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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Amblin` Entertainment, Inc. v. Domains by Proxy Inc. / Webapalooza / Paul Grim

Case No. D2009-0626

1. The Parties

Complainant is Amblin` Entertainment, Inc. of California, United States of America, represented by Seyfarth Shaw, United States of America.

Respondents are Domains by Proxy Inc. / Webapalooza / Paul Grim of New York, United States of America.

2. The Domain Name and Registrar

The disputed domain name <amblin.com> (the "Domain Name") is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 9, 2009. On May 11, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On May 11, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing that the registrant of the Domain Name and their contact information differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 13, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to amend the Complaint as to the registrant issue as well as a word limit issue. Complainant filed an amended Complaint on May 15, 2009. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 Respondent of the Complaint, and the proceedings commenced on May 19, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 8, 2009. The Response was filed late with the Center on June 9, 2009 without any reason or request for permission to file late.

The Center appointed Harrie R. Samaras as the sole panelist in this matter on June 17, 2009. 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.

By an email dated June 17, 2009, Complainant filed a "Request for Permission to File Supplemental Submission" as well as the proposed Supplemental Submission. On June 19, 2009, Respondent filed objections by email to Complainant`s Supplemental filing. Neither the Policy nor the Rules, provide for Supplemental Filings by either party except in a few narrow instances not applicable here. The Panel has the sole discretion to determine the admissibility of the Supplemental Filing. The applicable principles for exercising this discretion have been considered in numerous cases decided under the Policy and Rules. See e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 (denying a Supplemental Submission because, among other things, it did not sufficiently identify the alleged new facts and misstatements to satisfy the panel that they were indeed new facts or misstatements which required a reply).

Applying these principles to the present case, the Panel notes Complainant`s reason for filing the Supplemental Submission: "the specific issues discussed in its supplemental submission are novel and, as such, could not reasonably have been anticipated or addressed by Complainant in its Amended Complaint." Complainant has not demonstrated to the Panel how this reason comports with the applicable principles for accepting a supplemental filing. Furthermore, it appears to the Panel from reading the Amended Complaint that Complainant fully anticipated Respondent`s arguments and sufficiently addressed them. Thus, the Panel has not considered the Supplemental Filing.

Although Respondent has not requested from the Panel any special consideration for filing its Response a day late, the Panel notes correspondence in the record between Respondent and the Center which expressed concerns about meeting the deadline for replying to the Complaint in view of its substantial supporting record. Insofar as the Response was only a day late, the Panel has considered it in rendering its decision.

4. Factual Background

Steven Spielberg formed Complainant Amblin` Entertainment Inc. in 1980. Complainant produces motion pictures, television programs, and soundtracks, and has used the service marks AMBLIN ENTERTAINMENT and AMBLIN continuously since 1984 in the United States in connection with those entertainment services. The mark AMBLIN was based upon the name of the first of Steven Spielberg`s publicly released films, Amblin` (1968).

Complainant has produced numerous critically-acclaimed and commercially-successful motion pictures, including both motion pictures directed by Steven Spielberg and motion pictures directed by others. Complainant`s pictures include: E.T. the Extra-Terrestrial (1982); Gremlins (1984); Back to the Future (1985); The Color Purple (1985); An American Tail (1986); Empire of the Sun (1987); The Land Before Time (1988); Who Framed Roger Rabbit (1988); Back to the Future Part II (1989); Back to the Future Part III (1990); Hook (1991); Cape Fear (1991); Jurassic Park (1993); Schindler`s List (1993); The Flintstones (1994); Balto (1995); The Bridges of Madison County (1995); Twister (1996); Men in Black (1997); Saving Private Ryan (1998); Small Soldiers (1998); Artificial Intelligence: A.I. (2001); Minority Report (2002); Munich (2005); The Legend of Zorro (2005); War of the Worlds (2005); Letters from Iwo Jima (2006); and Flags of Our Fathers (2006).

