WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Passion Pictures Limited v. WhoisGuard Inc. / George Jercich
Case No. D2018-1188
1. The Parties
The Complainant is Passion Pictures Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Stevens and Bolton LLP, United Kingdom.
The Respondent is WhoisGuard Inc. of Panama, Panama / George Jercich of Amsterdam, Netherlands.
2. The Domain Name and Registrar
The disputed domain name <pasion-pictures.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2018. On May 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 30, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 5, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on June 5, 2018.
The Center verified that the Complaint together with the amendment to 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 June 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 26, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 27, 2018.
The Center appointed Nicholas Smith as the sole panelist in this matter on July 5, 2018. 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 a film production company, established in the United Kingdom in 1987, with studios in London, Melbourne, Paris and New York City. The Complainant has produced a number of feature documentaries including, “One Day in September” and “Searching for Sugar Man”.
The Complainant is the owner of, amongst other marks, a United Kingdom trade mark registration for the mark PASSION (the “PASSION Mark”), which was registered on August 8, 2006 (registration number UK00002319102) for services in class 41 and an Australian registered trade mark for PASSION PICTURES (the “PASSION PICTURES Mark”), which was registered on January 9, 2015 (registration number 1668378) for goods and services in classes 9, 35 and 41.
The Domain Name was registered on January 2, 2018 and is presently inactive. The evidence in the Complainant is that the Respondent appears to use the Domain Name <pasion-pictures.com> for emails in the format “[name]@pasion-pictures.com” where it sends emails purporting to be official emails from representatives of the Complainant, giving directions for the payment of funds to accounts unconnected to the Complainant.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s PASSION and PASSION PICTURES marks;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the PASSION PICTURES Mark. The Domain Name contains a deliberate misspelling of the PASSION PICTURES Mark by removing the letter “s”. It is self-evidently almost identical to the PASSION PICTURES Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent does not use the Domain Name for a bona fide purpose or legitimate noncommercial purpose. Rather the Domain Name is used for emails impersonating the Complainant which does not grant the Respondent rights or legitimate interests in the Domain Name.
The Domain Name was registered and is being used in bad faith. The Domain Name is being used to create emails to impersonate the Complainant directing that certain amounts be paid to bank accounts other than those operated by the Complainant. This is perpetrating a criminal offence.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the PASSION PICTURES Mark, having registrations for PASSION PICTURES as a trade mark in Australia.
The Domain Name consists of a misspelling of the PASSION PICTURES Mark, removing the first “s” and adding a dash between the words “pasion” and “pictures”, to better imitate the Complainant’s website at “www.passion-pictures.com”. The Panel finds that neither the misspelling, nor the addition of the dash between the words, prevents a finding of confusing similarity between the PASSION PICTURES Mark and the Domain Name. The Panel finds that the Domain Name is confusingly similar to the Complainant’s PASSION PICTURES Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you [the respondent] of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.” (Policy, paragraph 4(c)).
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the PASSION or PASSION PICTURES Marks or a mark similar to the PASSION or PASSION PICTURES Marks. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Rather it appears from the evidence submitted by the Complainant that the Respondent is using the Domain Name to send spoof emails, passing itself off as a representative of the Complainant and directing that payments be made to particular accounts unconnected to the Complainant. Such conduct is fraudulent and is not a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the prima facie case that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(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 to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) The respondent has registered the domain name in order to prevent the owner of the trade mark 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 domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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. (Policy, paragraph 4(b)).
The Panel finds that the Respondent was aware of the Complainant at the time the Domain Name was registered. The Domain Name has been used to create email accounts from which the Respondent sends emails purporting to be from the Complainant. The Respondent does not provide, nor is it apparent to the Panel, any reason why the Domain Name was registered other than by reference to the Complainant. The registration of the Domain Name in awareness of the Complainant and its rights in the PASSION and PASSION PICTURES Marks and in the absence of rights or legitimate interests amounts to registration in bad faith.
The Respondent is using the Domain Name to send spoof emails seeking to mislead recipients as to the identity of the sender. Such conduct is deceptive, illegal and in previous UDRP decisions has been found to be evidence of registration and use in bad faith, see The Coca-Cola Company v. Marcus Steiner, WIPO Case No. D2012-1804. The Panel, noting that the circumstances set out in Policy, paragraph 4(b) are not exhaustive, finds that the Respondent is using the Domain Name in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under 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 Domain Name <pasion-pictures.com> be transferred to the Complainant.
Date: July 17, 2018