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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

DreamWorks, L.L.C. v. Sequence Media, LLC

Case No. D2003-0219

 

1. The Parties

The Complainant is DreamWorks, L.L.C., Glendale, California, United States of America, represented by Seyfarth Shaw of United States of America.

The Respondent is Sequence Media, LLC, West Valley, Utah, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <dreamwerxentertainment.com> is registered with Intercosmos Media Group d/b/a directNIC.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 20, 2003. On March 20, 2003, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On March 20, 2003, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 March 25, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was April 14, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 15, 2003.

The Center appointed Angela Fox as the Sole Panelist in this matter on April 25, 2003. 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.

 

4. Factual Background

The Complainant produces motion pictures, television programs, records and CDs. It was formed in 1995 by Steven Spielberg, Jeffrey Katzenberg and David Geffen and has enjoyed considerable success. Its studios have produced some of the best-known and critically acclaimed Hollywood films of recent years, including Gladiator, Saving Private Ryan, American Beauty and Shrek. Its live action films alone have grossed in excess of $2 billion worldwide through theatrical and television exhibition and videocassette distribution. The Complainant’s promotion and distribution of music has likewise been lucrative, with total revenues in excess of $600 million.

The Complainant’s name and trademark, DREAMWORKS, is prominently displayed through production and other credits displayed in full-screen shots at the beginning of each of its films and videos. The DREAMWORKS trademark is also used in connection with musical recordings distributed by the Complainant, although the Complainant did not provide information on the manner of use for those goods.

The DREAMWORKS trademark is protected both on its own and with other matter through registration in the United States, where both the Complainant and Respondent are based, and in countries around the world, in respect of entertainment products and services. Attached to the Complaint were copies of United States trademark registrations 2316906 for DREAMWORKS RECORDS Logo registered on February 8, 2000, and, 2457467 DREAMWORKS registered on June 5, 2001. The former is recorded as owned by Dream Works LLC with an address of 100 Universal Plaza, Bungalow 477, Universal City, CA 91608, U.S.A. The Panel notes that this differs from the Complainant’s current name and address, and would have appreciated a short acknowledgment and explanation of this in the Complaint. However, the Panel accepts that the most likely explanation is that the Complainant’s name changed from Dream Works LLC to DreamWorks, L.L.C. and that its office moved. As the ownership of the cited trademarks has not been plausibly challenged by the Respondent, nothing turns on this anomaly.

The disputed domain name <dreamwerxentertainment.com> was registered on September 17, 2001, in the name of Sequence Media LLC, with Brandon Lee of the same address named as the administrative and technical contact. For some time the domain name resolved to a holding site displaying the message, "The future sound of the underground DREAMWERX Entertainment. Coming soon." A print-out of this page, showing DREAMWERX in larger type than the other elements, was appended to the Complaint. At some point following receipt of a cease and desist letter from the Complainant’s in-house counsel in April 2002, the holding page was taken down, but it was restored after February 2003, when discussions between the parties broke down.

In response to the Complainant’s cease and desist letter, Brandon Barnett, who claimed to act on the Respondent’s behalf, telephoned the Complainant and offered to sell the domain name for $5,000. Attempts to respond to this offer by telephone failed because the number given had been disconnected, and a letter sent to Barnett was never answered. Nevertheless, the Complainant’s outside counsel were able to reach Barnett by telephone in February 2003, and apparently understood him to agree to the transfer of the domain name in exchange for payment of the transfer fee. They confirmed their understanding to Barnett by email. In an emailed reply, however, Barnett wrote,

"I have just spent some time reading up on the UDRP provisions…Although I can see some legal basis for your filing, I think I stand in a position where I do not need to simply hand over the domain. I have planned non-commercial use for the site and still hold rights to the domain.

"At this point I am going to decline to [sic] handing over the domain since I incurred costs of purchasing and hosting the site for well over a year. The domain was never once used for commercial purposes nor will it be. The corporation affiliated with the [sic] ‘Dreamwerx Events & Entertainment’ was dissolved last year and I no longer have any affiliation with that name other than this domain name.

"You have my contact information."

