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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
United Artists Theatre Circuit, Inc. v. Domains for Sale Inc.
Case No. D2002-0005
1. The Parties
Complainant is United Artists Theatre Circuit, Inc. ("Complainant" and "United"), is a Maryland corporation with its principal place of business at 9110 E. Nichols Avenue, Suite 200, Englewood, Colorado, USA.
Respondent is Domains For Sale Inc. ("Respondent" and "Domains") located at 5444 Arlington Ave., New York, New York, USA.
2. The Domain Name and Registrar
The domain name at issue is <unitedartiststheatres.com> (the "Domain Name"). The registrar is Tucows, Inc. (the "Registrar"), 96 Mowat Avenue, Toronto, Ontario, Canada.
3. Procedural History
On January 3, 2002, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint of Complainant in hardcopy. On January 4, 2002, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. On January 8, 2002, the Center received the Complaint via email. The Complainant paid the required fee.
On January 8, 2002, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent's name.
The Center verified that the Complaint satisfies the formal requirements of the ICANN 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").
On January 9, 2002, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with a copy of the Complaint, and copied to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.
On January 31, 2002, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.
On February 14, 2002, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Sole Panelist"), the Center notified the parties of the appointment of a single-member panel consisting of the Sole Panelist.
4. Factual Background
United is a long-established company that has been using the trade name and service mark "United Artists Theatres" (the "Trademark") throughout the United States for more than seventy-five years. United was founded in 1926, by several Hollywood actors and producers, including Samuel Goldwyn, Douglas Fairbanks, and Mary Pickford, and has operated continuously since then. United currently operates nearly 1,600 screens at 222 theatres.
United owns the domain name <uatc.com> and operates a website at "www.uatc.com", offering movie clips, theatre locations, and other information of interest to its customers and potential customers. United also owns other domain names incorporating its marks, including but not limited to: <uatc.info>; <unitedartiststheatres.info>; <unitedartiststheaters.info>; <uatheatres.info>; <uatheaters.info>; <satellitetheatrenetwork.info>; <satellitetheaternetwork.info>; and <satellitetheaternetwork.biz>.
Beginning at least as early as December 19, 2001, and continuing nearly uninterrupted through the date of this Complaint, the Respondent used the website "www.unitedartiststheaters.com" to post content under the heading "Abortion Is Murder." The content includes, among other things, photographs purportedly showing aborted fetuses and anatomical diagrams of abortion procedures that many of Complainant’s customers and potential customers may find highly offensive. The "www.unitedartiststheaters.com" webpage contains links to a site under the domain name <abortionismurder.org>.
On December 20, 2001, the Respondent temporarily replaced the "Abortion Is Murder" content at <unitedartiststheatres.com> with content that appeared to serve the sole purpose of marketing and selling the Domain Name at issue in this proceeding, <unitedartiststheatres.com>. The page read: "This Domain is For Sale / $1500 / or Best Offer / BUY IT NOW Before someone else does!" The webpage also provided a link to a PayPal page hosted at "www.paypal.com", which allowed a prospective purchaser to remit payment electronically to the e-mail address "Tomk668@aol.com", which is also the email address for the Respondent’s administrative, technical, and billing contacts. The Respondent stated, on the "www.unitedartiststheatres.com" webpage, that "We only sell domains."
5. Parties’ Contentions
A. Complainant’s contentions
i. Complainant contends that it has common law rights in the Trademark UNITED ARTISTS THEATRES. Complaint asserts that under U.S. law, actual use of a designation as a mark creates rights and priority over junior users. J. Thomas McCarthy, McCarthy on Trademarks § 16.4 (2001). Through its active use of the Trademark throughout North America, United has developed its business and generated commercial goodwill in the name and Trademark, UNITED ARTISTS THEATRES. With 222 United Artists Theatres currently in operation nationwide, the Trademark UNITED ARTISTS THEATRES has become a well-known service mark, tradename and d/b/a of the Complainant. United has actively used the Trademark and name UNITED ARTISTS THEATRES for more than seventy-five years. Respondent does not appear to have any use other than or prior to registration of the Domain Name on November 1, 2001. Complainant concludes that its common law Trademark has priority over any use by Respondent. Prior to Respondent’s registration of the Domain Name at issue in this proceeding, United has developed considerable name recognition for the Trademark throughout North America as a leading motion picture exhibitor.
