WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Panavision International, L.P. and Panavision Inc. v. Roy Waterman
Case No. D2017-1790
1. The Parties
The Complainants are Panavision International, L.P. and Panavision Inc. of Woodland Hills, California, United States of America (collectively "the Complainant"), represented by Bryan Cave, LLP, United States of America.
The Respondent is Roy Waterman of Miami, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <panavisiontt.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 September 15, 2017. On September 15, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 18, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on October 13, 2017.
The Respondent submitted a communication to the Center on October 17, 2017. The Complainant submitted a request for suspension of the proceedings on October 23, 2017. On October 24, 2017, the Center notified the Parties the proceedings were suspended until November 22, 2017. On November 9, 2017, the Complainant requested reinstitution of the proceedings. On November 10, 2017, the Center notified the Parties of the reinstitution of the proceedings.
The Center appointed Dennis A. Foster as the sole panelist in this matter on November 21, 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
The Complainant (including its predecessor in interest) has been in business since 1954, becoming ultimately a world leader in providing digital and visual equipment for the motion picture and television industries. In carrying out its operations, the Complainant has registered its PANAVISION trademark in jurisdictions around the globe, including with the United States Patent and Trademark Office ("USPTO") (e.g., Registration No. 627,362; registered on May 22, 1956).
The Respondent owns the disputed domain name, <panavisiontt.com>, and the date of creation is August 15, 2017. The disputed domain name is used to host a website that contains a solicitation for Internet users to subscribe to an online video service unrelated to the Complainant's business.
5. Parties' Contentions
The Complainant's predecessor in interest was founded in 1954 to design and manufacture wide-screen photographic and projection lenses. Since that time, the Complainant has become the world leader in providing ultra-precision digital images and visual cinematography equipment for motion picture, television and related industries.
The Complainant's PANAVISION trademarked products are famous and used by filmmakers and television producers on a global basis. As a result, the Complainant has obtained numerous registrations for its mark throughout the world, including with the USPTO. Since 1998, the Complainant has maintained an active online presence through, among other avenues, its registered domain name, <panavision.com>, as well as other related domain names that incorporate the PANAVISION mark.
Because it incorporates the Complainant's mark entirely, the disputed domain name is confusingly similar to that mark. The addition of the letters, "tt", does not reduce the likelihood of confusion between the disputed domain name and mark.
The Complainant need only make out a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name before shifting the burden of rebuttal to the Respondent. The Complainant is in no way associated with the Respondent and has granted it no authorization or license to use the Complainant's trademark. The Respondent cannot establish that he has been known as the disputed domain name and is instead using the name to lure Internet users to his website for illegitimate commercial gain.
The Respondent registered and is using the disputed domain name in bad faith. Clearly, the Respondent was well aware of the Complainant and its world famous trademark before registering and using the disputed domain name. The disputed domain name uses the Complainant's famous mark for a website that presents an advertisement for subscriptions to a motion picture and television streaming service unconnected with the Complainant or its products.
The Respondent did not submit any substantive reply to the Complainant's contentions.
6. Discussion and Findings
Per paragraphs 4(a)(i) - (iii) of the Policy, the Panel may find for the Complainant and order a transfer of the disputed domain name, <panavisiontt.com>, if the Complainant can establish that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Policy, paragraph 4(a)(i) stipulates that the Complainant establish that it has rights in the mark at issue. By its submission of clear evidence (Annex 8) to the Panel of registration with the USPTO for the PANAVISION trademark, the Complainant has satisfied the requirement that it possess rights in that mark. See, Panavision International, L.P. and Panavision Inc. v. Domains By Proxy, LLC / Dan Frenkel, WIPO Case No. D2016-2550 ("The Panel finds that Complainant has trademark rights in the PANAVISION Marks"); and Lilly ICOS LLC v. Andrew Riegel, WIPO Case No. D2006-1088 ("The Panel finds that the Complainant's registration with the USPTO sufficiently establishes the Complainant's rights in the CIALIS mark").
Policy, paragraph 4(a)(i) also requires of the Complainant that it prove that the disputed domain name is identical or confusingly similar to its trademark. While the disputed domain name <panavisiontt.com> is not identical to the PANAVISION mark, the disputed domain name contains that mark in its entirety as the dominant element. The Panel determines that the additional letters, "tt", constitute a minimally distinguishing feature between the two, and thus finds the disputed domain name to be confusingly similar to the Complainant's trademark. For instance, the Panel believes that a reasonable Internet user may conclude, in error, that "tt'' is an abbreviation for some sort of application connected with the Complainant's mark. See, SAP AG v. wwww wwww, WIPO Case No. D2014-0935 (finding <sapsf.com> to be confusingly similar to the SAP trademark); Ctrader Limited v. Ibnu Rusdi and Private Registration, WIPO Case No. D2013-1800 (holding that <ctraderts.com> is confusingly similar to the CTRADER mark, while stating: "It is settled case-law under the Policy that a domain name consisting of a trademark followed by a few letters is, in general, confusingly similar to the trademark"); and OSRAM GmbH v. wangjin, WIPO Case No. D2013-1570 (finding <osramcn.com> to be confusingly similar to the mark OSRAM).
