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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Columbia Pictures Industries, Inc. v. North West Enterprise, Inc.

Case No. D2006-0951

 

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 North West Enterprise, Inc., Santa Fe Springs, California, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names <columbiapicture.net> and <columbiapictures.org> (the “Domain Names”) are registered with OnlineNic, Inc. d/b/a China-Channel.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2006. On July 28, 2006, the Center transmitted by e-mail to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain names at issue. On August 21, 2006, OnlineNic, Inc. d/b/a China-Channel.com transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the registrant. The Center verified that 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 August 22, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 13, 2006.

The Center appointed Douglas M. Isenberg, Mark Partridge and James H. Grossman as panelists in this matter on October 11, 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

Complainant states that it is a wholly owned subsidiary of Sony Pictures Entertainment Inc. and that it is engaged globally in the motion picture and related industries. Complainant states that it, or its predecessors in interest and associated entities, has been using the trademark COLUMBIA PICTURES since at least 1924. In support thereof, Complainant has provided copies of printouts from the United States Patent and Trademark Office’s Trademark Electronic Search System showing Complainant as owner of the following trademarks (the “COLUMBIA PICTURES Trademarks”):

- COLUMBIA; U.S. Reg. No. 344,799; first used in commerce September 15, 1936; registered April 6, 1937.

- COLUMBIA PICTURES; U.S. Reg. No. 976,848; first used in commerce 1961; registered January 15, 1974.

- COLUMBIA PICTURES; U.S. Reg. No. 831,471; first used in commerce April 28, 1966; registered July 4, 1967.

- COLUMBIA; U.S. Reg. No. 1,975,999; first used in commerce June 1993; registered May 28, 1996.

Each of the Domain Names was created on May 18, 2006.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that each of the Domain Names is identical or confusingly similar to the COLUMBIA PICTURES Trademarks and that the slight differences between the Domain Names and the COLUMBIA PICTURES Trademarks are irrelevant.

Complainant contends that Respondent “intentionally and wrongfully chose Complainant’s identical mark as a domain name” “solely to trade upon Complainant’s notoriety and goodwill”. Complainant further contends that Respondent “is not in any way associated with Complainant”, that Respondent has never “made any legitimate offering of goods or services under the COLUMBIA PICTURES Trademarks”, that Respondent has never “been commonly known as COLUMBIA PICTURES”, and that Respondent “is not making any legitimate non-commercial use of the Domain Names”.

Complainant contends that “Respondent is intentionally diverting, for commercial gain, Internet users to a competing website”. Complainant provides as exhibits printouts of websites associated with the Domain Names, which websites contain numerous links, including for several products related to “The Da Vinci Code”, a movie associated with the COLUMBIA PICTURES Trademarks that Complainant describes as “the top-earning film during its May 19, 2006 weekend” (US $77 million). Complainant further contends that Respondent’s conduct “is indisputably designed to disrupt and harm Complainant’s business” by “divert[ing] unsuspecting Internet users to Respondent’s website”. Complainant further contends that Respondent “plainly knew of Complainant’s long and continuous use of” the COLUMBIA PICTURES Trademarks. Finally, citing Save the Children Federation, Inc. v. Steve Kerry dba North West Enterprise, Inc., WIPO Case No. D2006-0388, Complainant contends that Respondent has also conducted business as “Steve Kerry” and “WWW Enterprise, Inc.” and has lost 15 previous cases under the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and (iii) the Domain Names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

As to whether the Domain Names are identical or confusingly similar to Complainant’s COLUMBIA PICTURES Trademarks, the relevant comparison to be made is with the second-level portion of the Domain Names only (i.e., “columbiapictures” and “columbiapicture”), as it is well-established that the top-level domain (i.e., “.net” and “.org”) should be disregarded for this purpose. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, NAF Case No. FA0008000095491 (“[N]either the beginning of the URL (“http://www.”), nor the TLD (“.com”) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”).

With respect to the domain name <columbiapictures.org>, “columbiapictures” is identical to more than one of the COLUMBIA PICTURES Trademarks, as the absence of the space between the two words is irrelevant. Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300 (“elimination of the space between the words… [is a] difference[] without legal significance”).

With respect to the domain name <columbiapicture.net>, the absence of the letter “s” does nothing to decrease the domain name’s confusing similarity to the COLUMBIA PICTURES Trademarks. See, e.g., Staples, Inc., Staples The Office Superstore, Inc., and Staples Contract and Commercial, Inc. v. SkyLabs Corporation and DL Enterprises, WIPO Case No. D2004-0220 (finding confusing similarity despite a domain name’s “deletion of the plural”).

As a result, each of the Domain Names is confusingly similar to the Complainant’s COLUMBIA PICTURES Trademarks, and the Panel is convinced that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainant alleges that Respondent “is not in any way associated with Complainant”, that Respondent has never “made any legitimate offering of goods or services under the COLUMBIA PICTURES Trademarks”, that Respondent has never “been commonly known as COLUMBIA PICTURES”, and that Respondent “is not making any legitimate non-commercial use of the Domain Names”.

Under the Policy, “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”. “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, paragraph 2.1, (visited October 19, 2006).

Accordingly, as a result of Complainant’s allegations and without any evidence of Respondent’s rights or legitimate interests in the Domain Names, the Panel is satisfied that the Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by, among other things, evaluating four (non-exhaustive) factors set forth in paragraph 4(b) of the Policy:

(i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or

(ii) the registrant has registered the 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 registrant has engaged in a pattern of such conduct; or

(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s 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 registrant’s website or location or of a product or service on the registrant’s website or location.

Web pages of the type used by the Respondent in connection with the Domain Names – sometimes known as an “online domain monetization system”, a “monetized parking page” or a “paid link farm service” – have become an “increasingly popular way for domain name registrants to profit from their activity with little effort”. Wal-Mart Stores, Inc. v. Whois Privacy, Inc., WIPO Case No. D2005-0850. Such uses do not necessarily create bad faith. For example, “where the links on such a page are not competitive with or disruptive to a relevant trademark owner, or confusing to visitors, such activity may not violate the Policy”. Id. Here, however, given the commercial use of other trademarks associated with Complainant on the websites used in connection with the Domain Names and the lack of any indication that the websites are not associated with Complainant, it is likely that a website visitor would be led to such website, or make decisions once he or she has arrived at such website, based on a mistaken belief that Complainant is the source of the website or that Complainant has sponsored, is affiliated with or has endorsed the website – a result that constitutes bad faith under paragraph 4(b)(iv) of the Policy.

Furthermore, “the Domain Name[s] [are] so obviously connected with the Complainant and its services that [their] very use by someone with no connection to the Complainant suggests ‘opportunistic bad faith’”. Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492.

Therefore, the Panel is satisfied that the Complainant has proven the third element required by the Policy.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <columbiapicture.net> and <columbiapictures.org> be transferred to the Complainant.


Douglas M. Isenberg
Presiding Panelist

Mark Partridge
Panelist

James H. Grossman
Panelist

Dated: October 23, 2006

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2006/d2006-0951.html

 

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