ii. Complainant argues that the Domain Name is identical with and confusingly similar to the UNITED ARTISTS THEATRES Trademark, pursuant to Paragraph 4(a)(i) of the Policy.
iii Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.
Complainant asserts that the phrase "United Artists Theatres," especially with the unusual spelling of "Theatre," is a unique combination of words that has a long-standing association with United. The Respondent does not use the words "United Artists Theatres" or any similar combination in the text of its "Buy This Domain" or "Abortion Is Murder" webpages for criticism or commentary of United, nor does the Respondent otherwise make fair use of the Trademark. Since the Respondent has no rights granted by the owner of the Trademark and makes no fair or legitimate use of the Trademark, the Respondent does not have any right or legitimate interest in respect of the Domain Name at issue.
Complainant further asserts that it has never licensed the Trademark or any of its marks to the Respondent. To the best of United’s knowledge, the Respondent: (1) has never owned or operated a business under the trade name "United Artists Theatres"; (2) has no rights to any registered or unregistered marks containing the words "United Artists Theatres"; (3) does not currently use the trade name and service mark "United Artists Theatres" or any similar name in any commercial or other venture (other than in connection with the domain name at issue); and (4) has never used the Domain Name in connection with a bona fide offering of goods or services.
Complainant alleges that Respondent cannot demonstrate rights or legitimate interest in the Domain Name under Paragraph 4(c)(i).
iv Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of Paragraph 4(a)(iii).
Complainant further contends that the Respondent’s use of the Domain Name to display "Abortion Is Murder" content that many United customers and potential customers may find highly offensive is likely to cause confusion regarding United’s affiliation or sponsorship of the views reflected therein. In particular, the use of color photographs purportedly showing aborted fetuses and graphic, anatomical diagrams of abortion procedures on a website with the Domain Name containing Complainant’s Trademark is likely to tarnish Complainant’s reputation and to erode the goodwill that it has developed and honed over the course of its 75 year history.
Complainant alleges that the Respondent’s offer to sell the Domain Name <unitedartiststheatres.com> for valuable consideration in the amount of $1500, in excess of the registrant’s expenses, as well as its advertisement that "This Domain is For Sale," clearly indicate that Respondent has registered the Domain Name primarily for the purpose of selling it. "Offers to sell to the public at large domain names that are identical or confusingly similar to marks of others may constitute bad faith within the meaning of paragraph 4(a)(iii) of the Policy." Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan, WIPO Case No. D2001-0615 (June 6, 2001). Complainant states that here the webpage operated by Respondent at "www.unitedartiststheatres.com" on December 20, 2001, boasted that "This Domain is For Sale" to the public for $1500. The Respondent represented that it "only sells domains," acknowledging that its registration and use of the Domain Name <unitedartiststheatres.com> is primarily for the purpose of selling it. Even the Respondent’s name, "Domains for Sale Inc.," suggests that its primary purpose in registering and using the domain names it now possesses is to sell them for profit.
The Complainant further alleges that the Respondent offers the Domain Name for $1500 – the exact filing fee for domain name disputes with this Panel – clearly evidences bad faith. By offering to sell the Domain Name at that price, the Respondent hopes to maximize its profits by charging the highest possible price not in excess of the Trademark owner’s costs in defending its rights to the Trademark through the UDRP process. This further demonstrates that the Respondent registered and used the Domain Name with the intent of selling it to Complainant as its rightful owner.
