Columbia Pictures Industries, Inc .v. [email protected]
+1.25255572uu
Case No. D2006-0952
1. The Parties
The Complainant is Columbia Pictures Industries, Inc., Culver City, California, United States of America, represented by Bryan Cave, LLP, United States of America.
The Respondent is [email protected] +1.25255572uu, KCPO, Hong Kong, Hong Kong,
SAR of China.
2. The Domain Name and Registrar
The disputed domain name <columbiapictures.com> is registered with OnlineNic,
Inc. d/b/a China-Channel.com.
3. Procedural History
The Complaintwas filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2006. On July 28, 2006, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On September 7, 2006, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 11, 2006. 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 3, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 10, 2006.
The Center appointed David Perkins, Sally M. Abel and Yong Li as panelists
in this matter on October 19, 2006. The Panel finds that it was properly constituted.
Each member of 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 wholly owned subsidiary of Sony Pictures Entertainment, Inc. The Complainant’s global operations are said to encompass motion picture production and distribution, acquisition and distribution of audio visual works in the home entertainment market, operation of studio facilities, development of new entertainment technologies, and distribution of audio visual works throughout the world.
The Complainant and its predecessors in interest, and associated entities have been engaged in the development and provision of various entertainment products and services under the COLUMBIA PICTURES trademark since 1924.
The Complainant is the registered proprietor of the following U.S. trademarks:
4.A.4 The Complainant also asserts common law trademark rights in the COLUMBIA and COLUMBIA PICTURES marks by virtue of the well-known status of those marks. By virtue of its registered and common law rights in those trademarks and the extensive and lengthy use of them, the Complainant asserts that they have acquired secondary meaning and consumer association identifying the Complainant’s quality goods and services.
4.A.5 The Complaint illustrates current use of the COLUMBIA PICTURES trademark in relation to material promoting two of its recent and highly successful motion pictures, “The Da Vinci Code” and “Spider-Man 3”.
In the absence of a Response, nothing is known about the Respondent except
that it is the registrant of the domain name in issue. That domain name was
created and registered on June 25, 2002.
5. Parties’ Contentions
A. The Complainant
Identical or Confusingly Similar
But for the COLUMBIA PICTURES trademark comprising two words and the domain name combining those two words into one <columbiapictures.com>; only the ‘.com’ designation has been added. The Complainant cites decisions under the Policy where those differences have been held to be immaterial and, accordingly, the domain name has been held to be identicalto the Complainant’s trademark.
Rights or Legitimate Interests
The Complainant’s case is as follows. First, they say that the Respondent
intentionally and wrongfully chose to register a domain name identical to the
COLUMBIA PICTURES trade name solely to trade on Complainant’s notoriety
and goodwill in that mark. Second, they say that in registering the domain name
in issue the Respondent intended and knew that its actions would deceive, mislead
and divert a large number of consumers seeking the Complainant’s services.
For example, consumers commonly expect to locate a company on the Internet by
typing in its trade name or trademark into the address line of the browser.
Cases both under the Policy (E. & J. Gallo Winery v. Hanna Law Firm,
WIPO Case No. D2000-0615 and Sears,
Roebuck and Co. v. Hanna Law Office, WIPO
Case No. D2000-0669) and under U.S. law (Panavision .v. Toeppen 141 F.
3D. 1316, 1325 (9th.(i2.1998)) are cited to illustrate where
Panelists and the U.S. Court respectively have made such a finding.
Third, the Complainant says that they have not licensed or otherwise authorised the Respondent to use the COLUMBIA PICTURES trademark in any respect. Fourth, the Complainant asserts that the Respondent cannot demonstrate any use of the domain name in issue in connection with a bona fide offering of goods or services. In that respect, the Complainant points to the website to which the domain name in issue resolves which misdirects consumers to other websites which offer goods and services which compete directly with Complainant’s goods and services.
Fifth, the Complainant says that the Respondent cannot show that it has been commonly known by the domain name in issue. Further, the Respondent has not sought or procured any registrations for any trade names, corporations, or trademarks for COLUMBIA PICTURES or the domain name itself with any Secretary of State or with the U.S. Patent and Trademark Office. Sixth, the Respondent is not making legitimate or fair use of the domain name in issue. To the contrary, the Respondent’s registration and use of that domain name is a deliberate action by the Respondent to misleadingly divert for its own commercial gain consumers and also to tarnish the Complainant’s valuable and well-known COLUMBIA PICTURES trademark. In other words, the Respondent has wrongfully misappropriated and infringed the COLUMBIA PICTURES trademark, passing itself off to the public as an entity which it is not and thereby unlawfully generating commercial traffic and consequential economic benefit to itself.
Put shortly, the Complainant’s case is that the Respondent cannot demonstrate any of the circumstances set out in paragraph 4(c) of the Policy to demonstrate rights or legitimate interests in the domain name in issue. Essentially, that case rests upon the well-known status of the Complainant’s COLUMBIA PICTURES trademark, the fact that the Respondent has no license or authority to use that trademark, and the nature of the mala fide use of the domain name in issue in infringement of that trademark.
