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WIPO Domain Name Dispute Case D2005-0521

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  • pg 1
									                WIPO Arbitration and Mediation Center

                        ADMINISTRATIVE PANEL DECISION

                   Panavision, Inc., Panavision International, L. P.
             v. Roomwithnet Systems (I) P.Ltd./ Eyecircus Studio Pvt.Ltd

                                   Case No. D2005-0521




1.   The Parties

     The Complainant is Panavision, Inc., Panavision International, L. P., California,
     United States of America, represented by Morrison & Foerster, LLP,
     United States of America.

     The Respondent is Roomwithnet Systems (I) P.Ltd./ Eyecircus Studio Pvt.Ltd,
     India, represented by Mahendra Pujara, United Kingdom of Great Britain and
     Northern Ireland.


2.   The Domain Names and Registrar

     The disputed domain names are:

     <panavisionelectronics.com>              )
     <panavisionelectronics.net>              )     “The Panavision Domain Names”
     <panavisionlcd.com>                      )

     <panavizion.com>                         )
     <panavizionentertainment.com>            )
     <panavizionentertainment.net>            )
     <panavizionmovies.com>                   )     “The Panavizion Domain Names”
     <panavizion.net>                         )
     <panaviziononline.com>                   )
     <panaviziontv.com>                       )

     The “Disputed Domain Names” are registered with Direct Information Pvt Ltd. dba
     Directi.com.




                                           page 1
3.    Procedural History

      The Complaint was filed with the WIPO Arbitration and Mediation Center
      (the “Center”) on May 14, 2005. On May 18, 2005, the Center transmitted by email to
      Direct Information Pvt Ltd. dba Directi.com a request for registrar verification in
      connection with the domain names at issue. On May 24, 2005, Direct Information Pvt
      Ltd. dba Directi.com 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.

      On May 18, 2005, the Complainant requested to amend the Complaint to include
      further domain names registered by the Respondent and on May 21, 2005, the amended
      Complaint was filed by email (hard copy, May 28, 2005). In response to a notification
      by the Center that the Complaint was administratively deficient, the Complainant filed
      an amendment to the Complaint on May 28, 2005, (email). The Center verified that the
      Complaint together with the amendment to 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 June 3, 2005. In
      accordance with the Rules, paragraph 5(a), the due date for Response was
      June 23, 2005. The Response was filed with the Center on June 22, 2005.

      The Center appointed Isabel Davies as the sole panelist in this matter on July 6, 2005.
      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 June 27, 2005, the Complainant submitted a Supplemental Filing.


4.    Factual Background

      Complainant has obtained numerous trademark registrations for the PANAVISION
      mark and related marks in the United States, all of which predate the registration of the
      Disputed Domain Names, including the following:

     MARK       REG. NUMBER REG. DATE                    GOODS AND SERVICES
     PANAVISION 627,362     5/22/1956                    Anamorphosers that are used in
                                                         the projection and taking of
                                                         motion pictures in Class 9.

     PANAVISION 834,705                  9/5/1967        Motion picture cameras and
                                                         lenses therefore, and associated
                                                         photographic equipment in Class
                                                         9.




                                            page 2
PANAVISION 845,014                  2/27/1968       Motion picture films produced by
                                                    special purpose or conventional
                                                    lenses supplied by applicant in
                                                    Class 16.
PANAVISION 1,160,790                2/25/1980       Television cameras in Class 9.
PANAVISION 1,972,238                5/7/1996        Motion pictures and lenses
& Logo                                              therefore; and a full line of
                                                    cinematographic equipment, and
                                                    release prints in Class 9
SUPER      1,489,189                5/24/1988       Photographic motion picture
PANAVISION                                          systems - namely cameras and
35                                                  related lenses in Class 9.
PANAVISION 2,784,218                11/18/2003      Electronic display for
SMARTLENS                                           photographic and
                                                    cinematographic cameras
                                                    comprised of a sensor to be
                                                    affixed to a camera lens and a
                                                    display screen for providing
                                                    real-time visual and electronic
                                                    information about the mechanical
                                                    and optical state of camera lens
                                                    settings, namely, the focal length,
                                                    focus distance and depth of field
                                                    in Class9.



