, 2013, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on August 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 4, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 6, 2013.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on September 10, 2013. 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 produces motion pictures incorporating computer-generated animation. High profile producers have been associated with the Complainant’s productions, which have included a number of cinema and television successes that have grossed many millions of dollars.
The company name DreamWorks has been used since 1995, as DreamWorks LLC, and is well known internationally. The animation division was devolved as DreamWorks Animation LLC in 2004. The Complainant derives considerable income from merchandise associated with its productions, including publications, stationery, posters, packaging, toys, clothing, confectionary, computer games and DVDs, and runs promotions in association with other leading brands. The Complainant’s productions, merchandise and promotions have appeared in Cyprus, being the address presently given by the Respondent.
The Complainant holds a large number of registered trademarks world-wide for DREAMWORKS, either alone or in combination with company names or products. The following examples are representative:
DREAMWORKS, Office for Harmonization of the Internal Market, registration number 182220, registered on September 28, 1998, classes 9. 16, 25, 28, 41;
DREAMWORKS, UK Intellectual Property Office, registration number 2007054, registered on August 9, 1996, classes 9, 25, 28, 41;
DREAMWORKS, Greek Department of Filing of Trademarks, registration number 122620, registered on October 17, 1997, classes 9, 25, 28, 41;
DREAMWORKS, Cyprus Office of the Registrar of Trademarks, registration number 41650, registered on January 10, 1995, class 9.
The Respondent has not provided any information and has not stated its current business. The Respondent has, however, been the respondent in previous disputes under the UDRP and under the Policy of the Hellenic Telecommunications and Post Committee (“EETT”), in which a total of four domain names incorporating “dreamworks” have been transferred from the Respondent to the Complainant.
The disputed domain name was registered by the Respondent on December 17, 2012.
5. Parties’ Contentions
The Complainant has cited the decisions in previous disputes it has brought against the present Respondent under the UDRP through WIPO and under the Policy of the EETT, in which the respective domain names have been transferred to the Complainant, as follows:
Domain names <dreamworks-europe.com> and <dreamworks-worldwide.com>; DreamWorks Animation LLC v Phivos Morides / Phoebus Morides, WIPO Case No. D2012-0054 (the “Morides” decision);
Domain name <dreamworks-worldcorp.com>; DreamWorks Animation LLC v Phoebus Morides, WIPO Case No. D2012-1997 (the “Phoebus” decision);
Domain name <dreamworkscorp.gr>; DreamWorks Animation LLC v Dreamworks Corporation Hellas SA, EETT Case No. 652/47 (the “EETT decision”).
The Morides dispute alone was contested by the Respondent, who did not submit any responses in the Phoebus and EETT disputes.
The Complainant states that the disputed domain name <dreamworks-corpworldwide.com> was registered only 16 days after the Phoebus decision.
The Complainant has produced a 26-page list of DREAMWORKS trademarks in which it asserts rights, and has produced copies of the registration documents for the representative trademarks listed in section 4 above.
The Complainant contends that the disputed domain name contains the trademark DREAMWORKS in full and is confusingly similar to that trademark. The generic top level domain gTLD “.com” may be disregarded. The other component of the disputed domain name, “corpworldwide”, comprises “corp” and “worldwide”, meaning a world-wide corporation, and should be treated as non-distinctive.
The Complainant states that its trademark is very well-known internationally, carries extensive goodwill, and is associated with famous movie directors such as Steven Spielberg.
The Complainant contends that the trademark DREAMWORKS is a neologism, does not directly describe anything, is at most an allusive reference to works of imagination and has significance only because it is the trademark of the Complainant. In the minds of members of the public the disputed domain name could only refer to an official website of the Complainant, and the suffix “corpworldwide” would further imply a global center for information about the Complainant and its products.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant has submitted a comprehensive account of its involvement in the disputes leading to the Morides, Phoebus and EETT decisions cited above, with considerable detail of the evidence, Panel findings and decision as they related to Morides in particular. Partly through reference to investigations conducted for these previous cases, the Complainant contends that the Respondent has claimed to have registered or used company names including:
Dreamworks Corp. Worldwide (DCW), registered in UK and Cyprus 2002; the Complainant states that investigations have not revealed any record of this company in the UK in connection with the Respondent;
Dreamworks Incorporated Middle East Ltd (DIME), Cyprus, registered on February 18, 2002; the Complainant states that there is no evidence that this company has ever traded;
Dreamworks Incorporated Middle East Ltd (DIME), UK, for which the Respondent had produced a certificate of incorporation at the time of the Morides case;
Dream Group Worldwide (DGW), formerly DIME registered in Cyprus; the Complainant states that there is no evidence that this company has ever traded;
Dreamworks Incorporated Europe Limited (DIEL), which the Complainant states that was deregistered in 2006, and was formerly DIME registered in the UK;
Dreamworks Ltd (DL), Greece, registered in June 8, 2006, dissolved October 22, 2007, with no evidence that it ever traded;
Dreamworks Corp Hellas SA (DCH), Greece, registered on September 5, 2002, dissolved on October 22, 2007, with evidence that it had ceased trading in or before 2005;
Dreamworks Corp. (Cyprus) Ltd (DCC), Cyprus, registered on September 27, 2005. The Complainant states that DCC is registered as a real estate agency and is not registered at the labour office.
The Complainant states that, following inquiries, that there is no reference to the companies at any addresses recorded for the companies or the Respondent in Greece.