Billions of dollars have been spent on the production, advertisement, and promotion of Complainant`s films and its films have grossed in excess of USD 3,000,000,000 in the United States. Complainant`s AMBLIN ENTERTAINMENT and AMBLIN marks have been displayed in each of Complainant`s motion pictures on screen shots. Complainant estimates that its marks have been exposed in this manner to more than one billion viewers of motion pictures since the 1980s.

Complainant`s television productions have included: Amazing Stories (1985-1987); Tiny Toon Adventures (1990-1992); Harry and the Hendersons (1991-1993); Back to the Future: The Animated Series (1991-1992); Sea Quest DSV (1993-1996), and ER (1994-2009). Complainant`s television programs have generated more than USD 1,000,000,000 in revenue in the United States since the 1980s. Complainant`s AMBLIN mark has appeared in the credits for each of its television programs. Complainant estimates that its marks have been exposed in this fashion to more than one billion viewers of television programs since the 1980s.

Complainant owns United States Service Mark Registration No. 2,304,379 for the mark AMBLIN ENTERTAINMENT ("Entertainment" is disclaimed apart from the mark) for entertainment services, namely, production of television shows, motion pictures, and soundtracks. The registration issued in December 1999 on the basis of first use of the mark in commerce in 1984. Complainant`s registration of AMBLIN ENTERTAINMENT has become incontestable.

Respondent registered the Domain Name in 1997.

5. Parties` Contentions

A. Complainant

Complainant`s version of the communications it has had with Respondent (or those who Complainant believes were Respondent`s predecessors-in-interest to the Domain Name) regarding the Domain Name follows:

A person who identified himself as "P.G. Thomas" of Van Nuys, California originally registered the Domain Name in 1997. Complainant and Mr. Spielberg learned of the Domain Name in 1998 when Mr. Spielberg received letters from persons who tried to reach him through the Domain Name, as well as a letter from someone who complained about rude emails from a person holding himself out as "ssberg@amblin.com." Following an investigation, representatives of Complainant and Mr. Spielberg identified the registrant as "Paul Grim," who was employed at a rival motion picture studio. Complainant and Mr. Spielberg engaged counsel to send a protest letter to the registrant. Registrant responded acknowledging that he had held himself out as a representative of Complainant in responding to numerous emails directed to Mr. Spielberg at the Domain Name. Complainant`s counsel also received correspondence from an anonymous third party reflecting email messages that registrant sent, as well as other unsolicited emails indicating that registrant was falsely holding himself out as a representative of Complainant and Mr. Spielberg and asking them for private information.

Following further correspondence, the registrant agreed to transfer the Domain Name to Complainant, but it came to Complainant`s attention that the registrant continued to hold himself out as affiliated with Complainant and Mr. Spielberg. The registrant then requested unacceptable changes to a draft settlement agreement and Complainant and the registrant were unable to consummate a settlement. The registrant continued to receive emails directed to Complainant and Mr. Spielberg and to respond to them, including in his responses a set of "FAQ`s" and answers stating that he received around 10 messages a day through the Domain Name.

The registrant also posted a website at "www.amblin.com" that linked to another commercial website at "www.groovycafe.com" (also owned by the registrant), which promoted web design services and which used Complainant`s marks AMBLIN ENTERTAINMENT and AMBLIN in the site`s metatags. Complainant has consistently monitored the Domain Name hoping that it could be obtained consensually or would not be renewed. The Domain Name was apparently then transferred in 2002 or 2003 to an entity called "Webapalooza," with an address of record in Syracuse, New York. Upon information and belief, the "Webapalooza" entity was an affiliate of the registrant Paul Grim. The Domain Name did not resolve to a functioning website until sometime in 2005, when it began resolving to a page that contained sponsored links to third-party websites. In 2005, Complainant, through a representative, contacted Webapalooza, the then-registrant of record, and offered to buy the disputed domain name for USD 175. Webapalooza responded "$175.00? You must be kidding right?" When Complainant`s agent increased the offer to USD 275, Webapalooza responded "Sorry I`ve turned down much bigger offers. You`d have to add a few zeroes before you`d even be under consideration." Record ownership of the Domain Name`s registration was subsequently transferred to Domains by Proxy, Inc. Complainant`s counsel continued to monitor the Domain Name on a regular basis. From November 2005 until late 2008, the Domain Name resolved to pages on GoDaddy.com that stated "This domain is for sale" and provided a variety of sponsored links to third-party websites selling various goods and services.