 Complainant has also obtained registration for the PANAVISION trademark in a
 multitude of international classes in the following countries around the world: Algeria,
 Argentina, Australia, Austria, Bahamas, Bangladesh, Benelux, Bermuda, Bolivia,
 Botswana, Bosnia-Herzegovina, Brazil, Canada, Chile, China, Colombia, Cyprus,
 Czech Republic, Democratic Rep. of Congo, Denmark, Dominica, Dominican
 Republic, Ecuador, Egypt, El Salvador, European Union, Fiji Islands, Finland, France,
 Germany, Gibraltar, Greece, Guatemala, Haiti, Honduras, Hong Kong, SAR of China,
 Hungary, Iceland, India, Indonesia, Iran, Ireland, Israel, Italy, Jamaica, Japan, Jordan,
 Kenya, Kuwait, Liechtenstein, Macedonia, Malaya, Malta, Mexico, Monaco, Morocco,
 Myanmar, Namibia, New Zealand, Nicaragua, Nigeria, Norway, Pakistan, Panama,
 Papua New Guinea, Paraguay, Peru, Philippines, Portugal, Puerto Rico, Republic of
 Korea, Romania, Sarawak, Singapore, Slovak Republic, Slovenia, South Africa, Spain,
 Sri Lanka, Sweden, Switzerland, Taiwan, Tangier, Thailand, Trinidad and Tobago,
 Tunisia, Turkey, United Kingdom, Uruguay, Venezuela, Virgin Islands, Yugoslavia,
 and Zimbabwe.

 The Complainant also owns the domain name <panavision.com>, and operates a
 website at that domain name providing information about PANAVISION goods and
 services. Complainant‟s trademark rights have been recognized previously in UDRP
 proceedings. See Panavision, Inc. and Panavision International, L.P. v. Ed Meyer
 d/b/a Panavisions Eyewear and Sunglasses, Domains by Proxy, Inc., and M.P.W., Inc.
 d/b/a Panavisions Eyewear and Sunglasses, Inc., WIPO Case No. D2004-0002
 (March 17, 2004) (“[T]he Panel finds that <panavisions.com> is confusingly similar to
 the registered and famous PANAVISION mark in which Complainant has rights”).


                                       page 3
     For the purposes of this case, Respondents acknowledge that they are associated
     entities, that the Disputed Domain Names are held by the Respondents as an associated
     group and their Response is filed on behalf of all of them.

     Insofar as The Panavision Domain Names (<panavisionelectronics.com>,
     <panavisionelectronics.net> and <panavisionlcd.com>) are concerned, Respondents
     have stated they do not object to the transfer to Complainants of The Panavision
     Domain Names.


5.   Parties’ Contentions

     A.    Complainant

     The Disputed Domain Names are identical or confusingly similar to
     Complainant’s PANAVISION trademark.
     [Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1)]

     Complainant alleges that it is the world‟s leading provider of ultra-precision visual
     cinematographic equipment, including optical lenses, photographic equipment, and
     other film and digital imaging equipment for the motion picture, television, and related
     industries. For nearly half a century, creators and viewers of motion pictures and other
     visual arts have come to associate Complainant and its PANAVISION trademark with a
     high-quality visual experience, especially in connection with films.

     It is stated that Complainant (through its predecessor) was founded in 1953 to design
     and manufacture wide-screen film photographic and projection lenses. Since that time,
     Complainant has consistently been at the forefront of cinematographic equipment
     development, and now designs, manufactures and supplies the highest quality and most
     innovative optical lenses, photographic equipment, and other film and digital imaging
     equipment in the United States and around the world, through its affiliates in Australia,
     Brazil, Canada, China, Denmark, France, Germany, Hong Kong, SAR of China, Italy,
     Japan, Malaysia, Mexico, New Zealand, the Philippines, South Africa, Spain, Sweden,
     Thailand, and the United Kingdom.

     Complainant claims that its equipment is used by the most well-known and respected
     filmmakers in the world, and many of the most successful and highly acclaimed films
     of all time have been photographed using Complainant‟s camera systems, including the
     recent box office hits SPIDERMAN, MY BIG FAT GREEK WEDDING, MEN IN
     BLACK II, AUSTIN POWERS IN GOLDMEMBER and HARRY POTTER AND
     THE CHAMBER OF SECRETS, as well as many highly-rated television shows, such
     as THE WEST WING, E.R., FRASIER, THE SOPRANOS and FRIENDS.
     It is claimed that since 1954, Complainant (or its predecessor) has used PANAVISION
     and related trademarks in connection with its optical lenses, photographic equipment,
     and other film and digital imaging equipment, and these marks have acquired fame,
     distinctiveness and tremendous goodwill in the United States and throughout the world.
     The Complainant states that in a prior dispute concerning a domain name, a federal
     district court held that “the Panavision marks are famous marks”, and that “the
     „Panavision‟ mark in particular has developed strong secondary meaning because of
     Panavision‟s long period of exclusive use of the mark and its status as a major supplier
     of photographic equipment”. Panavision International, L.P. v. Toeppen, 945 F. Supp.
     1296, 1302-03 (C.D. Cal. 1996), aff‟d, 141 F.3d 1316 (9th Cir. 1998).


