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Generic Top Level Domain Name (gTLD) Decisions |
Pixar v. Tom Romkey
Claim Number: FA0201000104133
PARTIES
Complainant
is Pixar, Emeryville, CA
(“Complainant”) represented by Jennifer
L. Myron, of Arent, Fox, Kintner,
Plotkin & Kahn PLLC. Respondent
is Tom Romkey, Miami, FL
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <pixr.com>,
registered with eNom, Inc.
PANEL
The
undersigned certifies that she has acted independently and impartially and to
the best of her knowledge, has no known conflict
in serving as Panelist in this
proceeding.
Sandra
Franklin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on January 30, 2002; the Forum received
a hard copy of the
Complaint on February 4, 2002.
On
January 30, 2002, eNom, Inc. confirmed by e-mail to the Forum that the domain
name <pixr.com> is registered
with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is
bound by the eNom, Inc. registration agreement and has thereby agreed to
resolve domain-name
disputes brought by third parties in accordance with
ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On
February 4, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of February 25, 2002 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent
via e-mail, post and fax, to all
entities and persons listed on Respondent’s registration as technical,
administrative and billing
contacts, and to postmaster@pixr.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the Forum transmitted
to the parties a Notification of Respondent Default.
On
March 4, 2002 pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed Sandra
Franklin as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility
under Paragraph 2(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to
employ reasonably available
means calculated to achieve actual notice to
Respondent.” Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
ICANN Policy, ICANN Rules,
the Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response
from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1.
Respondent’s domain name <pixr.com>
is confusingly similar and phonetically identical to Complainant’s PIXAR
mark.
2.
Respondent cannot, in good faith, claim that he or his goods or services are
commonly known by the name <pixr.com>.
Additionally, Respondent is not making any legitimate, noncommercial or
fair use of the disputed domain name nor is he using the domain
name in
connection with a bona fide offering of goods or services. Therefore, Respondent cannot demonstrate its
rights and legitimate interests in <pixr.com>.
3.
Respondent has attempted to sell the disputed domain name for consideration in
excess for out-of-pocket costs.
Furthermore, Respondent’s use of a domain name that is confusingly
similar to another company’s mark is evidence that Respondent has
a bad faith
intent to profit from Complainant’s well-known PIXAR mark. Therefore, there is evidence that Respondent
has registered and used <pixr.com> in bad faith.
B.
Respondent
An
incomplete Response was received late (February 28, 2002) and therefore was not
considered by the Panel.
FINDINGS
Complainant is an Academy Award®-winning,
digital animation studio that creates and produces animated feature films for
the public,
as well as computer software programs for graphics and
animation. Complainant has used the
PIXAR mark for nearly twenty years and holds three federal registrations; U.S.
Reg. No. 1,729,056, registered
November 3, 1992; U.S. Reg. No. 1,918,413,
registered September 12, 1995; U.S. Reg. No. 2,084,959, registered July 29,
1997. Complainant’s feature films have
received several awards and nominations for creative and technical achievements
and have broken numerous
box office records.
Due to the huge success and popularity of Complainant’s films, the PIXAR
mark has become famous and is identified by consumers as
the source of
high-quality digital animation goods and services.
Respondent registered the <pixr.com> domain name on July 12,
2001. According to Complainant, the
website connected with the disputed domain name greets the Internet user with
the message “pixr.com
is under construction.
Try Searching the Internet on these terms related to this Domain:”
including “Animation,” “Computer Animation,” “Animation Graphics,”
“Studio,”
“Production,” and “3d Software.”
Despite the fact the website is “under construction,” Respondent is
offering the disputed domain name for sale at the website connected
with
<greatdomains.com>. On this
website Respondent has offered to sell
the disputed domain name for $14,000.
After three different cease and desist
requests by Complainant and many other phone calls and e-mails in an attempt to
contact Respondent,
Respondent finally contacted Complainant and offered to
lease the disputed domain name for $250 per year.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to
“decide a complaint on the basis of the statements and documents submitted in
accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's
undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate
pursuant to paragraph 14(b) of
the Rules.
