Complainant is Dreamworks Animation LLC of Glendale, California, United States of America (“US”), represented by Seyfarth Shaw, US.
Respondent is Hongyun Zeng of Shanghai, China, represented by Hiways Law Offices, China.
The disputed domain names <orientaldreamworks.com> and <shanghaidreamworks.com> are registered with eName Technology Co., Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2014. On February 5, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 8, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On February 10, 2014, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On February 12, 2014, Complainant submitted its request that English be the language of the proceeding to the Center by email. On February 15, 2014, Respondent submitted its request that Chinese be the language of the proceeding to the Center by email.
The Center verified that the 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 in both English and Chinese, and the proceedings commenced on February 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 9, 2014.
On March 4, 2014, Respondent submitted a request that Complainant provide a Chinese translated Complaint with annexes by email. The Response was filed with the Center on March 9, 2014.
On March 15, 2014, Complainant submitted a Supplemental Filing to the Center by email.
The Center appointed Yijun Tian as the sole panelist in this matter on March 18, 2014. 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.
On March 25, 2014, Respondent submitted comments in reply of Complainant’s supplemental filing.
Complainant, Dreamworks Animation LLC, is a company incorporated in Glendale, California, US. Complainant and its predecessors are a leading company that produce and distribute live action and animated motion pictures, television program, and various other entertainment products and services. Living action films produced and/or distributed by Complainant’s predecessors-in-interest and licensees have grossed many hundreds of millions of US dollars in the US and abroad, including in China.
Complainant owns numerous registrations of its DREAMWORKS mark in the US (since 2001) and five registrations of the DREAMWORKS mark in China (since 1995) (Exhibits C-D and I to the Complaint). Complainant also owns registrations of the ORIENTAL DREAMWORKS mark in various countries around the world, including numerous registrations of the mark in English in China (Exhibit E to the Complaint). Complainant and its predecessors in interest have also had a presence on the Internet since long prior to the registration of the disputed domain name, and Complainant owns multiple domain names containing its DREAMWORKS mark.
Respondent is Hongyun Zeng of Shanghai, China. The disputed domain names <orientaldreamworks.com> and <shanghaidreamworks.com> were both registered by Respondent on November 22, 2011, long after the DREAMWORKS mark became internationally famous.
The disputed domain name <orientaldreamwork.com> contains Complainant’s trade mark ORIENTAL DRAMWORKS and generic Top-Level Domain (gTLD) “.com”, which is irrelevant because it has no trade mark significance.
This disputed domain name is identical to Complainant’s ORIENTAL DRAMWORKS mark
As the panel put it in a recent decision rendered by the China Internet Network Information Center (“CNDRP”) regarding a “.cn” domain name, the combination of “oriental” and “dreamworks” in this disputed domain name “will actually strengthen the connection between the disputed domain name […] and the Complainant’s registered DREAMWORKS mark, it is likely to cause confusion by the relevant public because China is ‘oriental’ by itself.” (DreamWorks Animation L.L.C v. Su, HKIAC Case No. DCN-1300561 (January 7, 2014).
The disputed domain name <shanghaidreamworks.com> contains three elements: (1) Complainant’s mark DREAMWORKS; (2) the city name “shanghai”; and (3) the gTLD “.com”.
As to whether <shanghaidremworks.com> is identical or confusingly similar to the DREAMWORKS trade mark, the addition of certain words, as here can exacerbate the confusing similarity between Complainant’s trade mark and the disputed domain name and increase the risk of confusion between the disputed domain name and the trade marks.
The addition of “shanghai”, the location of the Oriental Dreamworks joint venture, to Complainant’s DREAMWORKS mark, makes this disputed domain name confusingly similar to the DREAMWORKS mark because it will be viewed as identifying Complainant’s Chinese joint venture operation.
i. Respondent made no pre-notice bona fide use of the disputed domain name.
The disputed domain name <shanghaidreamworks.com> has never resolved to an active website.
