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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Academy of Motion Picture Arts and Sciences v. Chego Nado
Case No. D2003-0541
1. The Parties
The complainant is Academy of Motion Picture Arts and Sciences, c/o Scott Miller, Beverly Hills, California, United States of America, represented by Quinn Emanuel Urquhart Oliver & Hedges, LLP, United States of America.
The respondent is Chego Nado, Sosi, Turkey.
2. The Domain Name and Registrar
The disputed domain name <porno-oscar.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 10, 2003. 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 July 21, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2003. The respondent did not submit any response. Accordingly, the Center notified the respondent’s default on August 14, 2003.
The Center
appointed
George R. F. Souter
as the Sole
Panelist
in this
matter on
August 14, 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, Academy of Motion Picture Arts and Sciences, was founded in 1927, for the purposes, inter alia, of advancing motion picture arts and sciences and promoting cultural, educational, and technological progress by fostering cooperation among the motion picture industry’s creative leadership. As a constant incentive for members of the industry to strive to achieve those purposes, and as a means of recognizing persons who make outstanding contributions to their respective fields, the complainant holds an annual "Academy Awards" ceremony where it confers an "Award of Merit," known to the public as an "Oscar," in over twenty categories of achievement. The Academy Awards ceremony, also known as "The Oscars" is seen in either a live or delayed broadcast in over 100 countries, including Turkey (where the respondent is located).
The complainant has provided the panel with copy certificates of registration of the trademark OSCARS in the USA, and OSCAR in the USA and Turkey. The Turkish registration of OSCAR, No 173152, which dates from 1996, is registered in respect (in English translation) of "Entertainment services including the presentation of awards for meritorious achievement."
5. Parties’ Contentions
A. Complainant
The complainant contends that the domain name at issue is confusingly similar to the complainant’s well known OSCAR and OSCARS marks, that the respondent has no rights or legitimate interests in the domain name, and that the domain name was registered and used in bad faith.
In particular, the complainant alleges that the respondent is not "making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue according to paragraph 4(c)(iii) of the Policy," by drawing Internet users to a pornographic website for commercial gain. The complainant provided evidence to the panel of such usage. The complainant also alleges that this usage constitutes evidence of registration and use in bad faith.
B. Respondent
The respondent did not reply to the complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy lists three tests which a complainant must satisfy in order to succeed:
(i) the domain name is 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 name; and
(iii) the domain name has been registered and is being used in bad faith.
(i) Identical or Confusingly Similar
The question
of whether
the mere
addition
of a common
word to
a trademark
(in this
case the
word "porno,"
plus a non-distinctive
hyphen,
which can
be disregarded)
is sufficient
to avoid
a finding
of confusing
similarity
has been
raised a
number of
times in
previous
cases, and,
generally,
the finding
has been
that it
is not.
In Nokia
Corporation
v. Nokiagirls.com
a.k.a IBCC,
WIPO
Case No.
D2000-0102,
for example,
the panel
decided
that the
mere addition
of "girls"
to the NOKIA
trademark
did not
avoid a
finding
of confusingly
similar.
In this
case, the
panel takes
the view
that the
addition
of "porno"
(plus hyphen)
to the trademark
merely suggests
that the
products/services
to be expected
are those
of the trademark
owner’s
"Oscar"
type or
class, but
with a pornographic
context.
The panel
finds that
there is
confusing
similarity
in this
case.
In this connection, and also in connection with tests (ii) and (iii) below, the panel is aware that the term "Oscar," deriving from the complainant’s activities, is well known to such an extent that it is defined in Webster’s Encyclopedic Unabridged Dictionary of the English Language (ISBN 0-517-88781-X, at page 1018), as follows: "one of a group of statuettes awarded annually by the Academy of Motion Picture Arts and Sciences for professional achievements in motion picture production and performance (said to have been named in 1931 by an employee of the Academy of Motion Picture Arts and Sciences after her uncle)."
(ii) Rights or Legitimate Interests
The respondent has not taken the opportunity accorded to him under these proceedings of justifying its adoption of the domain name. There appear to be no circumstances attached to the respondent’s name or address which might lead to any suspicion of legitimate interest. In these circumstances, the panel decides that the complainant, whose Complaint was transmitted to the respondent under this procedure, has satisfied the second test. In particular, the panel accepts the complainant’s contention that the respondent has no rights or legitimate interests in the domain name, mentioned above, in the specifics of this case.
(iii) Registered and Used in Bad Faith
In Nokia
Corporation
v. Nokiagirls.com
a.k.a IBCC,
WIPO
Case No.
D2000-0102,
the panel
found that
"[t]he
trademark
NOKIA is
currently
enjoying
such fame
internationally
that it
cannot reasonably
be argued
that respondent
… could
have been
unaware
of the trademark
rights vested
therein
when registering
the domain
name."
The panel
approves
that decision,
mutatis
mutandis,
in the circumstances
of the present
case, and
finds that
the domain
name at
issue was
registered
in bad faith.
The third test is, in reality, a dual test, requiring the panel to be satisfied both that the domain name has been registered in bad faith and used in bad faith.
AOL
Time Warner
Inc.
v. John
Zuccarini,
WIPO
Case No.
D2002-0827,
is an example
of one of
the many
cases where
use in bad
faith has
been found
in the circumstances
where a
website
operated
under a
deceptively
confusing
domain name
has been
used to
direct Internet
users to
a pornographic
website
to the potential
detriment
of the complainant,
as has been
proved to
the panel’s
satisfaction
in this
case, where
the panel
considers
that the
potential
detriment
to the complainant’s
reputation
is acute.
Accordingly,
a finding
that there
has been
use in bad
faith in
this case
is inevitable,
and the
panel so
finds.
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 name, <porno-oscar.com>, be cancelled.
George R. F. Souter
Sole Panelist
Dated: August 24, 2003