WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DreamWorks Animation LLC v. Phivos Morides/ Phoebus Morides
Case No. D2012-0054
1. The Parties
The Complainant is DreamWorks Animation LLC of Glendale, California, United States of America, represented by Wedlake Bell, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Phivos Morides/ Phoebus Morides of Athens, Greece, represented pro se.
2. The Domain Names and Registrars
The disputed domain name <dreamworks-europe.com> is registered with FastDomain, Inc.
The disputed domain name <dreamworks-worldwide.com> is registered with eNom. (the “Disputed Domain Names”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2012. On January 13, 2012, the Center transmitted by email to FastDomain, Inc. and eNom a request for registrar verification in connection with the Disputed Domain Names. On January 14 and January 16, 2012, FastDomain, Inc and eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On January 26, 2012, the Center sent to the Complainant a complaint deficiency notification concerning the mutual jurisdiction issue, since the Complaint did not include a submission to the jurisdiction of the courts in at least one specified Mutual Jurisdiction, which must be expressly identified, as required by the Rules for Uniform Domain Name Dispute Resolution Policy (the ”Rules”), paragraph 3(b)(xiii). On January 30, 2012, the Complainant filed an amended Complaint.
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, 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 January 31, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2012. The Response was filed with the Center on February 20, 2012. On February 24, 2012, the Center received a Complainant’s supplemental filing. On February 27, 2012, the Center sent a communication to the parties informing the parties that the supplemental filing would be forwarded to the Panel for determination pursuant to its discretion
The Center appointed John Swinson as the sole panelist in this matter on February 28, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant DreamWorks Animation LLC, which is a producer of computer generated animated films, is the successor in title to SKG Studio and Dreamworks LLC. SKG Studio was formed in 1994 by Steven Spielberg, David Geffen and Jeffrey Katzenberg. This business was assigned to Dreamworks LLC (trading as Dreamworks SKG) in 1995.
In 2004, the Complainant was formed and the DREAMWORKS trade marks discussed below as well as the animated motion picture business of Dreamworks LLC were assigned to it.
The Respondent is an individual (trading as Dreamworks Corp Worldwide and Dreamworks Corp Europe).
5. Parties’ Contentions
A. Complainant’s Submissions
The Complainant makes the following submissions.
The Complainant asserts that the Disputed Domain Names were registered, as follows:
(a) <dreamworks-europe.com> with FastDomain, Inc on May 5, 2011; and
(b) <dreamworks-worldwide.com> with eNom on August 25, 2011.
The Complainant produces computer generated animated films, including box office hits such as “Shrek” and “Kung Fu Panda”. These films have generated significant revenue worldwide, including in Greece where the Respondent is located.
The Complainant holds trade marks registrations worldwide for DREAMWORKS and the DREAMWORKS and Device trade marks (the device of a boy fishing from the moon) (the “Trade Marks”).
The Complainant’s films have been nominated for and won many prestigious awards. The films are widely advertised prior to their release in cinemas and on DVD. The Complainant’s name and Trade Marks are displayed in credits on screen, on DVD packaging, and in advertising.
The Complainant has a successful merchandising programme featuring characters from its movies. It also collaborates with other major brands including Kellogg’s, Kinder and McDonalds to advertise its films and their characters.
Due to the above, the Trade Marks have acquired extensive goodwill and a substantial reputation worldwide for entertainment services.
The Complainant is the registered proprietor of domain names including <dreamworksanimation.com>, <dreamworks.com> and <dreamworkstudios.com> and domain names containing its film titles. The Complainant has a policy of bringing primary domain names incorporating DREAMWORKS under its control.
(i) Identical or Confusingly Similar
The Trade Marks consist of the word “dreamworks”. Each of the Disputed Domain Names contains DREAMWORKS in its entirety and DREAMWORKS is the leading and dominant element of each of the Disputed Domain Names. This sufficiently establishes confusing similarity, particularly as the Trade Marks are highly recognizable and famous (see e.g. Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; Playboy Enterprises International Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768).
The descriptive and commonplace words “europe” and “worldwide” are incapable of distinguishing any goods or undertakings (see e.g. SAP v. Andrew Sparrow, WIPO Case No. D2001-0733). As such, members of the public would believe that the Disputed Domain Names are owned by the Complainant.