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant asserts correctly that it need present merely a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name before placing the burden upon the Respondent to rebut that case with clear evidence. See, Groupe Auchan v. Roberto La Palombara, WIPO Case No. D2014-0660 ("[...] the consensus view of UDRP panels is that the burden of production of evidence is shifted to the respondent to come forward with evidence of a right or legitimate interest in a domain name, once the complainant has made a prima facie showing [...]"); and Eleven v. Howword Flower, WIPO Case No. D2013-1423.
In this case, the Panel has concluded that the disputed domain name is confusingly similar to the Complainant's trademark. Moreover, the Complainant has contended that there is no association between the two and that the Respondent has been given no permission or license to use the Complainant's mark in a domain name or otherwise. This conclusion and contention meet the minimum standards required of a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
As the Respondent has failed to submit a Response in which a rebuttal to the prima facie case might be forthcoming, the Panel will look elsewhere in the record as to whether such a rebuttal could be sustained. In conducting this analysis, the Panel will accept as true all of the Complainant's reasonable contentions unless there is clear contradictory evidence. See, Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942 ("[...] in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules"); and Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 ("Given Respondent's failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint").
Policy, paragraph 4(c) furnishes a respondent with three avenues to rebut a complainant's prima facie case, and the Panel shall examine the record to determine whether any might be conceivably applied to this case.
First, in considering the avenue listed in subparagraph 4(c)(ii), there is no reason for the Panel to believe that the Respondent, Roy Waterman, has been commonly known as the disputed domain name, <panavisiontt.com>, so that subparagraph is rendered inapplicable.
With respect to subparagraphs 4(c)(i) and (iii), the Panel has chosen to accept the Complainant's contention, which is supported by Complaint Annex 2, that the Respondent is using the disputed domain name to coax Internet users to purchase subscriptions to a third-party online video service, some small portion of the subscription fee going presumably to the Respondent. In the Panel's opinion, that use cannot be claimed on behalf of the Respondent to be use consistent with the dictionary or descriptive meaning of "panavision", because that term is not a common or generic word, but instead a fanciful term as trademarked by the Complainant. Therefore, consistent with those circumstances, the Panel determines that such use fails to fall under subparagraph 4(c)(iii) as a legitimate noncommercial or fair use, because the Respondent profits from that use. Moreover, said use is not a "bona fide offering of goods or services" per subparagraph 4(c)(i), as using a domain name that makes unauthorized use of the Complainant's well-known trademark to direct Internet users to a third-party website offering services unrelated to the Complainant or its mark does not meet that criterion. See, Panavision International, L.P. and Panavision Inc. v. Susan S. Maddox, WIPO Case No. D2016-2551; La Redoute SAS v. KAB Enterprises, WIPO Case No. DCO2016-0035 ("Diverting customers, who are looking for the Complainant's products relating to its well-known trademark, to a website unrelated to the trademark and the Complainant is not a bona fide offering of goods or services under the Policy"); and Galvin Green AB v. Stephen Galvin - Galvin Green, WIPO Case No. DCO2013-0016 ("The use of a domain name to garner revenue on the basis of Internet user confusion, through the incorporation of a complainant's trademark, does not constitute a bona fide commercial offering for purposes of the Policy").
Accordingly, the Panel finds that the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Policy, paragraph 4(b) sets forth four circumstances from which the Panel might conclude that the disputed domain name was registered and is being used in bad faith. However, such a finding can be based also on other criteria. See, Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964 ("[...] the list of instances of bad faith in Policy, paragraph 4(b) is explicitly non-exclusive").
From its own experience, the Panel is well aware of the fame of the Complainant's PANAVISION trademark. The Panel cannot even begin to quantify the countless times it has seen that mark appear in the end titles of motion pictures and television programs. Therefore, based solely upon the fame of the Complainant's trademark, the Panel concludes that the Respondent could not possibly have intended to register and employ the disputed domain name, <panavisiontt.com>, in a legitimate or good faith manner. Consequently, and taking into account the use to which the disputed domain name has been put by the Respondent, as outlined above, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. See, Google Inc. v. Eamonn Smyth, WIPO Case No. D2011-1023 ("The Panel also notes that, as found by other panels, where a domain name is so obviously connected with a well-known product or service, its very use by someone with no connection with the product suggests opportunistic bad faith..."); and LEGO Juris A/S v. XMGlobal Inc., WIPO Case No. D2010-1168 ("[...] the misappropriation of a well-known trademark as domain name constitutes per se bad faith registration in light of the Policy"). Here, the Respondent´s conduct falls squarely within the language of paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that the Complainant has shown that the disputed domain name was registered and is being used 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, <panavisiontt.com>, be transferred to the Complainant.
Dennis A. Foster
Date: December 5, 2017