In late 2008, counsel for Complainant contacted Domains by Proxy, Inc. with a request that it disclose the identity of the actual registrant of the Domain Name. Domains by Proxy, Inc. forwarded Complainant`s counsel`s letter to the actual registrant. Complainant`s counsel received an email response from a "John Doe" who also identified himself as "amblin.com Proxy." The response concluded with the statement: "as you have already noticed the amblin.com domain name is not currently being utilized by its owner. As such, if you should be interested in purchasing the amblin.com domain name for your client`s own commercial development and usage, please let us know. The domain owner has expressed his willingness to transfer the domain name to your client if an equitable price can be agreed upon." In a subsequent email "John Doe" stated that he was "Just writing to inform you that the domain owner has changed amblin.com to redirect to Wikipedia`s entry for Amblin Entertainment, rather than Google`s home page. Hopefully this is a more satisfactory interim solution for you, at least until such time that the domain owner has the time and resources to develop the amblin.com domain".

In response to "John Doe`s" solicitation of an offer on behalf of the owner of the Domain Name, Complainant`s counsel offered USD 1,500, but this offer was rejected when "John Doe" stated that the Registrant had had a change of heart. When Complainant`s counsel responded that "John Doe" had solicited an offer to establish an "equitable price," "John Doe" responded that: "When I originally stated that the domain owner had expressed his willingness to sell the domain name ambin.com, I was speaking on his behalf in general terms based on past events. The domain owner also owns a number of other domain names, some of which he has been willing to sell over the years. I had mistakenly assumed that this would also be the case with the amblin.com domain name, but as it turns out the domain owner has future development plans for the amblin.com domain name. I apologize for the misunderstanding, and I hope you have not been inconvenienced by it." The Domain Name continues to resolve to the Wikipedia entry for Complainant (the Panel has found that at times it has resolved to a blank page).

With regard to the merits of its case the following summarizes Complainant`s arguments:

Complainant claims that it has continuous common-law rights in the AMBLIN mark that predate registration of the Domain Name and that its U.S. registration predates ownership of the Domain Name by those who it believes owned the Domain Name registration after the first owner. Complainant also claims that <amblin.com> is confusingly similar to Complainant`s AMBLIN ENTERTAINMENT and AMBLIN service marks.

Complainant maintains that it never licensed or authorized Respondent to use the AMBLIN and AMBLIN ENTERTAINMENT marks. The original registrant`s use of the Domain Name to hold himself out falsely as an authorized representative of Complainant and its principal Steven Spielberg and to respond to inquiries directed to them was obviously not a bona fide offering of goods or services within the meaning of the Policy, or a legitimate noncommercial or fair use under the Policy. Neither was the use of the Domain Name in connection with a website that promoted web design services, or the parking of the Domain Name on websites that have provided sponsored links to third-party websites. Furthermore, "John Doe`s" claim that the Registrant has some vague "future development plans" for the Domain Name does not establish the existence of any demonstrable preparations to use the Domain Name before Complainant`s notification to the Registrant of the dispute. Lastly, Respondent has not been known by either the Domain Name or a name corresponding to it.

When Paul Grim originally registered the Domain Name in 1997, the AMBLIN and AMBLIN ENTERTAINMENT marks had been used, advertised, and promoted in the United States by Complainant for well over a decade. Because no other entity has used the AMBLIN mark in the United States in connection with motion picture and television entertainment services and the AMBLIN marks were selected by reference to Steven Spielberg`s first publicly-released film, Amblin, the only reasonable inference to be drawn is that the original registrant of the Domain Name had actual notice of the AMBLIN and AMBLIN ENTERTAINMENT marks when registering the Domain Name. The original registrant`s bad faith registration and use of the Domain Name is shown by his subsequent use of it to pass himself off as a representative of Complainant and Mr. Spielberg. The original registrant`s subsequent use of the Domain Name to divert Internet users seeking information about Complainant to a website on which he offered web design services also establishes bad faith use and registration under the Policy.