Registered and Used in Bad Faith
The Complainant advances four bases for its case that the Respondent has registered
and is using the domain name in issue in bad faith. First, they say that
by its use of the domain name in issue, the Respondent is intentionally diverting,
for commercial gain, Internet users to a website offering products which compete
with those of the Complainant. This, Complainant says, is indicative of “opportunistic
bad faith”, citing General Optica, S.A. v. Alfredo Labadia Pardo, WIPO
Case No. D2000-0969 in that respect.
Second, the Complainant says that this use of the domain name in issue by the Respondent is designed to disrupt and harm the Complainant’s business. Not only is the Respondent making unlawful use of the COLUMBIA PICTURES trademark, but at the website to which the domain name in issue resolves unauthorised and infringing use is also made of other trademarks of the Complainant, including “The Da Vinci Code” and “Spider-Man 3”. Furthermore, because the website to which the domain name resolves also offers subject matter including pornography and “Intimate and Anonymous Sex”, the Respondent’s unlawful use of the COLUMBIA PICTURES trademark will tarnish that trademark.
Third, the Respondent’s total lack of any legitimate trademark or other intellectual property right to support the domain name in issue demonstrates bad faith in registering and using that domain name. Fourth, because the COLUMBIA PICTURES trademark is so famous and well-known, the Respondent must clearly have known from the outset that it could have no right to create or use a domain name incorporating that trademark.
These factors, the Complainant says, point to circumstances falling within paragraphs 4(b)(iii), and (iv) of the Policy and are conclusive of the Respondent’s registration and use of the domain name in issue in bad faith.
B. The Respondent
No Response has been filed by the Respondent.
6. Discussion and Findings
The Policy paragraph 4(a) provides that the Complainant must prove each of the
following in order to succeed in an administrative proceeding:
- that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- that the Respondent has no rights or legitimate interests in respect of the domain name; and
- that the domain name has been registered and is being used in bad faith.
As stated above, the Policy paragraph 4(c) sets out circumstances which, in particular
but without limitation, if found by the Panel to be proved shall demonstrate the
Respondent’s rights or legitimate interest in the domain name in issue.
The Policy paragraph 4(b) sets out circumstances which, again 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.
A. Identical or Confusingly Similar
The Complainant has established registered rights in the COLUMBIA PICTURES trademark, which date back over 30 years and to the COLUMBIA trademark which dates back almost 70 years. The domain name in issue is identical to the COLUMBIA PICTURES mark and, accordingly, the Complaint satisfies the first requirement of paragraph 4(a) of the Policy. It is not necessary to decide whether the domain name in issue is confusingly similar to the COLUMBIA trademark.
B. Rights or Legitimate Interests
In the absence of a Response, the Panel must consider whether the Complainant has made out its case under paragraph 4(a)(ii) of the Policy. In that respect, there is no evidence to suggest that the Respondent could establish any of the circumstances set out in paragraph 4(c) of the Policy. Given the well-known status of the Complainant’s COLUMBIA PICTURES trademark, not only in the United States but also worldwide – including Hong Kong where the Respondent is located – it is, in the Panel’s view, inconceivable that use of the domain name in issue could be made in connection with a bona fide offering of goods or services. Indeed, the website to which the domain name in issue resolves, offers products competing with those of the Complainant and also offers pornographic material and services. This evidence establishes to the satisfaction of the Panel an intent by the Respondent to divert consumers expecting to find the Complainant’s products and services. Such use of the domain name in issue is not legitimate or fair. Further, it is also calculated to tarnish the Complainant’s COLUMBIA PICTURES trademark. In the circumstances, the Complaint satisfies the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Where a Respondent fails – as in this case – to demonstrate rights to or legitimate interests in the domain name in issue, it typically follows that he will also fail to establish registration or use in good faith. In the Panel’s view, this is such a case and the Complaint also satisfies the third twin requirements of paragraph 4(a) of the Policy.
Based on the evidence advanced by the Complainant
set out in paragraphs 5A and 5B above, the Panel is satisfied that the Complainant
has made out a case under paragraphs 4(b)(iii) and (iv) of the Policy. In addition,
as noted in paragraph 6.3 above, the circumstances set out in paragraph 4(b)
of the Policy are not exhaustive of the circumstances indicating registration
and use in bad faith. In this case, the Complainant’s COLUMBIA PICTURES
mark is clearly a very well-known/famous mark worldwide. As such it falls into
the category of trademarks considered by the Panel in Telstra .v. Nuclear
Marshmallows,WIPO Case No. D2000-0003.
In that case other indicia evidencing use in bad faith were proposed
including - where the trademark in question is a well-known mark – the
impossibility of conceiving of a plausible circumstance in which the Respondent
could legitimately use the domain name incorporating that well-known trademark.
In this case the Panel cannot believe that the Respondent could have been unaware
of the Complainant’s well-known COLUMBIA PICTURES trademark when the domain
name in issue was created and, further, in the Panel’s view the Respondent
must have known that subsequent unauthorised use of that domain name could not
be legitimate.
7. Decision
For all the foregoing reasons, in accordance with
Paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the
domain name <columbiapictures.com> be transferred to the Complainant.
David
Perkins
Presiding
Panelist
Sally
M. Abel
Panelist
Yong
Li
Panelist
Dated: October 30, 2006
1Footnotes 1-4 First use
in commerce of the U.S. trademarks is claimed as from: September 15, 1937
