WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Panavision International, L.P. and Panavision Inc. v. Melvis Zenaida Acosta de Loo

Case No. D2017-1853

1. The Parties

The Complainants are Panavision International, L.P. and Panavision Inc. of Woodland Hills, California, United States of America (“United States”) represented by Bryan Cave, LLP, United States.

The Respondent is Melvis Zenaida Acosta de Loo of Panama, Panama, represented by Evans A. Loo, Panama.

2. The Domain Name and Registrar

The disputed domain name <panavision.org> 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 22, 2017. On September 25, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 26, 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 October 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 22, 2017. The Response was filed in Spanish language with the Center on October 5, 2017.

On October 12, 2017, the Center received a Supplemental Filing from the Complainants. The Center acknowledged its receipt and informed the Parties that it would be forwarded to the Panel, once appointed, who would have the discretion to consider it.

The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on November 3, 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 Complainants design, manufacture and supply optical lenses, photographic, lightning and other film and digital imaging equipment in the United States and around the world.

The Complainants own the following trademark registrations, among others:

Additionally, the Complainants own the following domain names, among others:

The disputed domain name <panavision.org> was registered on September 6, 2017. In accordance with the evidence submitted with the Complaint, the disputed domain name resolved to an active website apparently related to media services. The disputed domain name currently resolves to a website which displays a stylized representation of the term “Panavision Internacional”, as well as two embedded videos of political content, and five hyperlinks to articles related to political subjects

5. Parties’ Contentions

A. Complainant

The Complainants argue the following:

I. Identical or Confusingly Similar

That as early as 1954, the Complainants have continuously used the PANAVISION trademark in connection with motion picture cameras, lenses, and an arrangement of goods and services.

That the Complainants are the owners of numerous registrations for the trademark PANAVISION and its variations in the United States, Panama, and around the world.

That since 1998, the Complainants have maintained an active presence on the Internet through the website to which the domain name <panavision.com> resolves, as well as through other domain names.

That previous UDRP panelists have found the trademark PANAVISION to be famous.

That the disputed domain name is identical to the Complainants’ PANAVISION registered trademarks.

That the addition of the generic Top-Level Domain (“gTLD”) “.org” does nothing to differentiate the disputed domain name from the Complainants’ trademark PANAVISION.

II. Rights or Legitimate Interests

That the Respondent has not been authorized by the Complainants to use the PANAVISION trademark as part of the disputed domain name.

That the Complainants’ trademarks are famous and well-known throughout the world.

That there is no proof that the Respondent has been known by the disputed domain name or by the term “Panavision”.

That the disputed domain name is identical or confusingly similar to the Complainants’ trademark and serves the purpose of attracting customers to the Respondent’s website.

That the disputed domain name describes the nature of the Complainants’ services. That the website to which the disputed domain name resolves displays the Complainants’ trademarks.

III. Registered and Used in Bad Faith

That the Respondent seeks to exploit consumer confusion and the Complainants’ fame and goodwill by fully incorporating the PANAVISION trademark in the disputed domain name.

That the Respondent uses the disputed domain name to divert potential consumers away from the Complainants and their authentic goods and services, towards the Respondent’s site.

That the Respondent is using the Complainants’ trademark PANAVISION, as part of the disputed domain name, purporting it to be the homepage of “Panavision Internacional”, which displays images related to the Complainants’ products.

That the Respondent holds no trademark, service mark or other intellectual property rights in relation to the trademark “Panavision” or the disputed domain name.

That the Respondent was aware of the Complainants’ trademark PANAVISION at the time of registration of the disputed domain name. The Respondent, upon information and belief, registered the Domain Name more than six decades after the Complainant and its predecessors began using the trademark PANAVISION, and also well after the Complainant became one of the world’s leaders in the field of ultra-precision visual cinematographic and digital imaging equipment for the motion picture, television, and related industries.

That the Respondent uses the Complainants’ PANAVISION trademarks to draw users to her website, create confusion, and acquire economic gains.

B. Respondent

On October 5, 2017, a person claiming to be the Respondent’s husband, Evans Loo, sent an email communication to the Center. In said email communication, filed in Spanish, he stated the following:

That he is the Respondent’s husband.