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the
following three elements to obtain an order that
a domain name should be
cancelled or transferred:
(1)
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
(2)
the Respondent has no rights or legitimate interests in respect of the domain
name; and
(3)
the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant has established its rights in
PIXAR both through federal registration and through subsequent continuous
use. Respondent’s <pixr.com> domain
name is phonetically similar to Complainant’s PIXAR mark. Because of the phonetic likeness there is a
confusing similarity between Complainant’s famous mark and the disputed domain
name. See Hewlett-Packard Co. v. Cupcake City, FA
93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is
phonetically identical to Complainant’s mark satisfies
¶ 4(a)(i) of the
Policy); See Am. Online, Inc. v. Peppler dba
RealTimeInternet.com, FA 103437 (Nat. Arb. Forum Feb. 22, 2002)
(finding the word “quest” and “crest” to be similar in sound and, thus, that Respondent’s <mapcrest.com>
domain name and Complainant’s MAP QUEST mark are confusingly similar).
Furthermore, the disputed domain is
nearly identical to Complainant’s famous mark since the only difference is that
the disputed domain
name omits the letter “a”
from Complainant’s famous mark.
Therefore, there is no doubt that <pixr.com> and PIXAR are
confusingly similar. See
Compaq Info. Techs. Group, L.P. v.
Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to Complainant’s COMPAQ
mark because the omission of the letter “a” in the domain name does not
significantly
change the overall impression of the mark); see also State Farm
Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June
15, 2000) (finding that the domain name <statfarm.com> is confusingly
similar to the Complainant’s
mark “State Farm”).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Respondent has failed to file a timely
Response in this matter. Therefore, the
Panel may presume that Respondent
has no rights or legitimate interests in <pixr.com>. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as
an admission that they have no
legitimate interest in the domain names).
According to Complainant, Respondent has
passively held the disputed domain since its registration. Further, Respondent has attempted to sell
the disputed domain name both on the Internet at <greatdomains.com> and directly to Complainant. Such behavior by Respondent is not evidence
of using the disputed domain name in connection with a bona fide offering of
goods and
services pursuant to Policy ¶ 4(c)(i). See J. Paul
Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7,
2000) (finding rights or legitimate interests do not exist when one has made no
use of the websites
that are located at the domain names at issue, other than
to sell the domain names for profit).
Respondent has not presented any evidence
that it has been or is now currently known as <pixr.com>. Therefore, Respondent has failed to satisfy
Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known
by the mark); see also
Broadcom Corp. v. Intellifone Corp.,
FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate
interests because Respondent is not commonly known by
the disputed domain name
or using the domain name in connection with a legitimate or fair use).
The mere fact Respondent has registered
and held <pixr.com>, a domain name that is a misspelling of
Complainant’s famous mark, the Respondent has not demonstrated a legitimate noncommercial or fair use of the
disputed domain name. See Encyclopaedia Brittanica, Inc. v. Zuccarini,
D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the
domain names are misspellings of Complainant's mark).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
Respondent has passively held the
disputed domain name and has offered to sell the disputed domain name to the
public for $14,000. Further, Respondent
has offered to lease the disputed domain name to Complainant. Such behavior is evidence Respondent has
registered <pixr.com> primarily for the purpose of selling or
renting the disputed domain name for valuable consideration in excess of
out-of-pocket costs. Therefore,
Respondent has regsitered the disputed domain name in bad faith pursuant to
Policy ¶ 4(b)(i). See Educational Testing Serv. v. TOEFL,
D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined
with no legitimate use of the domain name constitutes
registration and use in
bad faith); see also Nabisco
Brands Co. v. The Patron Group, D2000-0032 (WIPO Feb. 23, 2000) (finding
that the Respondent registered and used the domain names to profit where
Respondent offered
to sell the domain names for $2,300 per name); see also
Universal City Studios, Inc. v. Meeting
Point Co., D2000-1245 (WIPO Dec. 7, 2000) (finding bad faith where the
Respondent made no use of the domain names except to offer them to
sale to the
Complainant).
Respondent has registered and used a
domain name which is confusingly similar to Complainant’s famous mark. Respondent’s domain name differs from
Complainant’s famous mark merely by omitting the “a.” This use constitutes “typosquatting” which has been recognized as
a bad faith use of a domain name under Policy ¶ 4(b)(iv). See AltaVista Co. v.
Stoneybrook, D2000-0886 (WIPO Oct. 26, 2000) (awarding
<wwwalavista.com>, among other misspellings of altavista.com, to
Complainant); see also Dow Jones &
Co. & Dow Jones, L.P. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1,
2000) (awarding domain names <wwwdowjones.com>, <wwwwsj.com>,
<wwwbarrons.com> and <wwwbarronsmag.com>
to Complainants).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
be hereby granted.
Accordingly, it is Ordered that the
domain name <pixr.com> be transferred from Respondent
to Complainant.
Sandra Franklin, Panelist
Dated: March 13, 2002
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