Respondent`s and its predecessors` bad faith use of the Domain Name is also demonstrated by their respective offers to sell the Domain Name to Complainant or to the general public. Likewise, bad faith use is also demonstrated by the fact that the Domain Name resolved to a GoDaddy parking page containing sponsored links for a period of three years and Respondent used a privacy service to cover up his identity and refused to identify itself in correspondence with Complainant`s counsel.

The passage of time between the original registration of the Domain Name and the filing of this action is not relevant under the Policy. Even if the equitable doctrine of laches applied, neither Respondent, nor the Registrant or any of its predecessor(s)-in-interest, could show that they were prejudiced in any manner by the passage of time prior to the filing of this complaint because none of them acted in reliance by investing in and developing a functioning website, or in any other manner.

B. Respondent

Paul Grim admits that he is the first, original, and only owner of the Domain Name since he first registered it in 1997 (henceforth, references in the Decision to "Respondent" will mean Paul Grim). He claims to have never sold, traded, bartered, rented, or gifted the Domain Name to anyone. Mr. Grim also claims that he transferred the Domain Name between several registrars over the years, including a consolidation of several domain names owned by the Respondent under the "Webapalooza" moniker.

Complainant`s mark is AMBLIN ENTERTAINMENT, not Amblin. The Domain Name is <amblin.com> not <amblinentertainment.com>, therefore it does not contain the Complainant`s mark in its entirety. The Domain Name is not identical to Complainant`s mark, and although it may be "similar", it is not confusingly similar.

Complainant`s trademark is dated two years, three months, and 13 days after Respondent registered the Domain Name. It is also one year, one month, and 15 days after Complainant`s initial cease and desist letter. If Complainant was truly concerned about establishing and protecting their trademark, why did they delay so long in registering it with the U.S. Trademark office? Mr. Grim claims he has not created a likelihood of confusion with the Complainant`s mark, because Complainant has never had any established web presence using their mark, so Internauts could not possibly have been misdirected away from something that does not exist. Also, Respondent has never posted a web page at the disputed domain, so a "likelihood of confusion" could not have arisen out of something that does not exist. In this regard, Respondent notes that the earliest domain name containing "amblin" was registered late in 2001 - over four years after Respondent registered <amblin.com>, and two years after Complainant trademarked AMBLIN` ENTERTAINMENT.

With regard to Mr. Grim`s responding to third-party emails intended for Complainant or Steven Spielberg, Mr. Grim asserts that he has never claimed to be employed by, affiliated with, or an agent or representative of, the Complainant, nor of Mr. Spielberg, nor has he ever held himself out as "ssberg@amblin.com", nor has he ever acknowledged anything similar. Mr. Grim admits that he has represented himself as the administrator of <amblin.com>. He claims that he never solicited emails or inquiries at the Domain Name, but admits he replied to inquiries that he could adequately and honestly answer, and always in a polite and professional manner. By and large, these were simply innocent correspondences between movie buffs. Furthermore, Mr. Grim claims that he has never made it publicly known that he owns the disputed domain name, or that he at one time received emails sent to it. According to Complainant`s own documents, the email address "ssberg@amblin.com" was mistakenly printed by The Sun newspaper in England as part of the launch of their web site.

Mr. Grim claims that he was offering a "bona fide service" when responding to emails that were intended for Mr. Spielberg. He maintains that he has never created, maintained, or owned a "commercial" web site, for anyone, at any time including providing web site design services for anyone. Mr. Grim states he never linked the Domain Name to "www.groovycafe.com", but admits he only briefly used it as a "practice" web site to learn how to create basic web pages while taking a series of online HTML certification courses offered through Santa Monica Community College during 1998-1999.