                                           page 4
Complainant contends that the Disputed Domain Names are virtually identical and
confusingly similar to Complainant‟s PANAVISION marks. The Panavision Domain
Names, <panavisionlcd.com>, <panavisionelectronics.com>, and
<panavisionelectronics.net>, incorporate Complainant‟s famous PANAVISION
trademark in its entirety as the dominant feature of the domain name, adding only a
generic, non-distinctive word, and are therefore virtually identical and confusingly
similar to Complainant‟s trademark.

Complainant also contends that the other <panavizion.com> and <panavizion.net>
domain names both incorporate Complainant‟s famous PANAVISION trademark in its
entirety, replacing the “s” with a “z”, and are therefore virtually identical and
confusingly similar to Complainant‟s trademark.

Complainant states also that <panavizionentertainment.com>,
<panavizionentertainment.net>, <panaviziononline.com>, <panavizionmovies.com>
and <panaviziontv.com>, merely add a single generic word to the confusingly similar
term PANAVIZION. Thus, all of the Disputed Domain Names are clearly confusingly
similar to Complainant‟s PANAVISION trademark.

The Respondents have no rights or legitimate interest in the Disputed Domain
Names.
[Policy, paragraph 4(a)(ii); Rules, paragraph 3(b)(ix)(2)]

The Complainant states that in or about the beginning of April, 2005, Complainant
became aware that Respondents had registered three of the Disputed Domain Names
and were using certain of them in connection with websites advertising
PANAVISION-brand plasma and LCD televisions in a clear attempt to confuse
consumers and misappropriate the goodwill associated with Complainant‟s famous
PANAVISION trademark. Initially, only the <panavisionelectronics.com> domain
name resolved to an active website, while the other Disputed Domain Names were
inactive or resolved to “under construction” pages. Between Complainant‟s initial
discovery and the date of filing of the initial Complaint, the websites displayed at the
Disputed Domain Names changed repeatedly, but all of them at one time or another
resolved to websites selling unauthorized PANAVISION or PANAVIZION-branded
plasma and LCD televisions.

On April 6, 2005, Complainant sent Respondents a letter demanding that they
immediately cease all uses of <panavisionlcd.com>, <panavisionelectronics.com> and
<panavisionelectronics.net>, and transfer these domain names to Complainant.
Complainant did not receive a response to this letter from Respondents until
May 16, 2005, after the initial Complaint was filed. Respondents‟ May 16, 2005 letter
stated that Respondents had registered the additional Disputed Domain Names
(containing the word "Panavizion”) and intended to use these domain names in
connection with websites selling or advertising DVD players, LCD and plasma
televisions/screens, mobile phones and online movies. As of the date of filing of the
Amended Complaint, three domain names displayed “under construction” web pages
indicating that various film and video content will soon be available at the sites, the
<panavizion.net> domain name displayed the same site as appears at
<panavizion.com>, and the remaining two appeared to be inactive.

Based on the foregoing, Complainant asserts that Respondents have no legitimate rights
or interests in or to Complainant‟s PANAVISION trademark or the Disputed Domain
Names.

                                       page 5
The Disputed Domain Names were registered and are being used in bad faith.
[Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3)]

The Complainant states that the Disputed Domain Names were registered and have
been used in bad faith by Respondents.

The Complainant asserts that Respondents‟ registration and use of domain names that
are so similar to Complainant‟s PANAVISION trademark is clearly calculated to
mislead consumers to believe that Respondents‟ website is sponsored by, affiliated with
or authorized by Complainant. The Disputed Domain Names, because they incorporate
the PANAVISION trademark, will clearly attract consumers seeking to reach
Complainant at its website located at “www.panavision.com”. Creating such consumer
confusion for the purpose of commercial gain constitutes strong evidence of bad faith.

The Complainant argues that the likelihood of confusion created by Respondents‟ use
of the Disputed Domain Names is further increased by the fact that Respondents‟
websites purportedly offer or will offer plasma and LCD televisions, DVD players,
online movies and other entertainment-related goods, all of which are clearly related to
Complainant‟s cameras, lenses and other film and television-industry-related goods.
Respondents‟ websites also make prominent use of the PANAVISION and
PANAVIZION trademarks. This conduct constitutes trademark infringement, dilution
and unfair competition under well-established state and federal law, and clearly
evidences bad faith registration.