With respect to the disputed domain name <orientaldreamworks.com>, previous UDRP panels have found that in the absence of any license or permission from a complainant to use well-known trademarks, no actual or contemplated bona fide or legitimate use of a domain name could reasonably be claimed.
Prior to Respondent’s receipt of Complainant’s demand letter, this disputed domain name resolved to a website that offered it for sale to the general public. That was not a “use” of this disputed domain name, bona fide or otherwise, within the meaning of Policy 4(c)(i).
Respondent cannot show that prior to notice to him of the dispute, he used, or made demonstrable preparations to use, the disputed domain names or a name corresponding to them in connection with a bona fide offering of good or service.
ii. Respondent has not been commonly known by the disputed domain name
Respondent, a natural person, also cannot show that he “has been commonly known by the domain name[s]” within the meaning of Policy 4(c)(ii).
There is no evidence that anyone other than Complainant’s joint venture has been known by the name “Oriental Dreamworks” and in his responses to Complainant’s demand letter, Respondent made no claim that he has ever been known by either of the disputed domain names or that he has registered or applied to register either disputed domain name.
iii. Respondent has made no legitimate noncommercial or fair use of the disputed domain names
Respondent cannot show he is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
He has made no use at all of the disputed domain name <shanghaidreamworks.com>. His use of the disputed domain name <orientaldreamworks.com> in response to receipt of Complainant’s demand letter is not a noncommercial or fair use.
The website to which that dispute domain name now resolves offers Respondent’s services.
His use of the dispute domain name <orientaldreamworks.com> for that purpose is a pretext, and is entirely gratuitous because Respondent’s website does not even mention Complainant or its marks or business, much less parody, criticize, or comment upon them, and it does not identify any products bearing Complainant’s marks.
Respondent simply uses this disputed domain name to divert persons trying to reach the website of Complainant’s Chinese joint venture to Respondent’s website by causing confusion. This is not fair or noncommercial use under Policy 4(c)(iii).
Respondent is a classic cyber squatter and, as shown below, there are multiple independent bases on which to find bad faith registration and use of both of the disputed domain names.
i. Bad faith registration and use per se
Bad faith registration and use of disputed domain names may be found simply because they both contain a famous trade mark of which Respondent was clearly aware.
Numerous UDRP panels have found that Complainant’s DREAMWORKS marks are well known and distinctive of Complainant in relation to its goods and services.
Respondent claimed in his response to Complainant’s demand letter that he had never heard of Complainant before December 2013. This claim is unbelievable given the popularity of Complainant’s animated films in China and the timing of registration of the disputed domain names.
Given the fame of the DREAMWORKS mark and the circumstances surrounding the registration of the disputed domain names, their registration and use are in bad faith per se.
ii. Lack of any plausible legitimate use of disputed domain names
Bad faith registration of both of disputed domain names may be found because there is no plausible legitimate use of them.
They are “so obviously connected with the Complainant and its products that [their] very use by someone with no connection with the Complainant suggests opportunistic bad faith”.
Respondent’s post-demand letter use of the disputed domain name <orientaldreamworks.com> to divert Internet users to his site is a sham, not a legitimate use.
iii. Opportunistic bad faith registration
Respondent’s registration of the disputed domain names one day after the announcement of the intended formation of Shanghai-based “Oriental DreamWorks” is a textbook example of preemptive bad faith registration.
iv. Offering of disputed domain name <orientalfreamworks.com> for sale to public
Bad faith registration and use of the dispute domain name <orientaldreamworks.com> may be found because this disputed domain name resolved to a site that offered it for sale to the public, and it is still available for purchase through the registrar’s website.
Prior to the receipt of the demand letter from Complainant’s Respondent made no use of this disputed domain name other than offer it for sale at a price that is likely to substantially exceed its out-of-pocket costs of registration, and the price that the domain name commands would largely be based on the trade mark of Complainant. Respondent’s demand of RMB 380,000 or almost USD 50,000 for sale of this dispute domain name makes it clear that Respondent sought far more than his out-of-pocket.