Mr. Grim alleges that he has a legitimate interest in the Domain Name by the fact that he is a Film School graduate with a Bachelor`s degree in Cinema and Photography. He also enrolled in screenwriting classes at UCLA over a course of 5 years. Mr. Grim worked for MGM Studios for 9 years, and is an award-winning screenwriter in his own right. Finally, Mr. Grim claims he has almost completed his Masters Degree in Information Technology, which he undertook so that he could create a professional-looking fan web site for the Domain Name. Mr. Grim asserts that he only registered the Domain Name after news that the founder of Amblin` Entertainment had formed a new company, DreamWorks. He made repeated attempts to visit "www.amblin.com", but was unable to find a web site for Complainant. According to Mr. Grim, because he was inspired to attend film school in no small part due to the influence of Complainant`s films, he decided to register the Domain Name and one day build it into a web site where fans could learn about the history of Amblin` Entertainment and discuss films with other like-minded fans.

Mr. Grim claims that he never profited from the Domain Name and has in fact suffered significant losses (both financial and personal) as a direct result of owning it. He never requested that a statement reading: "This domain is for sale!" be placed on the disputed domain`s parking page. This was an action taken by the registrar (GoDaddy) without Mr. Grim`s knowledge or consent. Mr. Grim transferred the Domain Name to GoDaddy due to service difficulties with the previous registrar. He believes GoDaddy is responsible for the ads on the parked domain pages and that the ads are standard practice presumably as a means to defray the registrar`s costs. Mr. Grim claims that he cannot be deemed to have acted in bad faith, as he was unaware that the registrar had placed these ads on the Domain Name`s parking page, nor were the ads placed with his consent, nor did he ever "benefit from click-through compensation." Mr. Grim alleges that he has not invested hundreds of dollars and dozens of hours renewing and protecting the Domain Name registration for 12 years, plus over USD 35,000 and seven years in mastering web site programming, to then turn around and sell the Domain Name to a complete stranger over the Internet who sends him an anonymous email. Mr. Grim further states that since a sale of the Domain Name was not the primary purpose of its registration, and since it has also never been offered for sale to any of Complainant`s competitors, Complainant`s argument fails on both accounts.

With regard to parking the Domain Name or pointing it to the Wikipedia description of Amblin` Entertainment, Mr. Grim points out that Complainant has failed to develop any web site of its own at any of the eight domain names which incorporate the Complainant`s trademark of 1999. He claims that he cannot possibly be diverting Internet traffic away from Complainant, because Complainant has no established Internet presence so there is no Internet traffic to divert. Mr. Grim believes he is performing a bona fide service for Complainant by directing visitors to Complainant`s Wikipedia entry until he can build a fan web site. Search engines consistently turn up the Wikipedia entry for Complainant within the top two results. So by directing Internauts to the Wikipedia entry for Complainant, Mr. Grim believes he has in fact satisfied their "reasonable expectations".

With regard to why Mr. Grim used a privacy service, he maintains that as the rightful owner of the Domain Name for nearly 12 years, he is under no obligation to identify himself to someone alleging in an email that they are Complainant`s counsel, any more than he is obligated to identify himself to any other stranger who sends him unsolicited email correspondence. Mr. Grim also maintains he is under no obligation to provide Complainant with the details of, or timeline for, his future development plans for the Domain Name. Mr. Grim claims he used a privacy service to protect himself and his family.

Mr. Grim claims he has never initiated contact with the Complainant in an attempt to sell the Domain Name. If Complainant was truly interested in obtaining the Domain Name "consensually", why did they not make a bona fide offer in 2003 to the entity that they (mistakenly) believed was a new registrant? Their failure to do so, and instead silently "monitor[ing]" of the use demonstrates that they not only have no bona fide interest in the Domain Name, but also that they have abdicated protection of their trademark during the intervening 10 years. This strongly indicates their acquiescence towards the Respondent`s use of it. Meanwhile, Mr. Grim claims to have invested over USD 35,000 and seven years of his life in graduate school to earn a Masters degree in Information Technology with a focus on Web Site Technologies. This was done in order to learn how to professionally design and program web sites so that he could one day build a respectable fan web site for "www.amblin.com". Thus, the doctrines of laches and/or estoppel must be invoked.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(i) the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

(ii) 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.