That the disputed domain name was registered and used alongside “Panavision Internacional” with the purpose of creating a website to post videos and other information online.

That the Respondent and he do not offer for sale any kind of video cameras, movie, radio or television production services, or any product similar to the products sold by the Complainants.

That the disputed domain name was constructed by joining the suffix “pan” in Panama, where they submit to be domiciled, and the word “vision”, related to visual activities.

That the Respondent and her husband are subject to Panamanian Law and therefore are not compelled to submit themselves to any arbitration or conciliation procedure.

C. Supplemental Filing by the Complainant

On October 12, 2017, the Complainant submitted a supplemental filing to the Center, claiming the following:

That through an email communication dated October 1, 2017, the Respondent had asked the Complainants for the payment of five million dollars in exchange for the disputed domain name. That said price was in excess of the out-of-pocket costs directly related to the disputed domain name.

That the Respondent as the registrant of the disputed domain name, was subject to the jurisdiction of this administrative proceeding.

The Complainants filed Annex 10 as evidence of the offer to sell made by the Respondent, showing an email sent by the Complainants (September 25, 2017) asking the Respondent to desist from infringing the Complainants’ trademarks, and the Respondent’s reply (October 1, 2017), asking for five million dollars in exchange for the disputed domain name.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainants are requested to prove that each of the three following elements is satisfied:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) The disputed domain name was registered and is being used in bad faith.

Pursuant to Paragraph 11 of the Rules, the language of the proceedings, unless otherwise agreed by the parties, shall be the language of the Registration Agreement, which in this case is English.

The Response was filed in Spanish. The Complainants’ supplemental filing addresses the claims made by the Respondent on her Response email on October 5, 2017. These facts lead the Panel to believe that the Complainants or their counsel are able to understand Spanish. Moreover, the Complainants have not expressed any discomfort or disagreement with the fact that the Response was filed in Spanish.

Given the circumstances of the case, the Panel is satisfied that there is no need for the Respondent to translate her Response to English, since the Complainants or their counsel have shown to able to comprehend her Response. In such circumstances, requesting the Respondent to translate the Response would render this proceeding more onerous and lengthy than what the spirit of the Policy intends.

Regarding the Complainant’s supplemental filing, the Panel notes that the email communications shared between the parties on September 25, 2017 (sent by the Complainants’ counsel) and October 1, 2017 (sent by the Respondent’s husband) were sent after the Complaint had been filed. This means that Annex 10, submitted by the Complainants could not have been introduced as evidence along with the Complaint. The Panel finds the information and evidence submitted by the Complainants to be of relevance to this case and will hence take them into account in the analysis of the factors of the Policy. The Panel takes notice that the Respondent was served with the supplemental filing and its content, and did not reply to, or rebut the Complainants’ assertions.

A. Identical or Confusingly Similar

The Complainants proved to be the owners of several trademark registrations for PANAVISION in the United States and Panama, where the Respondent claims to be domiciled.

The disputed domain name <panavision.org> is identical to the Complainants’ trademark PANAVISION, as it incorporates said trademark in its entirety.

The addition of the gTLD “.org” holds no legal relevance to this case, as it does not diminish the confusing similarity between the trademark PANAVISON and the disputed domain name (see SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services, WIPO Case No. D2015-0565; Diageo p.l.c. v. John Zuccarini, WIPO Case No. D2000-0541; and Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc., WIPO Case No. D2014-1919).

In light of the above, the first element of the Policy is fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in a domain name:

(i) before any notice to the respondent of the dispute, the use by the respondent 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 you have 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 Complainants argue that the Respondent has not been authorized to use the Complainants’ trademark PANAVISION, or to register a domain name containing any such trademark.

The Complainants also claim that there is no proof that the Respondent has been known by the disputed domain name or by the trademark PANAVISION.

The Complainants deny that the Respondent’s use of the disputed domain name constitutes a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name, by claiming that the said domain name is being used to illegitimately attract potential customers of the Complainants to the Respondent’s website.

The above arguments establish a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. This fact shifts the burden of production to the Respondent (see Banco Itau S.A. v. Laercio Teixeira, WIPO Case No. D2007-0912; Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393; and Cellular One Group v. COI Cellular One, Inc., WIPO Case No. D2000-1521).

