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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Twentieth Century Fox Film Corporation v. DVD Monthly
Case No. D2000-1355
1. The Parties
Complainant is Twentieth Century Fox Film Corporation located in Beverly Hills, CA 90213-0900, USA.
Respondent is DVD Monthly located in San Antonio, Texas, USA.
2. The Domain Names and Registrar
The domain names at issue are <homealone2dvd.com> and <plannetoftheapesdvd.com> (the "Domain Names").
The registrar is Network Solutions, Inc., located in Herndon, Virginia USA.
3. Procedural History
This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Rules").
Complainant submitted its complaint in this proceeding on October 9, 2000. The Registrant was notified of the Complaint but has not filed a Response.
On January 3, 2001, the WIPO Arbitration and Mediation Center appointed a panel comprised of Sally M. Abel, Richard G. Lyon and Mark V.B. Partridge.
4. Factual Background
Complainant is a leading entertainment and media company that produces well-known television and motion picture properties, including the successful motion pictures HOME ALONE 2 and PLANET OF THE APES. These motion pictures have been widely distributed and advertised on an international scale and have been the subject of extensive media coverage.
PLANET OF THE APES and HOME ALONE are the subject of various US and foreign trademark registrations of Complainant that predate the Domain Names.
One of Complainant’s methods of motion picture promotion is the development of web sites using domain names that consist of the movie title followed by <dvd.com >. As examples, Complainant owns registrations for the domain names <homealonedvd.com>, <annaandthekingdvd.com>, <dieharddvd.com> and others. Complainant asserts that it is the only major motion picture studio that follows the practice of registering and using domain names in the form of "movietitledvd.com".
On January 28, 1999, Respondent registered the Domain Names. Respondent has also registered other domain names containing movie titles, including <siegedvd.com>, <enemyminedvd.com>, <risingsundvd.com>, <grandcanyondvd.com>, <onefinedaydvd.com> and others. It appears that Respondent only registered domain names in the format "movietitledvd.com" that match the movie titles of motion pictures owned by Complainant, and not those of any other major motion picture producer.
In June 1999, Complainant objected to Respondent’s domain name registrations and was advised by Respondent’s counsel that Respondent intended to use the Domain Names for web sites that would provide reviews of films released on DVD. At a later date, the domain name <homealone2dvd.com> was listed on an auction site for a minimum bid of $18,750. On February 12, 2000, Respondent advised Complainant that he had "purchased [the Domain Names] to help gain exposure to [his] site" and would not transfer the Domain Names to Complainant because it had not asked "nicely."
5. Parties’ Contentions
Complainant contends that the Domain Names are confusingly similar to its marks, that Respondent has no rights or legitimate interests in the disputed domain name, and that Respondent has registered and used the domain name in bad faith. Respondent has not disputed these contentions. (Footnote 1)
To obtain relief under the ICANN Uniform Domain Name Dispute Resolution Policy, Paragraph 4(a) of the Policy requires the complainant to prove each of the following:
(1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) that the respondent has no rights or legitimate interest in the domain name; and
(3) the domain name has been registered and used in bad faith.
A. Similarity between Domain Names and Trademark
Complainant has established prior rights in the marks PLANET OF THE APES and HOME ALONE 2. The Domain Names are confusingly similar to those domain names. The addition of the generic terms "dvd" and ".com" are not distinguishing features to avoid a finding of confusing similarity.
B. Respondent’s Legitimate Interest in Domain Names.
The record indicates that Respondent lacks any right or legitimate Interest in the Domain Names. Respondent was not previously known by either name and has not made any noncommercial or fair use of the Domain Names. In addition, there is no evidence that Respondent made any demonstrable preparations to use the Domain Names for a bona fide offering of goods or services before notice of this dispute. The mere assertion that it intended to use the Domain Names for sites providing movie reviews is insufficient to show demonstrable preparations. Moreover, given the fact that Respondent only registered domain names in the "movietitledvd.com" format that matches Complainant’s motion pictures undermines its claim for bona fide use. Since Complainant is the only major motion picture studio using that format, Respondent’s registration of those domain names instead seems to be any act of cybersquatting intentionally aimed at Complainant and its movies.
C. Bad Faith Registration and Use
The record includes several indications of bad faith registration and use. First, Respondent has listed the domain name <homealone2dvd.com> for auction at a minimum bid of $18,750, an amount far in excess of any out-of-pocket expenses directly related to registration. Since Respondent lacks any legitimate interest in the domain name, we find that this is evidence of bad faith registration and use under Paragraph 4(b)(i) of the Policy.
Second, Respondent's pattern of selecting only those movies produced by Complainant appears to be expressly directed at preventing Complainant from following its standard practice of incorporating the names of its movies into domain names with "dvd.com." This is evidence of bad faith registration and use under Paragraph 4(b)(ii) of the Policy.
Finally, it appears that Respondent registered the Domain Names with the intent of using them to attract Internet users to its web site for commercial gain based on confusion with Complainant’s marks, contrary to Paragraph 4(b)(iii) of the Policy. Respondent admitted that it selected the Domain Names to increase the exposure to his intended site, which virtually admits making use of Complainant's marks to do so. It is clear that Internet users would initially confuse the Domain Names with Complainant, even if content on Respondent’s site included disclaimers of any relationship with Complainant. Moreover, Respondent’s alleged purpose of providing movie reviews does not justify the use of Complainant’s marks as domain names. Respondent could select a more apt and non-confusing name for a movie review site, if that were its true intent.
We conclude that the Domain Names are confusingly similar to Complainant’s marks; that Respondent lacks any right or legitimate interest in the Domain Names; and (c) that Respondent registered and used the Domain Names in bad faith. Accordingly, we find in favor of Complainant and grant Complainant’s request for transfer of the Domain Names <homealone2dvd.com> and <planetoftheapesdvd.com>.
Mark V B Partridge
Sally M Abel
Richard G Lyon
Dated: January 16, 2001
1. Respondent has not submitted a formal response to the Complaint, but the Panel has considered several email communications between Complainant and Respondent that are included as attachments to the Complaint.