A. Identical or Confusingly Similar

This element consists of two parts: first, does Complainant have rights in a relevant mark and, second, is the Domain Name identical or confusingly similar to that mark.

Complainant is relying on both its common law rights in the AMBLIN and AMBLIN ENTERTAINMENT marks as well as a registration for the mark AMBLIN ENTERTAINMENT that the U.S. Patent and Trademark Office issued. As previous panels have held, under United States law, an unregistered trademark that is used in commerce may be treated as a trademark for the purposes of paragraph 4(a)(i) of the Policy if Complainant can show that the mark is inherently distinctive or at least has acquired secondary meaning and thus has become a distinctive identifier associated with Complainant or its goods and services. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions ("WIPO Overview"), paragraph 1.7; see also Theodore Presser Ca, v, John Smith/Whois Protection, WIPO Case No. D2008-0549. Relevant evidence of such secondary meaning includes "length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition". Id. By virtue of the evidence Complainant has made of record here (declarations and supporting documents), without any countervailing evidence, the Panel finds that Complainant has demonstrated acquired distinctiveness sufficient to establish common law trademark rights in the AMBLIN and AMBLIN ENTERTAINMENT marks well before Respondent registered the Domain Name in 1997.

It is uncontested that at the time Respondent registered the Domain Name, Complainant had used, advertised and promoted extensively the AMBLIN and AMBLIN ENTERTAINMENT marks in the United States for well over a decade in connection with numerous well-known films that have grossed to date more than USD 3,000,000,000 (e.g., E. T. the Extra-Terrestrial (1982); Gremlins (1984); Back to the Future (1985); The Color Purple (1985); An American Tail (1986); Empire of the Sun (1987); The Land Before Time (1988); Who Framed Roger Rabbit (1988); Back to the Future Part II (1989); Back to the Future Part III (1990); Hook (1991); Cape Fear (1991); Jurassic Park (1993); Schindler`s List (1993); The Flintstones (1994); The Bridges of Madison County (1995); Twister (1996); Men in Black (1997). It is also uncontested that Complainant had produced the following television programs/series under the AMBLIN mark before Respondent registered the Domain Name: Amazing Stories (1985-1987); Tiny Toon Adventures (1990-1992); Harry and the Hendersons (1991-1993); Back to the Future: The Animated Series (1991-1992); Sea Quest DSV (1993-1996), and ER (1994-2009). Indeed, Respondent states he was aware of Complainant, Amblin` Entertainment, when registering the Domain Name.

Furthermore, Complainant`s registration of the AMBLIN ENTERTAINMENT mark with the United States Patent and Trademark Office in 1999 based on use in commerce since 1984 is sufficient evidence of Complainant`s rights in the mark for purposes of the Policy even though the registration issued after the Domain Name was first registered. See Madrid 2012, S.A. v. Scott MartinMadridMan Websites, WIPO Case No. D2003-0598 (registration of complainant`s mark after date of registration of disputed domain name "sufficient for purposes of the Policy, paragraph 4(a)(i)"); AB Svenska Spel v. Zacharov, WIPO Case No. D2003-0527 ("Paragraph 4(a) (i) of the Policy does not require that the trademark be registered prior to the domain name."). Complainant`s registration is entitled to a presumption of validity, which Respondent has not rebutted. Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261.