The Respondent claims that the disputed domain name was legally acquired from the Registrar, with the purpose of creating a website for posting videos and other information online.

The Respondent also claims that the disputed domain name was accidentally chosen by joining the suffix “pan”, as a reference to “Panama”, the country where the Respondent is allegedly domiciled, and the word “vision” as a reference to an optical activity.

The website to which the disputed domain name currently resolves, displays a stylized representation of the term “Panavision Internacional”, as well as two embedded videos of political content, and five hyperlinks to articles related to political subjects. The Respondent claims that her website was created for “hosting videos and other information”. However, the Respondent has not produced any convincing evidence as to the nature of the website, or the alleged legitimacy of her use of the disputed domain name (see Unibanco União de Bancos Brasileiros S.A. v. Vendo Domain Sale, WIPO Case No. D2000-067).

In Panavision International v. Toeppen, United States Court of Appeals for the Ninth Circuit 1998, 141 F.3d 1316, a United States court dealt with a similar problem: an argument made by the Defendant, claiming that the website to which the domain name <panavision.com> displayed aerial views of the City of Pana, Illinois.

In that case, the Defendant offered to sell the disputed domain name to the Plaintiff for USD 13,000. The court found that the Defendant’s conduct constituted an illegal use of the controverted domain name.

In this case, the Respondent suggests that her website is used in good faith, because it features content related to Panama, where she claims to be domiciled, hence the suffix “pan”. According to the evidence submitted by the Complainants, which has not been rebutted by the Respondent, the latter offered to sell the disputed domain name to the Complainants for 5 million dollars. This fact speaks for itself, and it overrides the Respondent’s alleged justification for her registration and use of the disputed domain name. The Respondent’s argument is simply not credible.

For the previous reasons, the second element of the Policy is fulfilled.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:

(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that the Complainant, for valuable consideration in excess of your 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 owner of the trademark or service mark from reflecting the 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 their website 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 the Respondent’s website or location or of a product or service on its website or location.

The Complainants held trademark registrations for PANAVISION in Panama, since at least 1972.

The trademarks PANAVISION have been held to be famous under previous procedures carried out under the Policy (see Panavision, Inc., Panavision International, L. P. v. Roomwithnet Systems (I) P.Ltd./ Eyecircus Studio Pvt.Ltd, WIPO Case No. D2005-0521; and Panavision International, L.P. and Panavision Inc. v. Domains By Proxy, LLC / Dan Frenkel, WIPO Case No. D2016-2550). This Panel agrees.

The Complainants argued that the Respondent knew of the existence of the trademark PANAVISION at the time when the Respondent registered the disputed domain name. The Respondent did not deny this accusation.

In accordance to the evidence submitted by the Complainants, on October 1, 2017, the Respondent sent an email communication to the Complainants stating the following:

“If you are desiring to obtain the domain name panavisión.org. we can sell you in 5 million US$. We bougth this domain legally from Godaddy and you are free to do what you want. We does not offer or sell any products or services similar to yours. If you cause us any prejudice for this, we will sue you for that. We are not going to do any of yours suggesting coming from this letter, and plse do not bother my client anymore.”

The Respondent’s conduct squarely falls within the scope of paragraph 4(b)(i) of the Policy. The Respondent has offered to to sell the disputed domain name to the Complainants for valuable consideration in excess of her documented out-of-pocket costs. The Panel finds that, given the circumstances of this case, the Respondent’s explanation of her alleged good faith use of the disputed domain name, claiming that it is a combination of the terms “pan”, for Panama, and “vision” to suggest a “view of Panama” is not credible (see analysis conducted in section 6 B, supra).

Such conduct constitutes clear and convincing evidence of bad faith registration and use (see World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Arla Foods Amba and Mejeriforeningen Danish Dairy Board v. Mohammad Alkurdi, WIPO Case No. D2017-0391).

In light of the above, the third element of the Policy has been fulfilled.

7. Decision

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 <panavision.org> be transferred to the Complainant.

Kiyoshi Tsuru
Sole Panelist
Date: November 19, 2017