The Disputed Domain Names link to a web site (the “Web Site”). The Web Site (which is still under construction) advertises “Dreamworks Corp Worldwide” and “Dreamworks Corp Europe”. These businesses offer goods and services identical to those for which the Trade Marks are registered.
(ii) Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
The Trade Marks have been registered and used in all relevant territories for at least 15 years prior to the registration of the Disputed Domain Names (the Complainant notes that <dreamworks-worldwide.com> was registered after the Complainant had complained about the registration and use of <dreamworks-europe.com>). The Respondent cannot assert any right in priority to the Complainant for the Disputed Domain Names.
The Trade Marks are well known, as such, the Respondent must have been aware of the Complainant’s rights in the Trade Marks prior to applying to register the Disputed Domain Names.
Furthermore, according to the Complainant, the Respondent:
(a) has no connection with the Complainant and has not been licensed or authorized by the Complainant to use the Trade Marks or the Disputed Domain Names;
(b) has not been commonly known by the Disputed Domain Names;
(c) has not been making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain; and
(d) has threatened to use the Disputed Domain Names in connection with a business that offers identical goods and services to those for which the Trade Marks are registered, thereby seeking to confuse members of the public into believing that the Respondent’s business is licensed or authorized by the Complainant, and divert the Complainant’s traffic and business to the Respondent.
(iii) Registered and Used in Bad Faith
The Complainant has continuously used the Trade Marks since 1996. As such, the Complainant’s business would have been well known to the Respondent at the time the Disputed Domain Names were registered.
The Respondent is using the Disputed Domain Names and the content of the Web Site to confuse members of the public into believing that his business is affiliated with the Complainant in some way.
The Respondent’s use of the Disputed Domain Names and the contents of the Web Site are interfering with the Complainant’s lawful trade and reputation by diverting traffic from the Complainant’s official web sites and by offering products that are substantially inferior to those of the Complainant.
B. Respondent’s Submissions
The Respondent is an individual located in Greece which claims to be the President-CEO of different companies in an informal email of February 1, 2012.
In a further submission on February 20, 2012, he states that the Respondent’s trading company, Dreamworks Corp Worldwide, is a legally registered company since 2002 in the United Kingdom and Cyprus, with sister companies around the world.
The Respondent claims to be “in the entertainment business for more that 10 years, and that’s why we were so surprised” that the Complainant “tried to take this unreasonable action against us”.
The Respondent’s group of companies is one of the “leading and most innovating groups” in the entertainment industry, with over 36 companies (including Dreamworks Incorporated (Middle East) Limited, registered in the United Kingdom) and 25 portals/web TV channels. Leading personalities have participated in programs run by the Respondent.
The Respondent has never claimed to be affiliated with any company of a similar name.
C. Complainant’s supplemental filing
According to the Complainant, the company Dreamworks Incorporated (Middle East) Limited referred to by the Respondent in his submissions never traded and was dissolved on October 31, 2006. Therefore, the company was defunct at the time of the relevant events.
Further, the company had been incorporated under a well known trade mark, and as such, its registration was illegal (see e.g. British Telecommunications plc v. One in a Million [1999] 1 F.S.R.).
Since the filing of the Complaint, the Complainant has sought correction of misleading statements made on the Web Site. The Complainant has also filed a UDRP proceeding in Greece against the Respondent’s registration of the domain name <dreamworkscorp.gr>.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the 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.
A. Procedural Issues
The Complainant filed a Reply. The Panel has discretion as to whether to consider the Complainant’s Reply, pursuant to paragraph 10 and 12 of the Rules. Here, the Reply is short and is directly related to the matters raised by the Respondent. Also, the Respondent’s Response itself does not comply with the formal requirements in the Rules. Accordingly, the Panel considers it appropriate that if the Panel is to consider the Response, the Panel should also consider the Complainant’s Reply.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to the Trade Marks.
The Complainant asserts that it owns the Trade Marks, and provided evidence of ownership. The Panel is prepared to accept that the Complainant owns the Trade Marks.