Respondent argues that because Complainant`s U.S. registration is for AMBLIN ENTERTAINMENT instead of just AMBLIN (as in the Domain Name <amblin.com>), the Domain Name does not contain the mark in its entirety and so it is not identical, nor is it confusingly similar (although Respondent acknowledges it may be similar). This argument misconstrues the Policy and ignores important facts in this case. The Panel has determined based on uncontroverted evidence that Complainant has established common law rights in the mark AMBLIN that predate registration of the Domain Name. Insofar as the Domain Name <amblin.com> uses Complainant`s AMBLIN mark (in which Complainant has established common law rights) in its entirety it is identical to the AMBLIN mark. Moreover, because the Domain Name uses the dominant, source-identifying portion (AMBLIN) of the registered mark AMBLIN ENTERTAINMENT in its entirety, it is confusingly similar to Complainant`s registered mark. Barry D. Sears, Ph.D. v. Texas International Property Associates, WIPO Case No. D2007-0284 ("It is well settled that a domain name is confusingly similar for purposes of the first factor of the Policy if it incorporates complainant`s mark in its entirety or incorporates the dominant portion of complainant`s trademarks.").

Respondent also argues that there can be no confusion because Complainant has never established a web presence with the AMBLIN/AMBLIN ENTERTAINMENT marks. The test for whether confusingly similarity exists under the Policy does not rely on whether Complainant is using its mark in conjunction with its own website. Complainant has satisfied its burden under the Policy as discussed above.

For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

It is uncontested that Complainant has not licensed or otherwise authorized Respondent to use its AMBLIN or AMBLIN ENTERTAINMENT marks for any purpose. Insofar as Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests to the Domain Name (Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261), this shifts the burden to Respondent to show by concrete evidence that it has rights or legitimate interests in the Domain Name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. Pursuant to paragraph 4(c) of the Policy, Respondent may satisfy his burden by demonstrating any of the following: (i) before any notice of the dispute, Respondent`s 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) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) Respondent is 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.

Respondent does not claim that he is commonly known by the Domain Name, so paragraph 4(c)(ii) of the Policy is not relevant here. Respondent claims to have a legitimate interest in the Domain Name based on his film and information technology education and future plans to use the Domain Name. That is, Respondent claims he was inspired to attend film school due to the influence of Complainant`s/ Mr. Spielberg`s films and he decided to register the Domain Name so he could one day build a web site where fans could learn about the history of Amblin` Entertainment and discuss films with other like-minded fans. Attending school to obtain a degree in information technology was also part of this plan so he could build the website. Respondent further claims that he thought he could use the Domain Name as his own because he could not find the Domain Name registered to Complainant and he assumed Complainant/Mr. Spielberg abandoned the AMBLIN mark after forming DreamWorks.

It is clear from the evidence Complainant has made of record that it did not abandon the AMBLIN/AMBLIN ENTERTAINMENT marks after DreamWorks was formed. It appears that Respondent mistakenly assumed this because Complainant did not use AMBLIN in a domain name. Regardless of whether Complainant was ever going to register a domain name using its AMBLIN mark, Respondent`s adoption and use of the AMBLIN mark in the Domain Name without Complainant`s authorization is not a legitimate use under the Policy. Furthermore, Respondent`s future plans for the Domain Name do not constitute the requisite concrete evidentiary showing that before any notice of the dispute, Respondent had already used or could demonstrate the preparations to use the Domain Name in connection with a bona fide offering of goods or services. See, e.g., T-Online.at Internet Services GmbfJ v. Kiss, WIPO Case No. D2008-1599.

Respondent also claims that he was offering Complainant and Mr. Spielberg a bona fide service when responding to emails that came to him as a result of the Domain Name but were intended for Mr. Spielberg. As already mentioned above, an infringing use of Complainant`s AMBLIN mark is not a bona fide use under the Policy.

The Panel therefore holds that Complainant has established paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of a domain name in bad faith for the purpose of paragraph 4 (a)(iii) above:

(i) circumstances indicating that the registrant has registered or 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 the registrant`s documented out-of-pocket costs directly related to the domain name; or

(ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or

(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant`s website or other online location, by creating a likelihood of confusion with the complainant`s mark as to the source, sponsorship, affiliation, or endorsement of the registrant`s website or location or of a product or service on the registrant`s website or location.

This list is not exclusive, however, and bad faith under the Policy may be predicated on other circumstances. See, e.g., Salomon Smith Barney Inc. v. Salomon Internet Services, WIPO Case No. D2000-0668.