Complainant further alleges that by registering and using the Domain Name <unitedartists theatres.com>, the Respondent has effectively prevented United from reflecting its Trademark in the corresponding Domain Name.
Finally, Complainant requests that even if the Sole Panelist finds that the Respondent does not fall exactly within any of the precise categories that characterize "bad faith" under the Uniform Domain Name Dispute Resolution Policy, paragraph 4(b), when taken together, the facts clearly establish that the Respondent’s registration and use of the Domain Name are in bad faith. Complainant states that the express list of bad faith factors stated in paragraph 4(a)(iii) of the Policy is nonexclusive in character. Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan, WIPO Case No. D2001-0615 (June 6, 2001). Therefore, when the circumstances are viewed in their entirety, the facts demonstrate that the Respondent has registered and used the Domain Name <unitedartists theatres.com> in bad faith.
B Respondent’s contentions
i. Respondent does not dispute that the Complainant has common law rights in the Trademark.
ii. Respondent does not dispute that the Domain Name is identical with or confusingly similar to the Trademark.
Respondent does not contest Complainant’s position that Respondent lacks rights to or legitimate interests in the Domain Name.
Respondent does not contest Complainant’s assertion that Respondent registered or used the Domain Name.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Sole Panelist as to the principles the Sole Panelist is to use in determining the dispute: "A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
Because both the Complainant and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Sole Panelist in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, WIPO No. D2000-1772 (April 10, 2001).
Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Sole Panelist will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
i) 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,
ii) that the Respondent has no legitimate interests in respect of the domain name; and,
iii) that the domain name has been registered and is being used in bad faith.
Enforceable Trademark Rights
An individual may be entitled to a common law trademark or service mark without registering the mark with the appropriate authority. See, Steven Rattner v. BuyThis Domain Name, (WIPO Case No. D2000-0402); Jeanette Winterson v. Mark Hogarth, (WIPO Case No. D2000-0235); Julia Fiona Roberts v. Russell Boyd, (WIPO Case No. D2000-0210). The Complainant must show that his, her or its name has achieved has sufficient secondary meaning or association with Complainant.
This result is consistent with United States trademark law in which names are protectable as trademarks or service marks upon a showing that the name has become distinctive through the acquisition of secondary meaning. See, McCarthy on Trademarks and Unfair Competition '16.4 (2001). Secondary meaning is the consumers association of the mark with a particular source or sponsor and is established out of long association of the name with the business, whereby the name and the business have become synonymous in the mind of the public, submerging the primary meaning of the name in favor of its meaning as a word identifying that business. See Visser v. Macrese et al., 214 Cal. App. 2d 249, 253, 29 Cal. Rptr. 367, 369 (Cal. Dist. Ct. App. 4th 1963); see also Levis Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1354 (9th Cir. 1991), (en banc). In assessing secondary meaning, one must consider a variety of factors, including, but not limited to, A(1) advertising expenditures, (2) consumer ... linking [of] the mark to the source, (3) unsolicited media coverage of the product, (4) sales success, ... and [(5)] length and exclusivity of the marks use, see Paco Sport, Ltd. v. Paco Rabanne Parfums, 86 F.Supp. 2d 305, 313 (S.D.N.Y. 2000), (quoting Centaur Communications, Ltd. v. A/S/M Communications, Inc., 830 F.2d 1217, 1222 (2d. Cir. 1987).
Given the continuous seventy-five year use of the Trademark by Complainant, the recognition of the Trademark with the public and the failure by Respondent to contest Complainant’s asserted rights, the Sole Panelist concludes that for purposes of this proceeding the Complainant has shown it possesses common law trademark rights.
Identity or Confusing Similarity
Complainant further contends that the Domain Name is identical with and confusingly similar to the trademark pursuant to the Policy paragraph 4(a)(i).
Respondent has not contested the assertions by Complaint that the Domain Name is identical with and confusingly similar to the Trademark.
Therefore, the Sole Panelist finds that the Domain Name is identical with and confusingly similar to the UNITED ARTISTS THEATRES Trademark pursuant to the Policy paragraph 4(a)(i).
