The Complainant is Panavision International, L.P. and Panavision Inc. of Woodland Hills, Los Angeles, California, United States of America, represented by Bryan Cave Leighton Paisner, LLP, United States of America (“United States”).
The Respondent is muzhonglin of Tianjin, China.
The disputed domain name <prasadpanavision.com> is registered with Xin Net Technology Corp. (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2018. On June 21, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 22, 2018, 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.
On June 26, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On the same day, 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 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 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 23, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 24, 2018.
The Center appointed Rachel Tan as the sole panelist in this matter on July 31, 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.
The Complaint is filed in the joint names of Panavision International, L.P. and its parent company Panavision Inc. Since 1954, and to this day, the Complainant has and continues to manufacture and supply cinematography equipment which incorporates its own range of proprietary prime and zoom lenses, to the television and motion picture industries on a global scale. The Complainant’s imaging equipment is used by filmmakers and production crews worldwide to photograph films and television series.
The Complainant trades under the PANAVISION trade mark and owns a sizeable portfolio of registrations worldwide. In particular, the Complainant holds the following registrations:
PANAVISION (Stylised), United States Registration No. 627,362, registered on May 22, 1956, in International Class 09;
PANAVISION, United States Registration No. 845,014, registered on February 27, 1968, in International Class 16;
PANAVISION (Stylised), United States Registration No. 1,972,238, registered on May 7, 1996, in International Class 09;
PANAVISION, United States Registration No. 3,447, 278, registered on June 17, 2008, in International Classes 09, 37 and 41;
PANAVISION, China Registration No. 349580, registered on May 30, 1989, in International Class 11;
PANAVISION, China Registration No. 3450163, registered on January 7, 2008, in International Class 41; and
PANAVISION, China Registration No. 3450164, registered on December 21, 2007, in International Class 9.
The Complainant holds numerous domain names incorporating the PANAVISION trade mark, both under the generic Top-Level Domains (“gTLDs”) and country code Top-Level-Domains (“ccTLDs”): <panavision.com>, <panavision.co.uk>, <panavision.net>,and many others.
The disputed domain name was registered on April 22, 2018. The disputed domain name resolves to an active website with advertisements as well as city information about Julu county, a small county in Hebei, China. The website’s content is in the Chinese language.
The Complainant contends that the disputed domain name is identical or confusingly similar to the PANAVISION trade mark, the Respondent has no rights or legitimate interests with respect to the disputed domain name, and that the disputed domain name was registered and is being used in bad faith. The Complainant requests transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
Initially, the Panel must address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The panel may choose to write a decision in either language, or request translation of either party’s submissions.
In this case, the Registrar has confirmed to the Center that the language of the Registration Agreement is Chinese. However, the Complainant has requested that English be adopted as the language of the proceeding.
The Respondent did not comment on the language of the proceeding. The Center proceeded to issue its case-related communications to the Parties in both English and Chinese. The Center decided to accept the Complaint as filed in English, accept a Response in either English or Chinese, and appoint a Panel familiar with both languages.
It is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Panel having considered the circumstances finds that English shall be the language of this proceeding. The reasons are set out below:
(a) The Complainant is a company based in the United States. Requiring the Complainant to submit documents in Chinese would lead to delay and cause the Complainant to incur translation expenses;
(b) The Respondent has recently registered numerous domain names comprising of English words which indicates a level of comprehension of the language;
(c) Even if the Respondent does not possess a sufficient command of English to understand the Complaint, there were ample opportunities for the Respondent to raise an objection. The Center notified the Parties in English and Chinese regarding the language of the proceeding, but the Respondent did not reply; and
(d) The Respondent has failed to participate in the proceeding and has been notified of its default. The Complaint has been submitted in English. No foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English.
On the basis of the facts and evidence introduced by the Complainant, and with regard to paragraphs 4(a), (b) and (c) of the Policy, the Panel concludes as follows:
The Panel is satisfied by the evidence produced that the Complainant has the rights required by the Policy in the PANAVISION trade mark.
The disputed domain name is <prasadpanavision.com>, of which the gTLD designation “.com” is accepted to be a technical requirement of a domain name registration that can be disregarded. The remaining “prasadpanavision” wholly encompasses the Complainant’s PANAVISION trade mark.
