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DreamWorks L.L.C. v. Andy Xu [2004] GENDND 1177 (28 September 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

DreamWorks L.L.C. v. Andy Xu

Case No. D2004-0667

1. The Parties

Complainant is DreamWorks L.L.C. (the “Complainant”) of Glendale, California, United States of America, represented by Seyfarth Shaw LLP of United States of America.

Respondent is Andy Xu (the “Respondent”) of Ningbo, Zhejiang, the People’s Republic of China.

2. The Domain Name and Registrar

The domain name the subject of this Complaint is <dreamworks-china.com>. The Registrar is Network Solutions, LLC. The remedy sought by Complainant is transfer of the domain name <dreamworks-china.com> to Complainant.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2004. On August 24, 2004, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On August 25, 2004, Network Solutions, LLC 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 August 26, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 15, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 20, 2004.

The Center appointed Massimo Introvigne as the sole panelist in this matter on September 24, 2004. 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.

Respondent submitted a late Response on September 24, 2004. A Supplemental Filing was also submitted by the Complainant on September 28, 2004. The Panel chose not to accept these submissions. Finally, the Panel acknowledges that no other proceedings are pending before any court.

4. Factual Background

Complainant is the owner of the trademark DREAMWORKS, registered in several countries of the world (including China) for entertainment services, including but not limited to the development, production and distribution of motion pictures. DREAMWORKS is, without dispute, one of the world’s most well-known trademarks in the field of motion pictures. Every movie buff, and most of the general public throughout the world, knows that DREAMWORKS is a trademark associated with Steven Spielberg, in turn one of the world’s most famous movie directors and producers.

Respondent, Andy Xu registered the domain name <dreamworks-china.com>. The registration of the domain name <dreamworks-china.com>, occurred, without dispute, well after trademark rights from the name DREAMWORKS were acquired by Complainant, and Mr. Xu had no known connection with any activity or trade carried out under the trade name or trademark DREAMWORKS prior to his registering the domain name. The latter resolves in a Web site offering services in the entertainment field, or announcing that such services will be offered in the future.

5. Parties’ Contentions

A. Complainant

a. Complainant claims that it is owner of the well-known and largely used DREAMWORKS trademark for entertainment services.

b. Complainant claims that the domain name <dreamworks-china.com> has been registered by Respondent in bad faith. Respondent could not ignore Complainant’s trademark rights, nor had Respondent any rights or legitimate interests in respect of the domain name prior to his registration of the same.

c. Complainant claims that the domain name <dreamworks-china.com> has been, or is being used by Respondent in bad faith. The fact that, after Complainant challenged the domain name <dreamworks-china.com>, Respondent also registered <dreamworks-cn.com> (which was subsequently not renewed) should be interpreted as further evidence of Respondent’s bad faith.

B. Respondent

a. Respondent is in default and, accordingly, has not formally challenged the conclusions of Complainant. This Panel bearing in mind its obligations under paragraph 10(c) of the Rules does not see any reason to accept as valid a delayed Response submitted on September 24, 2004, well after the expiry of the due date for receipt of the Response.

6. Discussion and Findings

A. General Principles

Under paragraph 4 (a) of the Policy, the Panel should be satisfied that:

(i) The domain name 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 in bad faith;

(iv) The domain name is being used in bad faith.

B. Identical or Confusingly Similar

The Panel finds that Complainant has established that it is the owner of the trademark DREAMWORKS for entertainment services. The validity and fame of its trademarks are beyond dispute. Respondent’s domain name includes Complainant’s trademark and adds a reference to China. Internet users may easily understand the domain name to refer to the Chinese branch of Complainant’s well-known multi-national company. Accordingly, the domain name is confusingly similar to the trademark DREAMWORKS owned by Complainant.

C. Respondent’s Absence of Rights or Legitimate Interests in the Domain Name

There is no evidence that Respondent had any right or legitimate interest whatsoever in respect of the well-known trademark DREAMWORKS, or any association between the trademark DREAMWORKS and its activities, before registering the domain name. There is no fair or legitimate use of the domain name, which is used for a web site, which obviously misleads Internet users into believing that it is associated with Complainant’s usual activities. There is no fair or non-commercial use either, since some or most of the above services are obviously offered by Respondent in the hope of realizing a profit. On this point also, Complainant prevails.

D. Registration in Bad Faith

The trademark DREAMWORKS is well-known enough that it is presumable that Respondent knew it when registering the domain name (see Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137). Is subsequent use of the domain name confirms that Respondent knew that DREAMWORKS was a well-known trademark associated with entertainment services and motion pictures. No argument has been submitted by the defaulting Respondent in order to counter these findings.

The Panel concludes that the domain name has been registered in bad faith.

E. Use in Bad Faith

Complainant states that the domain name is being used in bad faith. This Panel does not regard as necessary to examine arguments about the “parallel” domain name <dreamworks-cn.com>, which lie outside these proceedings. Arguments about passive holding, also, do not seem relevant to this case. When visited by Panel, the domain name resolved in a fairly active web site. This web site, precisely, offers a variety of commercial services (or announces future services) in the field of entertainment, information, news, and motion pictures, the very field where Complainant’s trademark DREAMWORKS is well-known. The obvious conclusion is that Respondent tries to convey the misleading impression that it is a Chinese branch of Complainant’s business, or is connected to Complainant, or is in a position to put Internet users who would use its services in touch with Complainant. This false representation of itself amounts to use in bad faith under the Policy. Respondent, by not responding to the Complaint in the time period allowed, has not offered any counter-argument.

The Panel concludes that the domain name <dreamworks-china.com> is used by Respondent in bad faith.

7. Decision

Pursuant to Paragraph 4(i) of the Policy and Rule 15 of the Rules, this Panel orders that the domain name <dreamworks-china.com> be transferred to Complainant.

Dr. Massimo Introvigne
Sole Panelist

Dated: September 28, 2004