WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Panavision International, L.P.; Panavision Inc. v. Hu Shu Yuan, Shanghai panavision electronics technology Co,. LTD
Case No. D2018-1484
1. The Parties
The Complainants are Panavision International, L.P. of Woodland Hills, Los Angeles, United States of America (“United States”); Panavision Inc. of Woodland Hills, Los Angeles, United States, represented by Bryan Cave Leighton Paisner, United States.
The Respondent is Hu Shu Yuan, Shanghai panavision electronics technology Co,. LTD of Shanghai, China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <panavisiontech.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (previously HiChina Zhicheng Technology Ltd.) (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2018. On July 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 5, 2018, 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 the Complainant on July 12, 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 amended Complaint on July 12, 2018.
On July 12, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On July 12, 2018, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 the Respondent of the Complaint, and the proceedings commenced on July 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2018. The Respondent sent an email responding to the Complaint on July 23, 2018. On August 10, 2018, the Center notified the Parties that it will proceed to appoint the Panel.
The Center appointed Douglas Clark as the sole panelist in this matter on August 16, 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 joint Complainants are two related American motion picture equipment companies that specialize in camera and lenses. For ease of reference, hereinafter, they are referred to as the Complainant. The Complainant has its headquarters in Los Angeles, United States. The Complainant provides equipment rental services worldwide including in United States and China,.
The Complainant’s camera and video lenses have been used by renowned filmmakers in the world and famous movies such as Dunkirk, Wonder Woman, Star Wars and Guardians of the Galaxy.
The Complainant is the owner of PANAVISION trademark in over 70 countries, including United States Registration No. 627362 registered on May 22, 1956; United States Registration No. 845014 registered on February 27, 1968, Canada Registration No. 620379 registered on September 22, 2004, Australia Registration No. 226660 registered on April 26, 1972, China Registration No. 349580 registered on May 30, 1989, China Registration No. 3450163 registered on January 7, 2008 and Hong Kong, China, Trade Mark Registration No. 19691275, registered on March 3, 1990.
The Complainant is also the owner of 100 domain names that includes <panavision.com>, <panavisioncamera.com> and <panavision-inc.com>, to name a few.
The Respondent is an individual from Shanghai, China. The information provided by the Registrar of the disputed domain name after the Complaint was filed was that the Respondent’s organization was Shanghai panavision Electronics Technology Co Ltd.
The disputed domain name was registered on March 5, 2018. The disputed domain name does not resolve to an active website.
5. Parties’ Contentions
Identical or Confusingly Similar
The Complainant contends that the disputed domain name <panavisiontech.com> and the trademark PANAVISION are confusingly similar. The disputed domain name contains PANAVISION in its entirety as the distinctive part of the disputed domain name. The additional English word “tech” is a non-distinctive word that is generally disregarded when making a comparison under the first element.
No rights or legitimate Interests
The Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for the trademark PANAVISION. It, therefore, has no rights or legitimate interests in the disputed domain name.
Registered and used in bad faith
The Complainant submits that there is no doubt that before registration of the disputed domain name the Respondent knew of the Complainant’s rights in the PANAVISION trademark given its worldwide reputation and the Respondent acquired the disputed domain name to disrupt the business of the Complainant and to prevent the Complainant from reflecting its mark in a corresponding domain name.
The Respondent responded to the Complaint by way of email on July 23, 2018. The Respondent stated that that it does not accept the Compliant in English and does not understand English.
The Respondent submits that the disputed domain name was created for its company that deals in technology products in foreign trade.
The disputed domain name and PANAVISION are entirely different and the Respondent has never heard of the Complainant.
The Respondent also stated that it should be compensated for its time in dealing with this matter.
6. Discussion and Findings
6.1 Language of the Proceedings
The language of the Registration Agreement is Chinese.
The Complainant requests that the language of proceedings be English on the grounds that the Complainant does not understand or speak Chinese language; the obligation to translate all case relevant documents would cause unnecessary burden to the Complainant and procedural delay and that the Respondent can understand English because the words “panavision” and “tech” are English words.
The Respondent in its email of July 23, 2018 requested the language of proceedings be Chinese and stated it did not understand English.
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Center made a preliminary determination to:
(1) accept the Complaint as filed in English;
(2) accept a Response in either English or Chinese;
(3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceedings lies with this Panel, having regard to the circumstances of the administrative proceeding.
The Respondent did not respond to the Center’s preliminary determination.
The Respondent states that it is a technology foreign trading company. Any foreign trading company, particularly one dealing in technology products, should have the ability to handle matters in English. In addition, the Panel notes the Parties contentions regarding their respective requests. Further, the Panel considers the merits of the case to be strongly in favour of the Complainant. Translating the Complaint would cause unnecessary delays and expense. These factors lead the Panel to determine to follow the Center’s preliminary determination. As the only substantive pleading before the Panel is in English, the Panel will render its decision in English.
6.2 Substantive Issues
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(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 use in bad faith.
A Identical or Confusingly Similar
The disputed domain name <panavisiontech.com>, other than the additional word “tech” and the generic Top-Level-Domain (“gTLD”) “.com” is identical to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s PANAVISION mark in full and the additional word “tech” is descriptive. The gTLD may be disregarded for the purposes of assessment under the first element. The disputed domain name is, therefore, confusingly similar to the Complainant’s trademark.
The first element of paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests. Section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Complainant is internationally well known and owns numerous trademarks worldwide. The Respondent has no business or any kind of relationships (licensor, distributor) with the Complainant.
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent responded to the Complaint and claimed that it engages in the business of technology products and foreign trade but it has not demonstrated that it has been commonly known by the disputed domain name. The only indication that it is known by the name “Panavision” is that the registrant’s organization in the WhoIs information appears to be “Shanghai panavision electronics technology Co,. LTD” and that is not enough as to arise rights or legitimate interests without other relevant evidence. Yet, no evidence has been submitted to prove the actual relation between the Respondent and “Shanghai panavision electronics technology Co,. LTD”. The Respondent also failed to present any other evidence to establish its rights or legitimate interests. None of the circumstances in paragraph 4(c) of the Policy are present in this case.
Considering the evidence provided by the Complainant and the Respondent’s Response, the nature of the disputed domain name and the fact that the Respondent was granted neither a license nor an authorization to make any use of the Complainant’s trademark, the Panel finds the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
The second element of paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name <panavisiontech.com> was registered in bad faith and is being used in bad faith.
Based on the evidence, the Panel has no hesitation in finding that the disputed domain name <panavisiontech.com> was registered in bad faith and is being used in bad faith. The Panel is of the view that the Respondent must have known of the Complainant when it registered the disputed domain name given the worldwide fame of the Complainant.
While the disputed domain name has not yet been used, this does not prevent a finding of bad faith. Having examined all the circumstances of the case the Panel finds that the Respondent registered and is using the disputed domain in bad faith. (See section 3.2 of the WIPO Overview 3.0).
The third part of the paragraph 4(a) of the Policy is therefore satisfied.
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 <panavisiontech.com> be transferred to the Complainant.
Date: September 3, 2018