As one UDRP panel put it in the case Alfred Dunhill, Inc. v. Registration Private, Domains By Proxy, LLC / Abdullah Altubayieb, WIPO Case No. D2017-0209, (<richarddunhill.com>):
“For the determination of confusing similarity under paragraph 4(a)(i) of the Policy, the threshold is conventionally modest, requiring an objective assessment of whether, for example, the trademark is clearly recognisable in the disputed domain name, even in the presence of additional words or strings.”
The Panel finds the disputed domain name to be easily recognised as two words, namely “prasad” and “panavision”, in which the Complainant’s PANAVISION trade mark appears prominently. Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s PANAVISION trade mark.
Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy.
The Complainant contends that the Respondent is not associated with the Complainant, nor has it been authorized or licensed to use the PANAVISION trade mark. The Complainant further contends that the PANAVISION trade mark is well-known throughout the world and has been in use for decades. The Complainant is not aware of the Respondent being “commonly known” by the disputed domain name or having attempted to procure company or trade mark registrations for “Panavision” or “Prasadpanavision”. Lastly, the disputed domain name is being used to redirect Internet users to the Respondent’s imposter website for commercial gain.
The Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the burden of production shifts to the Respondent. See International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683 (<thecharminghotel.com>).
The Respondent, muzhonglin, is an individual from China. There is no evidence to suggest that the Respondent is commonly known by the disputed domain name. In this case, the disputed domain name resolves to a website containing advertisements referring to the Venetian and Sands integrated resorts in Macao as well as an information forum for Julu county, in Hebei, China. The content includes city information about Julu county, job recruitment, housing transactions, discount coupons and promotions. The website appears to be a facsimile of the website “www.julu.ccoo.cn”.
The Panel concurs with the Complainant that the Respondent is opportunistically taking advantage of the PANAVISION trade mark, for its own commercial purposes, when it uses the disputed domain name to divert traffic to its own website without authorization.
The Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the burden of production shifts to the Respondent. However, the Respondent has failed to provide the Panel with any evidence set forth in paragraph 4(c) of the Policy, from which the Panel might conclude the Respondent’s rights or legitimate interests in the disputed domain name.
Accordingly, the Complainant has satisfied the second element under paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy sets out four non-exhaustive circumstances which would constitute evidence of registration and use of a domain name in bad faith.
The Panel notes that “Panavision” is a name coined by the Complainant. The first use in trade of the Complainant’s “Panavision” name began over 60 years ago. Since then, the Complainant has supplied cinematography equipment to the film and television industries worldwide, including customers in the Chinese market. The PANAVISION trade name and trade mark appears in the credits of motion picture films and television series broadcast around the world, and in China. Moreover, this name has been extensively registered as a trade mark in many countries, including in China, where the Respondent resides. Consequently, the PANAVISION trade mark has acquired a degree of fame in China and in many countries around the world.
The disputed domain name was registered well after the registration of the Complainant’s PANAVISION trade mark. A cursory Internet search would have disclosed the Complainant’s worldwide registration and use of the PANAVISION trade mark. It is somewhat curious that the Respondent selected a domain name comprised of “Panavision” prefixed by the Hindi word “Prasad” which happens to be the trade name of one of the Complainant’s authorized distributors, Prasad Film Laboratories. In any case, the Respondent has not offered any credible explanation or evidence on why the disputed domain name was chosen and registered.
The selection by the Respondent of a domain name which contains in its entirety the Complainant’s trade mark is unlikely to be a coincidence. The Respondent is also using the disputed domain name for a website which posts advertisements of resorts in Macao and an information forum for a small county in a Northern Chinese province. These facts lend weight to the Complainant’s assertion that the Respondent has sought to intentionally capture traffic from Internet users to generate commission for its own financial gain.
Based on the above facts, it is implausible to contemplate of any good faith use to which the disputed domain name may be put by the Respondent.
The Respondent has kept silent in the face of the Complainant’s allegations of bad faith. Considering the Respondent’s lack of rights of legitimate interests, and all the facts and circumstances of the case, the Panel concludes that the Respondent has registered and used the disputed domain name in bad faith.
Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) 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 disputed domain name <prasadpanavision.com> be transferred to the Complainant.
Rachel Tan
Sole Panelist
Date: August 14, 2018
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