In response, the Complainant filed this administrative Complaint on March 19, 2003.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the domain name <dreamwerxentertainment.com> is confusingly similar to its DREAMWORKS trademark. The Complainant’s case is that "dreamwerx" is visually similar, and phonetically identical, to DREAMWORKS, and that the presence of "entertainment" does nothing to distinguish the domain name from the Complainant’s mark because it directly describes the Complainant’s activities. The top-level domain ".com" is nondistinctive and may be disregarded.

The Complainant asserts that the Respondent has no legitimate rights or interests in the domain name. The Complainant has never licensed or authorised the Respondent to use the DREAMWORKS trademark or its phonetic equivalent DREAMWERX, and the Complainant further contends that the Respondent is not commonly known by a name corresponding to the domain. The Respondent has not used or made demonstrable preparations to use the domain name or a name corresponding to it in connection with a bona fide offering of goods or services, nor has it made any legitimate noncommercial or fair use of it, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark. On this point, the Complainant contends that use of the domain name to host the holding page was not noncommercial or fair use, but that even if it was, its legitimacy would be questionable in light of the fact that the Complainant’s trademark was extremely well-known when the domain name was registered and the Respondent must have been aware of it.

Finally, the Complainant contends that the domain name was registered and used in bad faith, citing the Respondent’s offer to sell the domain name to the Complainant for $5,000, a figure which was likely to be in excess of the Respondent’s documented out-of-pocket expenses for registering the domain and maintaining a simple holding page. Moreover, the Complainant contends that the Respondent was aware of the Complainant’s trademark when the domain name was registered. If the domain name were ever used for an operational site, it would mislead some Internet users into assuming a connection with the Complainant’s business. Finally, the Complainant alleges that the Respondent provided false name and contact details when it registered the domain name. When combined with the foregoing information, the Complainant contends that such false information evidences bad faith registration and use.

B. Respondent

The Respondent did not reply to the case against it and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default.

 

6. Discussion and Findings

Under Paragraph 4(a) of the Policy, a Complainant can only succeed in an administrative proceeding under the Policy if the Panel finds that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights in or legitimate interests to the domain name;
(iii) the domain name has been registered and is being used in bad faith.

All three elements must be present before a Complainant can succeed in an administrative proceeding under the Policy.

A. Identical or Confusingly Similar

The Complainant has adequately proved ownership of rights in the DREAMWORKS trademark by filing copies of two United States registrations for or incorporating that word.

The domain name at issue consists of three elements, namely "dreamwerx," the descriptive noun "entertainment" and the top-level domain name ".com." It is well-established that top-level domains are non-distinctive and do not affect the question of confusing similarity. The question is therefore whether "dreamwerx entertainment" is confusingly similar to the Complainant’s DREAMWORKS trademark.

There are in the Panel’s view important visual differences between DREAMWORKS and DREAMWERX. The endings are notably different and the latter word employs an inventive spelling with a distinctly unorthodox feel. The Complainant’s mark is principally known through visual media, through production credits in movies and presumably also through printed matter applied to or sold with sound recordings. As a result of these visual differences and the principally visual manner in which the Complainant promotes its mark, some Internet users familiar with proper English spelling might be unlikely to connect the domain name with the Complainant’s trademark.

Nevertheless, the Internet is a vast terrrain and many of those crossing it are not familiar with proper English spelling, including many for whom English is a first language. A considerable number of Internet users will not accurately be able to reproduce from memory an English-language, or indeed any other verbal, trademark which they have seen in the past. This is one reason why numerous UDRP decisions have found confusing similarity where a domain name was visually different, but phonetically identical to a Complainant’s trademark, such as in Pfizer, Inc. v. Lorna Kang (WIPO Case No. D2002-0480) and Pfizer, Inc., a Delaware Corporation v. Phizer’s Antiques and Robert Phizer (WIPO Case No. D2002-0410) where <pheizer.com> and <phizer.com> were judged confusingly similar to PFIZER.

In this case, "dreamwerx" will most likely be articulated in accordance with English pronunciation, since the first part of it, "dream," is an ordinary English word and the linked website page bears an English message. An English pronunciation is likely to result in the first part of the domain name being expressed orally as "dream works," resulting in a partial phonetic identity with the Complainant’s DREAMWORKS trademark.

