WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Panavision International, L.P. and Panavision Inc. v. Domains By Proxy, LLC / Dan Frenkel
Case No. D2016-2550
1. The Parties
Complainant is Panavision International, L.P. and Panavision Inc. of Woodland Hills, California, United States of America (“United States”), represented by Bryan Cave, LLP, United States.
Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States / Dan Frenkel of Cypress, California, United States.
2. The Domain Name and Registrar
The disputed domain name <panavisionvideo.com> 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 December 15, 2016. On December 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 19, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended Complaint. Complainant filed an amended Complaint on December 20, 2016.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2017. The Center received email communications from Respondent on the following dates: December 19, 2016 (two email communications); December 21, 2016 (three email communications); December 22, 2016; January 11, 2017; and January 19, 2017.
The Center appointed Dina Leytes as the sole panelist in this matter on January 19, 2017. 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
Panavision International, L.P. and Panavision Inc., (collectively or singularly referred to herein as “Complainant”), was founded in 1954. It designs, manufactures, and supplies ultra-precision digital imaging and visual cinematographic equipment worldwide, including in the United States, the United Kingdom of Great Britain and Northern Ireland, South Africa, Mexico, Japan, China, Brazil, Poland, and India. Complainant is the owner of several registered trademarks that incorporate the term “Panavision” (the “PANAVISION Marks”), including inter alia, United States Registration No. 627,362, which was registered on May 22, 1956, for “Anamorphosers that are used in the projection and taking of motion pictures,” United States Registration No. 845,014 which was registered on February 27, 1968, for “Motion picture films produced by special purpose for conventional lenses supplied by applicant,” and United States Registration No. 834,705, which was registered on September 5, 1967, for “Motion picture cameras and lenses therefor, and associated photographic equipment.” These trademark registrations predate the registration of the disputed domain name.
The disputed domain name <panavisionvideo.com> was registered on October 1, 2016. It is currently inactive, resolves to a page with the wording “This Web page is parked for FREE, courtesy of GoDaddy.com”, and displays links to third-party websites.
Complainant has had a web presence since at least 1998, and owns numerous domain names incorporating or referencing the PANAVISION Marks, including inter alia, the domain name <panavision.com>, which resolves to Complainant’s official company website, <panavisioncamera.com.>, and <panavisionelectronics.com>.
Respondent is Dan Frenkel of Cypress, California.
5. Parties’ Contentions
Complainant alleges that the disputed domain name is confusingly similar to the PANAVISION Marks in which Complainant has rights. Complainant states that the disputed domain name should be transferred to Complainant because it wholly incorporates Complainant’s registered trademark. Complainant also alleges that the addition of the word “video” does not reduce the likelihood of confusion, but instead increases it because it is descriptive of Complainant’s services. Complainant cites to a number of UDRP decisions that support this position.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not affiliated with the PANAVISION Marks, has never sought or received authorization or a license to use the PANAVISION Marks, has not sought or procured any registrations for any tradenames, corporations, or trademarks for “Panavision” or “panavisionvideo.com”, and does not appear to have any legitimate trademark, service mark, or other intellectual property rights related to any of the PANAVISION Marks or any similar marks. Complainant also asserts that the PANAVISION Marks are famous and well-known marks throughout the world.
Complainant also alleges that Respondent registered and is using the disputed domain name in bad faith. Complainant cites to a number of decisions in which passively holding a domain name as a parked page with and without pay-per-click links has been found to be evidence of bad faith use. Complainant also argues that because Respondent’s website has a link that says “Would you like to buy this domain?” the disputed domain name was obtained in bad faith for the purpose of selling or otherwise transferring it to Complainant or a third-party for valuable consideration.
Respondent did not formally reply to Complainant’s contentions in the time period provided by the Rules. However, Respondent did transmit email correspondence to the Center on December 19, 2016; December 21, 2016; December 22, 2016; January 11, 2017 and January 19, 2017. This correspondence does not constitute a formal response under paragraph 5 of the Rules as the communications do not substantively address the allegations of the Complaint. Following the Center’s formal notification of the Complaint, Respondent’s statements to the Center included: “I’m not interested in anything you have to say in writing” and “If you want to talk with me you must call my phone. Otherwise nothing will be done here.” Respondent also stated that it is “filing a US FEDERAL legal complaint”, and that it “can discuss possibilities of selling [the disputed domain name] … for a [sic] agreed price.” Respondent also stated that “Your [sic] not getting the domain [name]. If you want it offer a price”. These communications are discussed further under section 6.C., below.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant must prove that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The complainant bears the burden of proof on each of these elements. If a respondent does not submit a response to the complaint, a panel may draw appropriate inferences from such a default. However, the complainant must still support its assertions with actual evidence to succeed in a UDRP proceeding. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section Edition (“WIPO Overview 2.0”) at paragraph 4.6 and the cases cited therein.
