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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

GGG Filmproduktion und Vertrieb e.K. v. E4 Group and Frank Jensen

Case No. D2006-1177

 

1. The Parties

The Complainant is GGG Filmproduktion und Vertrieb e.K., of Munich, Germany, represented by SCHOEPE FETTE PENNARTZ REINKE, Germany.

The Respondent is E4 Group and Frank Jensen of Aarhus, Denmark.

 

2. The Domain Name and Registrar

The disputed domain name <gggfilm.com> is registered with RegisterFly.com, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2006. On September 13, 2006, the Center transmitted by email to RegisterFly.com, Inc. a request for registrar verification in connection with the domain name at issue. On September 27, 2006, RegisterFly.com, Inc. transmitted by email to the Center its verification response providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 5, 2006. The Center verified that the Complaint together with the amendment to 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 9, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 29, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 31, 2006.

The Center appointed Peter G. Nitter as the Sole Panelist in this matter on November 15, 2006. 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 is a porn movie production and distribution company based in Munich, Germany. The sole proprietorship “GGG Filmproduction und Vertrieb e.K” was registered as a sole proprietorship at the district court of Munich, Germany on May 3, 1999.

The Complainant filed together with Mr. Raymond Bacharach the European Community trademark “GGG”, trademark No. 001377787 on November 10, 1999. The trademark was registered on April 10, 2003, documented in Annex 6 of the Complaint.

The Complainant and Mr. Bacharach also filed another European Community trademark GGG, trademark No. 004553715, on July 21, 2005. The trademark was registered on July 6, 2006, documented in Annex 7 of the Complaint.

The Complainant and its mark GGG enjoy a high level of popularity even beyond the borders of Germany.

According to evidence in the record, a distribution partner of the Complainant is using the domain name <ggg-film.com> for redirecting prospective customers to the domain <germangoogirls.com> where licensed content of the label GGG is offered. The domain name <ggg-film.com> leads to the official website for products of the label GGG.

The Complainant is using the email service of the domain <ggg-film.com>.

The Respondent registered the domain name <gggfilm.com> on December 5, 2003.

 

5. Parties’ Contentions

A. Complainant

The Complainant alleges the following:

- The domain name <gggfilm.com> is confusingly similar to the GGG trademarks in which the Complainant has rights. The word “film” in the domain name is just describing the goods and services under the label GGG.

- The Respondent has no rights or legitimate interests regarding the domain name at suit. The Respondent is not using the domain for its own business, just for redirecting any prospective customer to other porn websites offering the same kind of porn as the one offered by the Complainant.

- The Respondent is not acting in bona fide by using the brand name GGG Film for promoting websites of competitors of the Complainant. The Respondent is using the domain name for commercial purposes by gaining commissions from partner websites by diverting consumers of the Complainant to websites of the Respondent.

- The domain name at suit was registered primarily for the purpose of disrupting the business of the Complainant. By using the domain name, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website or redirecting to its partners websites, by creating a likelihood of confusion with the Complainant’s trademark.

B. Respondent

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

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The domain name at issue is not identical to the Complainant’s trademark, and the question is therefore whether there is confusing similarity between the domain name and the Complainant’s trademark.

As numerous previous Panel decisions under the UDRP have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is confusingly similar to the complainant’s registered mark, see Quixtar Investments Inc. v. Dennis Hoffmann, WIPO Case No. D2000-0253.

In cases similar to the one at suit, the mere addition of a generic word to a registered trademark has consistently been deemed insufficient to avoid confusing similarity under previous Panel decisions under the UDRP; see Sanofi-Aventis v. Internet Marketing Inc. John Bragansa, WIPO Case No. D2005-0742.

The Panel notes that the Respondent is using the entirety of the mark GGG in the domain name, and that the additional phrase “film” is merely descriptive of the services offered by both parties in the case at hand.

The Panel, hence, has to compare the mark and the domain name alone, independent of the factors usually considered in a traditional trademark infringement action, see InfoSpace.com, Inc. v. Delighters, Inc. d/b/a Cyber Joe’s Internet Cafй, WIPO Case No. D2000-0068. There is no dispute that the Complainant has rights in the GGG trademark.

For the above reasons, the Panel concludes that the domain name is confusingly similar to the trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Panel has considered the allegation made by the Complainant that the Respondent lacks any rights or interests in the contested domain name. The Respondent is in default, and has therefore not contested these allegations.

As it is generally difficult for a Complainant to prove the negative fact that a Respondent does not have rights or legitimate interests in a domain name pursuant to paragraph 4(c) of the Policy, previous decisions under the UDRP have found it sufficient for the Complainant to make a prima facie showing of its assertion in the event of a respondent’s default.

The Complainant has not in any way granted Respondent rights to use its mark, and is in no way affiliated with the Respondent. The Respondent has not asserted any rights or legitimate interests in the domain name.

Considering this background, the Panel concludes that the Complainant has made out a prima facie showing that Respondent lacks rights or legitimate interests in the contested domain name. In the absence of a rebuttal by the Respondent, the Panel finds, based on the record, that the second element of the Policy has been met.

C. Registered and Used in Bad Faith

One of the situations that demonstrates bad faith, according to Paragraph 4(b)(iv) of the Policy, occurs when the respondent by using the disputed domain name has intentionally attempted to attract, for commercial gain, Internet users to its website. Therefore, respondent’s actions create a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website.

In this case, the Complainant has submitted facts and evidence showing that the elements set out in paragraph (b)(iv) of the Policy are present in this matter. There are several circumstances indicating that the Respondent must have been aware of the Complainant’s trademark at the time of its registration of the domain name at issue. This can be deducted from the construction of the domain name, consisting of the trademark GGG and the generic word “film”. Complainant’s trademark GGG is widely known for the products offered under it. Therefore, in the view of the Panel, is highly unlikely that Respondent would have registered the domain name at issue but for its knowledge of Complainant’s mark, and its intention to take advantage of the prestige of the mark.

There is a clear risk that Internet users connecting to the websites where the disputed domain name resolves, will believe that the Complainant’s film productions are available at those websites. Instead, Internet users are redirected to websites of competitors of the Complainant. As the Respondent is using the domain name to gain commissions from their partner-websites, the Respondent will make a profit by misleading Internet users.

Hence, based on the background of the case and documentation presented to the Panel, the Panel finds that the Respondent has registered and is using the disputed domain name intentionally to attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of a product or service on its website. The Panel thus concludes that the domain name in question was registered and has been 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 domain name, <gggfilm.com> be transferred to the Complainant.

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Peter G. Nitter
Sole Panelist

Dated: November 29, 2006