The additional element, "entertainment," is not enough in the Panel’s view to avoid confusion. The word "entertainment" directly describes the Complainant’s principal field of activity and does nothing to distinguish the domain name from the Complainant’s trademark. Indeed, it is likely to promote confusion, since the word "entertainment" will encourage Internet users who only imperfectly remember the Complainant’s trademark or only know it aurally to associate the Respondent’s domain name with the Complainant’s known activities in the entertainment industry.

Previous UDRP decisions have followed similar reasoning, including Nike, Inc. v. B. B. de Boer (WIPO Case No. D2000-1397) where <nike-shoes.com> was found confusingly similar to NIKE for footwear, Motorola, Inc. v. Diana Gomez (NAF Case No. 96950) where <motorolapagerrepair.com> was judged confusingly similar to MOTOROLA for the service and repair of radio pagers, and Ohio Lottery Commission v. John Barbera (NAF Case No. 96571) where <ohiolotterygames.com> was judged confusingly similar to OHIO LOTTERY for lottery tickets and game cards.

The Panel therefore finds that the Respondent’s domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant’s case under this heading is that the Respondent did not use the domain name in connection with a bona fide offering of goods or services, is not making a legitimate noncommercial or fair use of the domain name, and has never commonly been known by a name corresponding to the domain name.

The Panel agrees that there is no evidence to suggest that the Respondent was making a bona fide commercial use of the domain name. The domain name appears only ever to have resolved to a holding page, which offered no goods or services, bona fide or otherwise. Indeed, Brandon Barnett, who purported to own and control the domain name, admitted in exhibited correspondence with the Complainant’s legal counsel that the domain name had never been used, and was not planned to be used, commercially. The Respondent did not deny that Barnett represented it in making this statement, and the Panel infers that the Respondent accepted and indeed authorised Barnett’s statement.

As for legitimate noncommercial or fair use, the Panel considers that this means more than simply posting a holding page with no content apart from "The future sound of the underground DREAMWERX Entertainment. Coming soon." Such content is allusive or suggestive of a possible future use at best and is not enough to enable legitimacy, fairness or even non-commercial nature to be assessed. The Panel notes that Brandon Barnett stated in an exhibited email of February 5, 2003, that he had "planned non-commercial use for the site," but such a bald claim is too vague to be given any weight. Plans for future noncommercial or fair use might evidence rights or legitimate interests in a domain name, but it would be necessary for a Respondent to show reasonably well-defined plans to enable the Panel to assess their fairness or legitimacy. That has not happened in this case, where the Respondent is in default and its cryptic holding page welcome gives no real clues as to the likely nature of its presumed eventual content.

The Panel did, however, feel some discomfort at the Complainant’s assertion that the Respondent had never commonly been known by a name corresponding to the domain name, which might have evidenced a right or legitimate interest under Paragraph 4(c)(ii) of the Policy. The Respondent is identified in its domain name registration details as Sequence Media LLC, but the appendices to the Complaint show that the entity to which the Complainant and its legal counsel consistently addressed demand and negotiation letters was Dreamwerx Entertainment. Moreover, although the Complaint is silent on this, the exhibited correspondence between the parties indicates that the Complainant acknowledged Brandon Barnett to have registered the business name "Dreamwerx Entertainment" in the state of Utah. It appears from the appendices that the Complainant’s legal counsel demanded the cancellation of this business name and described it as "fictitious," but did not state the basis for that belief in the Complaint or in the exhibited correspondence.

It is generally accepted that the burden of proof of rights or legitimate interests should shift to a Respondent once a Complainant has made a prima facie case for their absence. However, this Panel initially entertained some doubt that the Complainant had done that. Indeed, the Complainant did not mention the Respondent’s business name registration at all in the Complaint. It only came to light in this proceeding as a result of certain references in the appendices. If the Complainant knew about a relevant business name registration but concluded that it was "fictitious," then it would have assisted the Panel considerably to have been presented with that information and the basis for the Complainant’s conclusion. The Complainant’s failure to be forthcoming on this issue was, in the Panel’s view, misleading.