Respondent has registered more than 200 other domain names in addition to the disputed domain names. A number of these other domain names incorporate famous third-party trade marks and have been or are being offered for sale to the public.
The fact that Respondent provided invalid and undeliverable contact information regarding this address supports a finding of bad faith registration and use of both of disputed domain names.
v. Passive holding of disputed domain name <shanghaidreamworks.com>
Bad faith registration and use of the disputed domain name <shanghaidreamworks.com> may be found because Respondent has passively held this disputed domain name containing Complainant’s famous DREAMWORKS MARK since its registration more than two years ago.
There is a clear distinction between the disputed domain names and Complainant’s trade mark or service mark. It will not cause confusion.
The Chinese name of the service website, which is resolved by the disputed domain, is “东方筑梦阁” (Oriental Dream-building House).
By contrast, the Chinese translation of Complainant’s trade marks or service marks are “Dream Factory Animated Motion Pictures Company, Dream Factory Film Company”.
The disputed domain name <orientaldreamworks.com> is consistent of three key words “oriental”, “dream” and “work”. A combination of these three words may have very rich meanings.
The registration and operation of the disputed domain name <shanghaidreamworks.com> will not cause any confusion with Complainant’s DREAMWORKS trade mark either.
Respondent’s website which is resolved by disputed domain name is an education and training website, which provides free English vocabulary exercise (Annex 1.1. to the Response).
There is no connection between the disputed domain names and Complainant’s marks. No confusion to online visitors will be resulted in.
Complainant’s DREAMWORKS marks are not well known in China. It is a not a well-known trade mark listed on the website of the State Administration for Industry & Commerce of the People’s Republic of China (Annex 1.2. to the Response).
Respondent conducted a trade mark search on the Chinese Trade Mark Web by using the key word “dreamworks”, and found that the 16th, 19th, 20th and 21st trade marks are not owned by Complainant (Annex 1.3. to the Response).
Complainant holds 1546 domain names (Annex 1.4. to the Response). Complainant has registered its trade marks in China more than 20 years, but it has not registered the disputed domain names.
The disputed domain names are innovative combinations of words selected by Respondent. The registration date of the disputed domain names is much earlier than the registration date of the ORIENTALDREAMWORKS trade mark.
The disputed domain names are the creation of Respondent.
Respondent has prior copyright on the disputed domain names.
The rights of Complainant cannot be expanded unlimitedly.
Before receiving the notification of the Complaint, Respondent had already used disputed domain name <orientaldreamworks.com>, and provided true service through the website resolved by this disputed domain name.
Although Respondent has not got an ORIENTALDREAMWORKS mark, Respondent has used the disputed domain name <orientaldreamworks.com>, and the domain name has become well known among international students.
Respondent made fair uses of the disputed domain names. Respondent has not used the disputed domain names to confuse consumers for commercial gain or to jeopardize Complainant’s trade marks or service marks.
Respondent has not registered and used the disputed domain names in bad faith. Respondent registered the disputed domain names for establishing websites to use and not for sales.
The conduct of selling domain names should not be simply deemed as bad faith conduct.
Complainant induced Respondent to give a price for selling the disputed domain names. Respondent did not have the conduct of selling disputed domain name in bad faith.
Respondent has not registered the disputed domain names in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, or to prevent Complainant from registering relevant domain names.
The registration date of Respondent’s domain name <orientaldreamworks.com> was on November 21, 2011. The registration date of Complainant’s trade mark ORIENTAL DREAMWORKS was on February 10, 2012.
Holding domain names does not amount to use in bad faith.
Respondent registered the disputed domain names in good faith.
Complainant knew Respondent’s rights on the disputed domain names but still lodged this dispute.
Complainant understood that Respondent has not used the disputed domain names in bad faith but still lodged this compliant.
The registration date of the ORIENTAL DREAMWORKS mark by Complainant is later than the registration date of the disputed domain names. Complainant conducted reverse domain name hijacking.