When Respondent registered the Domain Name in 1997 Complainant had used, advertised and promoted the AMBLIN and AMBLIN ENTERTAINMENT marks in the United States for well over a decade. It would be a logical inference for the Panel to draw that because Respondent admits to being in the same business as Complainant, he would have known about Complainant and the AMBLIN/AMBLIN ENTERTAINMENT marks before registering the Domain Name. The Panel need not draw any inferences, however, because Respondent admits that he knew about Mr. Spielberg and his accomplishments (motivators to Respondent in his own motion picture career) and the AMBLIN mark. Indeed Respondent believed that he could adopt the AMBLIN mark as his own in a Domain Name simply because Complainant had not registered a domain name using the AMBLIN mark. Thus, the Panel concludes that insofar as Respondent clearly had knowledge of the AMBLIN marks before registering the Domain Name, the registration was in bad faith.

This dispute between the parties has been ongoing for many years so Complainant has raised many issues regarding Respondent`s bad faith use of the Domain Name and Respondent has replied to them all in kind. The Panel has focused its decision on a few select issues.

Complainant supplied the Panel with considerable correspondence that makes clear the public intended to correspond directly with Mr. Spielberg on personal and professional matters (emails/letters were addressed to Mr. Spielberg) and people thought they had reached him by virtue of the Domain Name (<amblin.com>) and an associated email address (admin@amblin.com). Furthermore, Respondent held himself out in a manner that reinforced the public`s belief that they had reached Mr. Spielberg, or someone associated with him. For example, Respondent referred to himself as the administrator of the website bearing Mr. Spielberg`s AMBLIN mark; Respondent promised to pass emails on to Mr. Spielberg; and Respondent related information about Mr. Spielberg, his companies and the internal operations of the companies to the public in a believable manner (Respondent generated FAQs) even though Respondent was not authorized by Complainant or Mr. Spielberg to perform any of the functions Respondent believes he should receive credit for. With full knowledge that the public thought they were contacting Mr. Spielberg personally for reliable information, guidance, mentoring and even work, Respondent communicated with these individuals including responding to their questions, requesting additional personal information and providing guidance and advice, knowing he was not the intended recipient of their communications. It was clear that the public associated AMBLIN with Complainant and Mr. Spielberg and Respondent was taking knowing advantage of the confusion. Counsel for Complainants and Mr. Spielberg communicated with Respondent about his activities and Respondent continued them. For all of the above reasons, the Panel finds Respondent was using the Domain Name in bad faith.

In this case, Respondent`s use of a privacy shield is, under the circumstances, further evidence of bad faith, and permits the Panel to draw adverse inferences regarding Respondent`s conduct and intent, because, among other things, the privacy shield prevents Complainant from determining the recent history of the ownership and possible transfer of the Domain Name. Ustream.TV, Inc v. VerticalAxis, Inc., WIPO Case No. D2008-0598; The Saul Zaenlz Co. cUb/a Tolkein Enterprises v. Euro box Ltd./"The Saul Zaentz Company," WIPO Case No. D2008-0156.

D. Laches

Respondent suggests that Complainant has committed laches (undue delay in asserting a legal claim, resulting in prejudice to the respondent) by permitting a significant passage of time between the registration of the Domain Name and Complainant`s filing of this proceeding. As an initial matter, Respondent has not provided the requisite support to assert a laches defense, but in any event, laches does not properly apply under the Policy. National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin` Connection, Inc., WIPO Case No. D2007-1524 ("[T]he Panel concludes that the equitable defense of laches does not properly apply in this Policy proceeding. The remedies under the Policy are injunctive rather than compensatory in nature, and the concern is to avoid ongoing or future confusion as to the source of communications, goods, or services.)

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 <amblin.com> be transferred to Complainant.


Harrie R. Samaras
Sole Panelist

Dated: July 10, 2009

 

Источник информации: https://internet-law.ru/intlaw/udrp/2009/d2009-0626.html

 

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