The Complainant contends that the Respondent has no right to use the trademark DREAMWORKS and is well aware of this from the previous decisions listed above. The trademarks were registered and used by the Complainant at least 15 years prior to the registration of the disputed domain name.
The Complainant states that the Respondent does not have any connection with the Complainant or any company authorised to use the Complainant’s trademarks. The Respondent has never been permitted by the Complainant to use its trademarks and is not commonly known by the disputed domain name.
The Complainant states that the Respondent has never used the disputed domain name in connection with a bona fide offering of goods or services, or made demonstrable preparations to do so, and is not making a legitimate noncommercial or fair use of it.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The Complainant’s trademarks have been in use, including in Greece, Cyprus and the UK, since at least as early as 1995, therefore when the Respondent registered the disputed domain name or company names, he had knowledge of the Complainant.
The Complainant states the disputed domain name at one time linked to the Respondent’s website “www.idreamm.com”. The Respondent has intended to confuse people into believing erroneously that his business is approved by the Complainant.
The Complainant submits that the Respondent’s holding of the disputed domain name, whilst currently passive, is in bad faith in the present circumstances. The Respondent would be able to use the disputed domain name again in the future and can provide no evidence of any actual or contemplated good faith use of the disputed domain name and clearly registered it to disrupt the business of the Complainant and to prevent its use by a competing business.
The Complainant requests the transfer to it of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Complainant, in order to succeed, must prove that it has rights in a trademark that are sufficient for the purposes of the Policy. The Complainant has produced documentary evidence, satisfactory to the Panel, of its rights in the trademark DREAMWORKS in Europe, the UK, Cyprus and Greece.
The disputed domain name is <dreamworks-corpworldwide.com>. The first component, “dreamworks”, is identical to the Complainant’s trademark DREAMWORKS, which notably is not a dictionary word but is a fanciful composition. The remainder of the disputed domain name is “corpworldwide”, which is easily read as “corp” (corporation) and “world-wide”. The resulting expression “corp world-wide” comprises generic descriptive words that are found not to be distinguishing but on the contrary to enhance the confusion between the disputed domain name and the Complainant’s well known trademark DREAMWORKS. The Panel finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must prove under paragraph 4(a)(ii) of the Policy that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant has certified that it has not licensed or permitted the Respondent to use the trademark DREAMWORKS in any way or to register any domain name containing that trademark.
Conventionally, once the Complainant has shown a prima facie case under paragraph 4(a)(ii) of the Policy, it is for the Respondent to provide evidence in rebuttal in the terms of paragraph 4(c) of the Policy or in any other way satisfactory to the Panel. The Respondent has not produced any such evidence, or provided any Response at all. Furthermore the Complainant has conducted or commissioned substantial investigations into the purported existence of the “Dreamworks” companies claimed by the Respondent, including the engagement of a law firm in Athens and a forensic investigations company in Nicosia to investigate the Respondent’s claimed companies in Greece and Cyprus respectively. It is partly on the basis of the comprehensive reports delivered by these investigators, annexed to the Complaint, that the Complainant asserts, as annotated in section 5A above, that the Respondent’s “Dreamworks” companies are variously non-existent, dissolved, or untraceable. It is also noted that the Complainant has used its trademark since 1995; the earliest registration of any “Dreamworks” company by the Respondent was in 2002; and the disputed domain name was registered by the Respondent on December 17, 2012.
The Panel finds under paragraph 4(a)(ii) of the Policy that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found otherwise by the Panel.
The Complainant says the disputed domain name at one time redirected visitors to the Respondent’s website at “www.idreamm.com”. This is not denied by the Respondent, and accepting that this is so, it would have amounted to the use of the Complainant’s trademark by the Respondent in order to attract Internet users to his Internet location. The disputed domain name is no longer so redirected or in active use, however the Complainant submits that it remains available for the Respondent to use again in the future, and that non-use of the disputed domain name is within the concept of use.
Whilst decisions under the UDRP are non-precedential, nevertheless one of the most widely cited decisions is Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003. The learned Panelist in this case reasoned the principle that the registrant of a domain name incorporating a well known trademark without legitimate reason cannot necessarily escape an adverse finding simply by avoiding active use of the domain name.
It is apparent that the Respondent, having previously lost the domain names <dreamworks-europe.com>, <dreamworks-worldwide.com>, <dreamworks-worldcorp.com> and <dreamworkscorp.gr> by mandatory transfer, is nevertheless determined to hold “dreamworks” domain names and to replace them if lost, in this case with <dreamworks-corpworldwide.com>. Axiomatically, and irrespective of the minimal active use or the non-use of the disputed domain name, the Respondent must perceive a significant benefit in its acquisition, which was effected 16 days after the loss of the comparable domain name <dreamworks-worldcorp.com>, and it may reasonably be concluded on the balance of probabilities that such benefit is intended ultimately to be commercial. It is implausible that the Respondent could put the disputed domain name, featuring the Complainant’s famous trademark, to any good faith use or that he has acquired it without any purpose whatsoever.
On the totality of the evidence the Panel finds in terms of paragraph 4(b)(iv) of the Policy that the disputed domain name is in use by the Respondent and that he intends for commercial gain to cause confusion with the Complainant’s trademark as to the Complainant’s endorsement of any intended Internet location of the Respondent or of products or services thereon.
The Panel further finds on the evidence and on the balance of probabilities that the disputed domain name was registered for the bad faith purpose for which it has been used or is intended to be used, constituting registration and use in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <dreamworks-corpworldwide.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: September 24, 2013