A. Identical or Confusingly Similar
The Panel finds that Complainant has trademark rights in the PANAVISION Marks. The Panel further finds that the disputed domain name is confusingly similar to Complainant’s PANAVISION Marks. The disputed domain name incorporates the mark PANAVISION in its entirety, followed by the dictionary term “video”. Prior 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., Hoffmann-La Roche Inc., Roche Products Limited v.Vladimir Ulyanov, WIPO Case No. D2011-1474; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150; RapidShare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059. Furthermore, the addition of the term “video” does not change the analysis because the addition of a dictionary word does not serve to sufficiently distinguish a disputed domain name from a complainant’s mark. See, e.g., Confederation Nationale du Credit Mutuel v. Fernand Macia / Registration Private / Domains By Proxy, LLC / DomainsByProxy.com, WIPO Case No. D2015-1699.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been met by Complainant.
B. Rights or Legitimate Interests
To prevail on this element, the complainant must make out at least a prima facie case that the respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances that may be used to show a respondent’s rights or legitimate interests in a domain name:
(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 finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Based on the record, Respondent has not attempted to use the disputed domain name in connection with a bona fide offering of goods or services.
Respondent is not affiliated with Complainant and is not known by the PANAVISION Marks. In addition, there is no evidence that Respondent sought or obtained trademark rights in “panavisionvideo” or any variation thereof. Nor has Respondent received any license, authorization or consent to use the PANAVISION Marks in any manner from Complainant. Finally, Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The prima facie case presented by Complainant is sufficient to shift the burden of production to Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. By failing to respond to Complainant’s contentions, Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been met by Complainant.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that may evidence a respondent’s bad faith registration and use:
(i) circumstances indicating that the respondent has registered or has 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 respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) respondent has 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 respondent has engaged in a pattern of such conduct; or
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to 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 respondent’s website or location or of a product or service on respondent’s website or location.
The Panel finds that Complainant has demonstrated that Respondent registered and is using the disputed domain name in bad faith. As previous UDRP panels have held, absent a thorough explanation, Respondent’s registration and passive holding of a well-known third-party trademark constitutes bad faith registration and use. See, Compagnie de Saint-Gobain v. Giovanni Laporta, Yoyo.Email, WIPO Case No. D2014-2156 (citing Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). In considering whether the passive holding of a domain name satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior. See Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131 (citing Telstra Corporation Limited, supra).
Here, Respondent’s informal communications with the Center include the following in response to an email from the Center on December 21, 2016: “I’m filing a US FEDERAL legal complaint against you civily to ty Anything you may want with the domain…Or I can discuss possibilities of selling it to you for a agreed price. But don’t expect me to just give you something that I had to pay for It won’t happen”. An email from Respondent on January 11, 2017 states: “I’m not selling the name to you. And I’m going to use it”.
Furthermore, the website that corresponds to the disputed domain name states that the disputed domain name is for sale. A conclusion of bad faith registration and use is supported by the adverse inference to be drawn from Respondent’s failure to reply to Complainant’s assertions regarding the primary purpose of Respondent’s registration and evidence indicating Respondent’s willingness to sell the disputed domain name for a sum that may far exceed Respondent’s registration fees. Magna International Inc. v. Victor Silva, WIPO Case No. D2012-1561 (the respondent engaged in informal communication with the complainant and offered to sell disputed domain name); Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787 (allowing for adverse inference to be drawn where an offer to sell the disputed domain name was made to the public, although there was no direct evidence that the respondent offered to sell the domain name specifically to the complainant or that sale price would necessarily exceed registration costs).
As further evidence of Respondent’s bad faith, it appears likely that Respondent was aware of the PANAVISION Marks and the nature of the goods and services offered in connection therewith. This is evidenced by Respondent’s incorporation of the descriptive word “video” into the disputed domain name – a word that is descriptive of Complainant’s business, which includes providing video equipment. Nationale du Credit Mutuel, supra (addition of the generic word “ebank” which is commonly used to designate online banking service to disputed domain name indicated that the respondent registered the domain name with the complainant and its trademark in mind).
Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been met by Complainant.
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 <panavisionvideo.com> be transferred to Complainant.
Date: February 2, 2017