The language of the registration agreement for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
(a) Numerous panels have found English to be the proper language for proceedings involving domain names registered under agreements whose language is Chinese where the evidence “suggest[ed] the likely possibility that the Respondent is conversant and proficient in the English language”.
(b) The disputed domain names <orientaldreamworks.com> and <shanghaidreamworks.com> are both registered in English, not Chinese, and contain Complainant’s distinctive English-language marks ORIENTAL DREAMWORKS and DREAMWORKS (Exhibits C-E to the Complaint);
(c) A website to which the disputed domain name <orientaldreamworks.com> resolved, prior to Respondent’s receipt of Complainant’s English-language demand letter, appeared in English as well as in Chinese (Exhibit E to the Complaint);
(d) Respondent currently owns over 200 registrations of additional domain names (Exhibit C to the Complaint). Many of these domain names are “parked” with Sedo, whose website is in English;
(e) Respondent was able to respond to Complainant’s cease and desist letter and subsequent correspondence which were all in English (Exhibits F, H-I to the Complaint);
(f) Respondent caused the disputed domain name <orientaldreamworks.com> to resolve to a website that purports to assist students in China to learn English vocabulary (Exhibits K-L to the Complaint);
(g) Respondent, who uses the Western name “stevendefoe” and the email address “[…]@hotmail.com”, (Exhibit H to the Complaint), claims, on an online document-sharing platform call Baidu Wenku to which this website is linked, that he is an English teacher at a Shanghai high school of the English language and that he has developed documents to help Chinese students learn English (Exhibits K-L to the Complaint);
(h) Respondent is sufficiently conversant and proficient in English to conduct this proceeding in English given Respondent’s claim that he is a skilled teacher of this language to others.
Respondent made a submission with respect to the language of the proceeding, and objected to the use of English as the language of the proceeding. Respondent filed its Response in Chinese, and has requested that Chinese be the language of the proceeding for the following reasons:
(a) Based on the requirement of the Policy, Chinese shall be the language of the proceeding. The language of the administrative proceeding shall be the language of the registration agreement. The language of the registration agreement is Chinese. Complainant should provide translations of relevant documents in the proceeding;
(b) Based on the requirement of the Policy, numerous UDRP decisions have held Chinese as the language of the administrative proceedings;
(c) The facts in the present case command that Chinese shall be the language of the proceedings. Respondent is a citizen of Shanghai, China. The Registrar is a Chinese company. The websites resolved by the disputed domain names are in Chinese;
(d) Using English as the language of the proceeding is unfair for Respondent. Chinese is the native language of the Respondent. It is appropriate for Complainant to recognize Chinese as the language of the proceeding.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:
“in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and Complainant would be unfairly disadvantaged by being forced to translate, the Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. Munhyunja, WIPO Case No. D2003-0585).
The Panel has determined that it is appropriate in this case to spare Complainant the burden of dealing with Chinese as the language of the proceeding. In making this determination, the Panel has taken into consideration the facts that the disputed domain names <orientaldreamworks.com> and <shanghaidreamworks.com> includes Latin characters and English words “oriental”, “dream”, “works” and “shanghai” (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).
Also, even if Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, there is persuasive evidence in the present proceeding to suggest that Respondent has sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the content on the infringing website to which the disputed domain name <orientaldreamworks.com> resolved, prior to Respondent’s receipt of Complainant’s English-language demand letter, appeared in English as well as in Chinese (Exhibit E to the Complaint); (b) Respondent was able to respond to Complainant’s cease and desist letter and subsequent correspondence which were all in English (Exhibits F, H-I to the Complaint); (c) Respondent caused the disputed domain names <orientaldreamworks.com> and <shanghaidreamworks.com> to resolve to a same website that assist students in China to learn English vocabulary (Exhibits K-L to the Complaint); (d) the Center has notified Respondent of the proceedings in both Chinese and English; (e) the Center informed Respondent that it would accept a Response in either English or Chinese.
Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in its ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.