Rights or Legitimate Interest
Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).
Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Name. Once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of production on this factor shifts to the Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000).
Complainant has asserted that it has never licensed the Trademark or any of its marks to the Respondent. Complainant further asserted that after its due diligence it found no evidence that the Respondent: (1) has ever owned or operated a business under the trade name "United Artists Theatres"; (2) has had any rights to any registered or unregistered marks containing the words "United Artists Theatres"; (3) has ever used the trade name and service mark "United Artists Theatres" or any similar name in any commercial or other venture (other than in connection with the Domain Name at issue); or (4) has ever used the domain name in connection with a bona fide offering of goods or services.
The Policy paragraph 4(c) allows three nonexclusive methods for Respondent to rebut a prima facie showing by Complainant that Respondent has no rights or a legitimate interest in the Domain Name:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Sole Panelist finds that the Complainant has sustained its burden of proving that the Respondent lacks rights to or legitimate interests in the Domain Name. Respondent has not come forward to rebut Complainant’s assertions and the Sole Panelist finds no evidence that the use of the Domain Name meets the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c). Therefore, the Sole Panelist finds that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).
Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).
The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product,
The four criteria set forth in the Policy paragraph 4(b) are nonexclusive. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.
Use of Entire Mark Without Plausible Good Faith Use
One such factor is the use of Complainant’s entire mark in the Domain Name, thus making it difficult to infer a legitimate use of the Domain Name by Respondent. In Cellular One Group v. Paul Brien, WIPO Case No.D2000-0028 (March 10, 2000), Complainant filed a WIPO Complaint against the Registrant of domain name <cellularonechina.com>. The WIPO panel agreed with Complainant, based on facts essentially the same as those set forth in this Complaint, that the Registrant unlawfully registered an identical or confusingly similar domain name in bad faith. Moreover, the Panel inferred bad faith use of <cellularonechina.com>, because the domain name included Complainant’s entire trademark. In light of Cellular One’s trademark registrations and applications, "it is not possible to conceive of a plausible circumstance in which Respondent could legitimately use the domain name." See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 ¶ 7.
Respondent’s Domain Name uses the entirety of Complainant’s Trademark, namely UNITED ARTISTS THEATRES. No plausible explanation exists as to why Respondent selected the name UNITED ARTISTS THEATRES as part of the Domain Name other than to trade or affect on the goodwill of Complainant.
Offer to Sell to Public
A second factor is that Respondent has offered the disputed domain name for sale to the public. There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent. Although Respondent’s offer of the disputed Domain Name for sale was not made specifically to Complainant or its competitor, offers for sale to the public may nevertheless constitute evidence of bad faith under the Policy.
Complainant’s allegation that Respondent offered to sell his ownership of the Domain Name was set forth above. The offering for sale of a domain name, even to a third party, supports bad faith. See Policy, Paragraph 4(b); Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., 202 F.3d 489 (2d Cir. 2000); Porsche Cars North America, Inc. v. Spencer, 55 U.S.P.Q.2d 1027 (E.D. Cal. 2000); Morrison & Foerster LLP v. Wick, 94 F. Supp.2d 1125 (D. Colo. 2000).
Respondent has sought to profit from the mere registration of Complainant’s Trademark as a domain name. Respondent has offered domain names using the marks of others.
Respondent has failed to come forward with any facts to contradict the assertions of Complainant.
Based upon this evidence, the Sole Panelist finds that Complainant has shown sufficient facts to support a finding that the Domain Name was registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).
The Sole Panelist concludes (a) that the Domain Name <unitedartiststheatres.com> is confusingly similar to Complainant’s common law trademark rights in UNITED ARTISTS THEATRES, (b) that Respondent has no rights or legitimate interest in the Domain Name and (c) that Respondent has registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Name be transferred to the Complainant.
Richard W. Page
Dated: March 27, 2002