Nevertheless, if the Respondent had in fact been commonly known as Dreamwerx Entertainment through trading or other activities, the Panel would have expected the Respondent to have said so in the prolonged exchange of correspondence with the Complainant’s lawyers. Assuming the annexed correspondence fairly represents that exchange, the Respondent does not appear to have done this. The Panel accepts that it is more likely than not that the Respondent was not commonly known by its business name registration, in light of the finding of bad faith and the Respondent’s failure to put forward any plausible case to the contrary.

The Panel finds that the Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

Under Paragraph 4(b)(i) of the Policy, it is evidence of registration and use of a domain name in bad faith if the Complainant shows circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket expenses directly related to the domain name.

The Complainant has provided copies of its correspondence with Brandon Barnett, who purported to act on behalf of the Respondent, confirming Barnett’s oral offer to sell the domain name to the Complainant for $5,000. If this had been a misrepresentation, the Panel would have expected the Respondent to say so either in correspondence with the Complainant’s legal counsel or in a response to this Complaint. It did not, and the Panel infers that Barnett’s offer for sale was made on the Respondent’s behalf.

The Panel considers it likely that $5,000 exceeded the Respondent’s out-of-pocket expenses directly related to the domain name. The cost of registering a single ".com" domain name is generally less than $100 and the domain name in this case was not used for anything other than hosting a single holding page. In the absence of any plausible breakdown of costs from the Respondent, the Panel does not accept that such activities could have incurred costs on the order of the Respondent’s demand. In the absence of an explanation from the Respondent, the Panel concludes that the Respondent’s offer to sell the domain name for $5,000 is a circumstance indicating that the Respondent registered the domain name primarily for the purpose of selling it to the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket expenses directly related to the domain name. In accordance with the Policy, such a circumstance constitutes evidence of registration and use in bad faith, and the Panel finds that use and registration in bad faith have been shown.

The Complainant further alleges that the Respondent’s bad faith is evidenced by its filing of false registration contact details, since the Respondent is not a juristic person, the administrative contact "Brandon Lee" is not an actual person, and the telephone number given is not in service. The Respondent has not denied any of these allegations. Although the Panel would have appreciated being given some basis for the Complainant’s conclusion that neither Sequence Media, LLC nor Brandon Lee existed, there is, in contrast with the known existence of a business name under the heading above, no information before the Panel to suggest that the Complainant’s statements might not be accurate. The provision of false contact information points to registration in bad faith, as has been found in Action Instruments, Inc. v. Technology Associates (WIPO Case No. D2003-0024), Royal Bank of Scotland Group v. Stealth Commerce a.k.a. Telmex Management Services, Inc. (WIPO Case No. D2002-0155) and Home Director, Inc. v. HomeDirector (WIPO Case No. D2000-0111), among others. The Panel finds registration in bad faith on this basis also.

Finally, the Complainant alleges bad faith registration and use based on probable knowledge of the DREAMWORKS trademark by the Respondent when it registered the domain name, and the likelihood that any use of it would lead to the confusion of Internet users. The Panel accepts that the DREAMWORKS trademark was sufficiently well-known through its high-profile and successful entertainment activities that the Respondent was likely to have been aware of it when it registered the domain name. The Panel also accepts that the domain name is likely to mislead some Internet users into believing that it may be connected with the Complainant. As registration and use in bad faith have already been found on other grounds, it is not necessary to evaluate whether presumed actual knowledge of the Complainant’s rights and confusing similarity are enough on these facts to lead to a further basis for finding bad faith. The Panel considers, however, that in the context of the Respondent’s demand for $5,000 to transfer the domain name, provision of false contact details and probable knowledge of the Complainant’s highly distinctive trademark, the registration of a confusingly similar domain name is also evidence of bad faith.

 

7. Decision

For all the foregoing reasons, the Panel grants the Complaint and orders that the domain name <dreamwerxentertainment.com> be transferred to the Complainant.

 

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Angela Fox
Sole Panelist

Dated: May 29, 2003