With regard to the parties’ Supplemental Filings, the Panel has decided to take them both into account in rendering its decision.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain names registered by Respondent are identical or confusingly similar to a trade mark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
On the basis of the evidence introduced by Complainant and in particular with regards to the content of the relevant provisions of the Policy, paragraphs 4(a), (b), (c), the Panel concludes as follows:
The Panel finds that Complainant owns numerous registrations of its mark in the US (since 2001) and five registrations of the DREAMWORKS mark in China (since 1995) (Exhibits C-D and I to the Complaint). Complainant also owns registrations of the ORIENTAL DREAMWORKS mark in various countries around the world, including numerous registrations of the mark in English in China (Exhibit E to the Complaint). Complainant and its predecessors are a leading company that produce and distribute live action and animated motion pictures, television program, and various other entertainment products and services. Living action films produced and/or distributed by Complainant‘s predecessors-in-interest and licensees have grossed many hundreds of millions of US dollars in the US and abroad, including in China.
Complainant and its predecessors in interest have also had a presence on the Internet since long prior to the registration of the disputed domain name, and Complainant owns multiple domain names containing its DREAMWORKS mark.
The disputed domain name <orientaldreamworks.com> comprises the DREAMWORKS mark in its entirety. The disputed domain name only differs from Complainant’s DREAMWORKS mark by a prefix of “oriental” to the mark DREAMWORKS. This does not eliminate the confusing similarity between Complainant’s registered trademark and the disputed domain name.
The disputed domain name < hanghaidreamworks.com> comprises the DREAMWO RKS mark in its entirety. The disputed domain name only differs from Complainant’s trademark by a prefix of “shanghai” to the mark DREAMWORKS. This does not eliminate the confusing similarity between Complainant’s registered trademark and the disputed domain name.
Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
Generally a respondent “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it” (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; PCCW-HKT DataCom Services Limited v. Yingke, ADNDRC Case No. HK0500065).
Mere addition of the descriptive term “ oriental” as a prefix to Complainant’s mark fails to distinguish. By contrast, it may increase the likelihood of confusion. Consumers who visit <orientaldreamworks.com> are likely to be confused and may falsely believe that <orientaldreamworks.com> is operated by Complainant for providing DREAMWORKS-branded products or service in oriental world, such as China. Similarly, mere addition of the descriptive term “shanghai” as a prefix to Complainant’s mark fails to distinguish. By contrast, it may increase the likelihood of confusion. Consumers who visit <shanghaidreamworks.com> are likely to be confused and may falsely believe that <shanghaidreamworks.com> is operated by Complainant for providing DREAMWORKS-branded products or service in Shanghai, China (ABB Asea Brown Boveri Ltd. v. A.B.B Transmission Engineering Co., Ltd., WIPO Case No. D2007-1466; Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI, WIPO Case No. D2006-0768; see also Jurlique International Pty Ltd v. Domains by Proxy, Inc. / troy ho, WIPO Case No. D2011-1237).
Thus, the Panel finds that the addition of the geographical term “oriental” or “shanghai” is not sufficient to negate the confusing similarity between the disputed domain names and the DREAMWORKS mark.
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:
(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;
(ii) the fact that Respondent has been known commonly by the disputed domain name; or
(iii) legitimate noncommercial or fair use of the disputed domain name.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).
Complainant has rights in the DREAMWORKS mark globally, including the DREAMWORKS mark registration in China since 1995 (see Exhibit D to the Complaint) which long precedes Respondent’s registrations of the disputed domain names (November 22, 2011).
According to the Complaint, Complainant and its predecessors are a leading company that produce and distribute live action and animated motion pictures, television program, and various other entertainment products and services. Living action films produced and/or distributed by Complainant‘s predecessors-in-interest and licensees have grossed many hundreds of millions of US dollars in the US and abroad, including in China.
Moreover, Respondent is not an authorized dealer of DREAMWORKS-branded products or services. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. In the Panel’s view, Respondent has not provided sufficient evidence of a legitimate use of the disputed domain names or reasons to justify the choice of the word “dreamworks” in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the DREAMWORKS Marks or to apply for or use any domain names incorporating the DREAMWORKS Marks;
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain names. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain names <orientaldreamworks.com> and <shanghaidreamworks.com> both on November 22, 2011, long after the DREAMWORKS Marks became internationally famous, and DREAMWORKS movies were showed in China. The disputed domain names are identical or confusingly similar to Complainant’s DREAMWORKS Mark.
