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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Academy of Motion Picture Arts and Sciences v. This Name Is For Sale

Case No. D2005-1063

 

1. The Parties

The Complainant is Academy of Motion Picture Arts and Sciences, Beverly Hills, California, United States of America, represented by Quinn Emanuel Urquhart Oliver & Hedges, LLP United States of America.

The Respondent is This Name Is For Sale, Central, Hong Kong, SAR of China.

 

2. The Disputed Domain Name and Registrar

The disputed domain name <academyawards.net> (“the Disputed Domain Name”) is registered with eNom, Inc. (“eNom”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2005. On October 11, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the Disputed Domain Name. On October 11, 2005, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 October 18, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November 7, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 8, 2005.

The Center appointed Michael D. Cover as the Sole Panelist in this matter on November 16, 2005. 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.

The Respondent sent an e-mail to the Center on November 8, 2005, stating “In order to save the time and expense of the complainant, we are willing to settle this matter before it reaches the final arbitration. Please advise whether such a course is open to us”. The Center responded on November 8, 2005, that it would like to have the Complainant’s comments on that. On November 10, 2005, Quinn Emanuel Oliver & Hedges, LLP responded to the Center that the Respondent was in default and had not requested an extension, that a cease and desist letter had been sent to the Respondent on August 10, 2005, and that, although the Complainant is open to reasonable offers of settlement, it believes that any further delay to these proceedings would be detrimental to the resolution of the matter. Accordingly, the Center decided to continue with the normal procedure in this case, unless the Complainant advised otherwise.

 

4. Factual Background

The Complainant is the Academy of Motion Pictures Arts and Sciences and was founded in 1927. The Complainant holds an annual ceremony, at which it awards its “Award of Merit”, known to the public as an “Oscar”. The Complainant has registered ACADEMY AWARDS as a trademark in certain key jurisdictions, including Hong Kong and the United States of America, and in some 60 other countries. In the US, certain of these registrations go back to 1995.

The Complainant has had long involvement in the motion picture industry under the trademark ACADEMY AWARDS and has conducted extensive advertising and generated media and public interest in the ACADEMY AWARDS ceremony.

The Complaint states that the Disputed Domain Name was registered by the Respondent on November 21, 2001, although the WHOIS record (Annex 1 to the Complaint) appears to show that this date was actually November 29, 2001. In the event, nothing turns on this.

 

5. Parties’ Contentions

A. Complainant

The Complainant states that, when users visit the website located at “www.academyawarads.net”, they see a screen that states at the top “www.academyawards.net” “This domain is for sale”. There is then, so the Complainant states, a series of links to movie and awards websites.

The Complainant contends that the Disputed Domain Name completely incorporates the Complainant’s trademark. It further contends the links off the website behind the Disputed Domain Name are likely to enhance confusion, because of the links with movie and awards websites, which are likely to be associated with the Complainant.

The Complainant also contends that the Respondent has no rights or legitimate interest in respect of the Disputed Domain Name. It says that the Respondent has not been commonly known by the domain name nor has it has acquired any trademark or service mark rights in the term. It goes on to say that the Respondent is not making legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. It states that the Respondent clearly desires to sell the Disputed Domain Name to the highest bidder.

With regard to bad faith registration, the Complainant contends that the Respondent knew or should have known of the registration of the Complainant’s trademark prior to registering the Disputed Domain Name, not least because of the famous and international nature of the Complainant’s trademark. Finally, the Complainant maintains that the Respondent furnished incomplete contact information when registering <academyawards.net>.

Under the heading of bad faith use, the Complainant maintains that the Respondent is a classic “cybersquatter”, who has intended to squat on the Disputed Domain Name until he can sell it for a high price. It also argues that the Respondent’s clear purpose for registering the Disputed Domain Name is to sell it. The Complainant says that this clearly demonstrates both registration and use in bad faith.

Accordingly, the Complainant requests the Panel to transfer the Disputed Domain Name to the Complainant.

B. Respondent

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

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the panel to:

“decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these rules and principles of law that it deems applicable.”

The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:

- 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

- that the Respondent has no legitimate rights or interests in respect of the domain name; and

- that the domain name has been registered and is being used by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Disputed Domain Name is identical to the Complainant’s trademark. It is well-established that the addition of the top level extension “.net” constitutes a distinction without a legal difference.

The Panel remarks that the registered trademarks of the Complainant are sufficient to establish “a trademark or service mark in which the Complainant has rights”. The Complainant also seeks to rely on its use of its trademarks ACADEMY AWARDS in two contexts. First, it appears to seek to rely on such use as generating a right in the nature of unregistered trademark or such as might be protected by passing off in common law jurisdictions. Second, it also appears to seek to rely on such use to show that the mark in question has become famous.

The Panel notes that the Complainant has not put in any evidence of the extent of such use, which is no doubt substantial; it simply makes the statement. This has not been countered by the Respondent, as it has not filed a Response. The Panel accepts therefore that the Complainant has both registered and unregistered rights in its trademark.

B. Rights or Legitimate Interests

The Respondent has not filed a Response, so has not been able to demonstrate its rights or legitimate interests to the Dispute Domain Name, in accordance with paragraph 4(c) of the Policy. The Complainant has addressed each of these issues in the Complaint. It is able to demonstrate that the Respondent has not been commonly known by the domain name nor has it acquired any trademark or service mark rights in the term.

The Panel finds that the Respondent has not established rights to and legitimate interests to the Disputed Domain Name. To the contrary, the Panel finds based on the case file that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

C. Registered and Used in Bad Faith

The Panel finds this head proved. The most compelling point is that under paragraph 4(b)(i), relating to circumstances indicating that the Respondent has registered the Disputed Domain Name for the purpose of selling, renting or otherwise transferring the Disputed Domain Name to the Complainant who is the owner of the trademark in question. There is no direct evidence that the sale or transfer in question would be for valuable consideration in excess of documented out of pocket costs directly related to the Disputed Domain Name. However, the Panel is able to infer that this was the intention of the Respondent in view of the fact that, first, the Complainant has been in existence for nearly 80 years and there is no other likely recipient of the Disputed Domain Name and, second, that there would have been little economic purpose in putting the Disputed Domain Name up for sale, if this was not to be profitable, that is for valuable consideration in excess of documented out of pocket costs directly related to the Disputed Domain Name.

The list of circumstances that are evidence of registration and use in bad faith is not exhaustive. Two previous decisions are helpful on this point. In Pet Incorporated v. N2 Sistemas.com- WIPO Case No. D2005-0889, it was held that passive holding of the domain name permits an inference of registration and use in bad faith. In AstraZeneca plc v. DreamlightWIPO Case No. D2005-1010, it was held that very registration of a domain name identical to a registered trademark is to be considered as implying actual knowledge of that trademark, it having been held in an earlier decision that knowledge of the Complainant’s trademark at the time of registration of the disputed domain name may lead to an inference of bad faith.

Accordingly and, as stated above, the Panel finds that the Disputed Domain Name has been registered and used in bad faith.

 

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 Disputed Domain Name, <academyawards.net>, be transferred to the Complainant.


Michael D. Cover
Sole Panelist

Dated: November 30, 2005

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-1063.html

 

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