WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Imax Corporation v. Smartpawn, LLC / Kent Leung
Case No. D2015-0146
1. The Parties
The Complainant is Imax Corporation of Ontario, Canada, represented by Kilpatrick Townsend & Stockton LLP, United States of America.
The Respondent is Smartpawn, LLC / Kent Leung of Salem, Massachusetts, United States of America.
2. The Domain Name and Registrar
The disputed domain name <imaxfit.com> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 29, 2015. On January 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 30, 2015, 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 January 30, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 19, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 20, 2015.
The Center appointed David Taylor as the sole panelist in this matter on March 4, 2015. 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 is the owner of, inter alia, the following trademark registrations in the United States:
- IMAX U.S. Reg. No. 942,747, registered on September 12, 1972;
- IMAX U.S. Reg. No. 1,283,679, registered on June 26, 1984;
- IMAX U.S. Reg. No. 2,121,078, registered on December 16, 1997;
- IMAX U.S. Reg. No. 2,270,691, registered on August 17, 1999;
- IMAX U.S. Reg. No. 2,426,984, registered on February 6, 2001; and
- IMAX U.S. Reg. No. 3,965,737, registered on May 24, 2011.
The Complainant's official website is available at "www.imax.com".
The Domain Name was registered by the Respondent on January 25, 2014.
The Domain Name is pointing to a parking website containing sponsored links.
5. Parties' Contentions
The Complainant asserts that it began using the IMAX trademark in Canada in 1967, in connection with large-screen format theatres and related products, and that as a result of its extensive and continuous use, the IMAX trademark has become well-known across the world, including in the United States of America, where the Respondent is located.
The Complainant asserts that the Domain Name is confusingly similar to the Complainant's famous IMAX trademarks, as it incorporates the trademark IMAX exactly and in its entirety, and that the only difference between the Domain Name and the Complainant's trademark is the addition of the word "fit." The Complainant argues that the mere addition of the word "fit" fails to alleviate confusion, particularly in view of the worldwide fame of the IMAX trademarks and the Complainant's use of multiple domain names that include the IMAX trademark.
The Complainant further asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name because the Complainant's first use and first registration of its IMAX trademarks predates any use the Respondent may have made of IMAX as a trade name, domain name, or trademark. The Complainant further states that there is no relationship between the Complainant and the Respondent giving rise to any license, permission, or other right by which the Respondent could own or use any domain name incorporating Complainant's trademark.
The Complainant also asserts that the Respondent's use of the Domain Name is not in connection with a bona fide offering ofgoods and services, as the Domain Name appears tofunction merely as a parking page.
The Complainant further asserts that, in view of the extensive use and recognition of the Complainant's IMAX mark, and the fact that Respondent has no rights in this mark, it reasonably believes that the Respondent is not using the Domain Name for any legitimate noncommercial or fair use purpose, but for profit.
The Complainant further states that the Respondent registered and is using the Domain Name in bad faith. The Complainant claims that it reasonably believes that the Respondent, prior to its acquisition of the Domain Name, was aware that the Complainant was the owner of the IMAX trademark given the Complainant's fame and widespread and long-standing use of its trademark. The Complainant further argues that the Respondent's bad faith registration and use of the Domain Name is established by the fact that the Domain Name purposefully incorporates the well-known IMAX mark and was registered long after the Complainant's trademark became well-known to consumers. The Complainant contends that such registration and use of the Domain Name is, in and of itself, a form of opportunistic bad faith.
In addition, the Complainant argues that the fact that the Domain Name resolves to a parking page is a form of "passive holding" that constitutes bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Name, the Complainant must prove that each of the following elements is present:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
Paragraph 15 (a) of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality and weight of the evidence.
In addition, paragraph 14(b) of the Rules further provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
The Panel notes that the Respondent has failed to respond to the Complaint. The Respondent's failure to respond, however, does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules (see paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
Taking the aforementioned provisions into consideration, the Panel finds as follows:
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Panel to consider first whether the Complainant has established rights in the term "IMAX". The Complainant has provided evidence of its trademark registrations in the term "IMAX" with the United States Patent and Trademark Office (USPTO). The Panel is therefore satisfied that the Complainant has established trademark rights in the term "IMAX".
The Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Name is identical or confusingly similar to the Complainant's trademark. The Panel notes that the Domain Name incorporates the Complainant's IMAX trademark in its entirety. The mere addition of the generic term "fit" does nothing to distinguish the Domain Name from the Complainant's trademark (see paragraph 1.9 of the WIPO Overview 2.0). Furthermore, it is widely accepted that the .COM generic Top-Level Domain ("gTLD") is generally irrelevant for the purpose of assessing identity or confusing similarity between a trademark and a domain name.
The Panel finds that the Domain Name is identical or confusingly similar to the Complainant's trademark; thus the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including:
(i) before any notice to the respondent of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel has considered the statements and evidence put forward by the Complainant and finds that the Complainant has made a prima facie showing of the Respondent's lack of rights or legitimate interests in the Domain Name and that, as a result of its default, the Respondent has failed to rebut such a showing.
The Complainant has stated that it has not authorised the Respondent to make any use of its IMAX trademark, in a domain name or otherwise. Furthermore, there is no evidence suggesting that the Respondent is commonly known by the Domain Name.
The Panel further finds that the Respondent's use of the Domain Name incorporating the Complainant's trademark in its entirety to point to a parking website containing sponsored links, including links related to the Complainant's same activity, cannot be considered either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name as the Respondent (or a third party) is unduly profiting from the Complainant's rights by misleading Internet users to its website (see paragraph 2.6 of the WIPO Overview 2.0).
The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name, in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, including:
(i) circumstances indicating that the respondent has registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trademark or service mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent's website or location.
The evidence put forward by the Complainant shows that the IMAX trademark significantly predates the Domain Name and has been used extensively, particularly in the United States, where the Respondent is based. The Panel therefore agrees that the Respondent was likely aware of the Complainant's rights at the time of registration of the Domain Name, and thus registered it in bad faith seeking to profit from the Complainant's rights.
The Panel further finds that the Respondent's use of the Domain Name, which incorporates the Complainant's trademark in its entirety, for a parking page containing commercial links, including links related to the Complainant's same business activity, is, in the circumstances of this case, evidence of bad faith. Whether the links are automatically generated or not is irrelevant as a domain name registrant is generally responsible for the content appearing on the associated website (see paragraph 3.8 of the WIPO Overview 2.0). The Panel thus finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website, in accordance with paragraph 4(b)(iv) of the Policy.
The Panel therefore finds that the Respondent registered and is using the Domain Name in bad faith, in accordance with paragraph 4(a)(iii) of the Policy.
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, <imaxfit.com>, be transferred to the Complainant.
Date: March 18, 2015