(c) In the Panel’s view, there has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain names. By contrast, according to the information provided by Complainant, Respondent was in actuality advertising, offering and selling the disputed domain names at a price that is likely to substantially exceed its out-of-pocket costs of registration (RMB 380,000 or almost USD 50,000 for sale of the disputed domain name).
The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product.
The Panel concludes that the circumstances referred to in paragraph 4(b)(i) and (iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.
The Panel finds that Complainant has a widespread reputation in the DREAMWORKS mark with regard to its products. Complainant has registered its DREAMWORKS mark internationally, including registration in China (since 1995). According to the Complaint, living action films produced and/or distributed by Complainant‘s predecessors-in-interest and licensees have grossed many hundreds of millions of US dollars in the US and abroad, including in China. It is not conceivable that Respondent would not have had actual notice of Complainant’s trademark right at the time of the registration of the disputed domain names.
(See 梦工场动画影片公司 （DreamWorks Animation L.L.C.）訴 Liu Jin （2008, 案件编号：CND2008000054).1 The Panel also finds that the DREAMWORKS mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Moreover, according to the information provided by Complainant, Respondent was in actuality advertising, offering and selling the disputed domain names at a price that is likely to substantially exceed its out-of-pocket costs of registration (at the price RMB 380,000 or almost USD 50,000 for sale of the disputed domain name).
Thus, the Panel concludes that the disputed domain names were registered in bad faith with the intent to create an impression of an association with Complainant’s DREAMWORKS branded products, and/or the intent to sell, or otherwise transfer the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain names.
Complainant has adduced evidence to prove that by using a confusingly similar disputed domain names, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites” offering Complainant’s DREAMWORKS - branded products and services without authorization. Complainant claimed that Respondent cannot show he is making a legitimate noncommercial or fair use of the disputed domain names, without intent for “commercial gain” to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).
Given the widespread reputation of the DREAMWORKS mark, the Panel finds that the public is likely to be confused into thinking that the disputed domain names have a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain names are resolved. In other words, Respondent has, through the use of a confusingly similar domain names, created a likelihood of confusion with the DREAMWORKS mark. (see 梦工场动画影片公司（DreamWorks Animation L.L.C.）訴 Liu Jin （2008）supra). Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the homepage resolved by the disputed domain names (both domain names resolved to a same webpage), potential partners and end users are led to believe that the website resolved by the disputed domain names is either Complainant’s website or the website of official authorized partners of Complainant, which it is not. The Panel therefore concludes that the disputed domain names were used by Respondent in bad faith.
In summary, Respondent, by choosing to register and use domain names which are confusingly similar to Complainant’s trade mark, intended to ride on the goodwill of Complainant’s trade mark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. The choice of the disputed domain names and the conduct of Respondent as far as the infringing website to which the disputed domain names resolves is indicative of registration and use of the disputed domain name in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.
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 names at <orientaldreamworks.com> and <shanghaidreamworks.com> be transferred to Complainant.
Yijun Tian
Sole Panelist
Dated: April 18, 2014
1 See中國國際經濟貿易仲裁委員會 域名爭議解決中心，贸仲域裁字第0108号http://dndrc.cietac.org/dcnfold/CND2008000054%B2%C3%BE%F6%CA%E9.pdf. In this case, the panel confirmed the reputation of Complainant, and provided: “in respects to DREAMWORKS as the main component of Complainant’s well-known international trade mark, historical business name and world famous enterprise name, Respondent should have known this at least before it lodged its disputed domain registration” (“作为投诉人驰名世界的注册商标、历史悠久的商号以及蜚声海外的企业名称的主体部分，作为注册人的被投诉人在注册前对此应有最低程度的知晓”).