The Disputed Domain Names are clearly a combination of the DREAMWORKS element with descriptive and commonplace terms, namely “europe” and “worldwide”. The Panel notes that generic top-level domain “.com” at the end of the Disputed Domain Names is irrelevant in assessing confusing similarity under the Policy and is thus ignored.
The Panel finds that DREAMWORKS remains the dominant element in the Disputed Domain Names. The addition of descriptive and commonplace terms does nothing to prevent the confusing similarity of the Disputed Domain Names with the Trade Marks.
It is therefore clear that the Disputed Domain Names are confusingly similar to the Trade Marks. As such, the Complainant succeeds on the first element of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests. The Panel considers that the Complainant has done so.
The Respondent provided evidence as to its rights or legitimate interests in respect of the Disputed Domain Names. This evidence consists of:
- the company known as Dreamworks Incorporated (Middle East) Limited, incorporated in England and Wales in 2002, which changed its name to Dreamworks Incorporated Europe Limited in 2003.
- the company known as Dreamworks Corp Hellas SA, incorporated in Greece.
- the company known as Dreamworks Corp Worldwide, incorporated in Cyprus.
- businesses known as Dreamm Group, Dream News, iDreamm, and Dreamm TV (and similar variations).
- the website at “www.dreamm-group.com” (and it is noted by the Panel that the Disputed Domain Names resolve to this website). The website is titled “Dreamworks Corp. Worldwide” and states:
“DGW [Dreamm Group Worldwide] has 21 subsidiary companies and its activities cover 26 countries in 5 continents. Dreamworks CW, is a totally Independent Company, with no capital relation or partnership today, with any other Company with similar name, around the World.”
On the website, the Respondent is listed in the “Our People” section as “Worldwide President-CEO, Head of Creative Power.”
The Panel notes the following:
- The Complainant’s business was established (and the relevant Trade Marks were registered) well prior to the establishment of Dreamworks Incorporated (Middle East) Limited.
- Dreamworks Incorporated Europe Limited was deregistered in 2006, but this was not disclosed by the Respondent.
- No evidence was provided by the Respondent regarding the incorporation or operations of Dreamworks Corp Hellas SA or Dreamworks Corp Worldwide.
- The Complainant asserts that Dreamworks Corp Hellas SA ceased trading in 2005, and has substantial unpaid tax debts. The Respondent did not deny this.
- The Complainant asserts that Dreamworks Corp Worldwide is not trading. The Respondent did not deny this.
- No evidence was provided regarding the relationship between the Respondent and any of the above listed companies. The Respondent does not assert that he owns rights in “Dreamworks” or uses “Dreamworks” himself, or that he has registered the Disputed Domain Names on behalf of any other entity. The Respondent has never claimed to be affiliated with any company of a similar name.
- The main branding on the website at the Disputed Domain Names appears to be DREAMM, not DREAMWORKS.
- It is not clear when the Respondent started to use DREAMWORKS as a trade mark, if at all.
For the above reasons, the Panel finds that the the Respondent’s evidence does not rebut the prima facie case established by the Complainant.
Accordingly, the Complainant succeeds on the second element of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Names in bad faith.
Paragraph 4(b) of the Policy enumerates several circumstances that are evidence of registration and use of a domain name in bad faith, including where a domain name is “used to intentionally attract, for commercial gain, internet users to a web site or other online location, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that we site or location or of a product or service on that web site or location”.
In light of the substantial reputation and the undoubted goodwill in the Trade Marks and for the reasons given above, the Panel finds that the Respondent registered the Disputed Domain Names due to the reputation of the Complainant.
The Panel finds that bad faith is further evidenced by the fact that the Respondent registered the Disputed Domain Name <dreamworks-worldwide.com> after the Complainant wrote to the Respondent regarding the Disputed Domain Name <dreamworks-europe.com>.
In light of the above, the Panel finds that the Disputed Domain Names were registered and are being used in bad faith as defined in paragraph 4(b) of the Policy.
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 Disputed Domain Names <dreamworks-europe.com> and <dreamworks-worldwide.com> be transferred to the Complainant.
John Swinson
Sole Panelist
Dated: March 6, 2012