The Complainant concludes that Respondents‟ use of domain names that are virtually
identical to Complainant‟s famous PANAVISION mark in connection with goods and
services that are competitive or closely related to Complainant‟s goods and services is
clearly calculated to attract, for commercial gain, Internet users to Respondents‟
websites by creating a likelihood of confusion with Complainant‟s mark as to the
source, sponsorship, affiliation and endorsement of Respondents‟ websites, and of
Respondents‟ goods and services.

B.   Respondents

Whether the domain names are identical or confusingly similar to a trademark or
service mark in which the Complainant has rights.
[Policy, paragraph 4(a)(i); Rules, paragraphs 3(b)(viii), (b)(ix)(1)].

Respondents acknowledge that Complainant is a leader in the design, manufacture and
supply of high precision camera systems, comprised of cameras, lenses, other
photographic and visual cinematographic equipment (“the Products”).

Respondents further acknowledge that Complainant supplies the Products to its
customers in the motion picture, television series and television commercial
manufacturing markets (“the Markets”) throughout the World.

Respondents further acknowledge that Complainant has registered and is the holder of
the PANAVISION Trademarks. Respondents contend, however, that these trademark
registrations give to Complainant monopoly rights to use those marks only in the
particular jurisdictions and only in respect of the goods or services set out in the
relevant specifications. All of the Complainant‟s registrations have a common element,
that is to say they all relate to the production of film and television content.


                                      page 6
Respondents contend, however, that the majority of users of the Internet recognize that
„PANAVISION‟ is a method of filming viz. “Filmed in Panavision” which appears at
the end of a large number of films.

On January 29, 2004, the domain name <panavisionlcd.com> was registered and on
October 5, 2004, the further domain names <panavisionelectronics.com> and
<panavisionelectronics.net> were registered by or on behalf of Respondents in
connection with their legitimate business or proposed business of the supply of LCD
televisions, DVD players, and recorders and the like products to the wholesale and
retail trades. Prior to January 29, 2004, Respondents had caused a search to be made in
respect of the various classifications of goods or services registered with the trade or
service mark “PANAVISION” and had found no registrations in respect of the goods
and services the Respondents proposed to supply. Due to the existence of this dispute,
Respondents have taken no steps to register parallel trademarks for their products.

The Respondents contend that, despite the use in these domain names of the whole of
the Complainant‟s trademarks, the fact that the Complainant is a recognized field leader
in the supply of the Products to the cinematographic and allied industries and in no
other field is unlikely to cause or has caused any confusion to users of the Internet.
This is not a case where, in contrast to the finding in Microsoft Corporation v. Modern
Limited – Cayman Web Development, WIPO Case No. D2003-0919, Respondents have
actively sought to use Complainant‟s goodwill to divert potential customers of
Complainant to their websites. The Respondents assert that a consumer of the
Respondents‟ goods and services is unlikely to think that the disputed domain names
relate to the Complainant‟s goods and services.

Following the receipt of the letter from Morrison Foerster, the Complainant‟s
authorized representative, requesting that the Respondents cease and desist all use of
the PANAVISION trademark, Respondents ceased to use the domain names
<panavisionlcd.com>, <panavisionelectronics.com> and <panavisionelectronics.net>
and, between April 16, 2005, and May 16, 2005, registered the domain names
<panavizionlcd.com>, <panavizion.net>, <panavizionentertainment.com>,
<panavizionentertainment.net>, <panaviziononline.com>, <panaviziontv.com>,
<panavizionmovies.com> and <panaviziononline.com>. The Respondents contend
that, in light of the exhaustive list of trademarks and other service marks set out in the
letter from Morrison Foerster, the cessation by them of use of the previous domain
names and their registration of these new domain names, which give a difference in the
impressions or ideas of each of them, together with the clear distinction between the
goods and services offered for sale by the Complainant and the Respondents, there is
little likelihood of confusion between the Complainant‟s and Respondents‟ respective
domain names. The Respondents contend that in any event, no evidence of confusion
has been produced by the Complainant.

Whether the Respondents have rights or legitimate interests in respect of the
domain names.
[Policy, paragraph 4(a)(ii); Rules, paragraph 3(b)(ix)(2)]

Complainant has licensed a number of entities throughout the world to use the name
“PANAVISION” and a number of these licensees use that name in their own domain
names, yet, the Complainant uses only one domain name <panavision.com>.
Respondents contend that, had the Complainant genuinely wished to protect the trade
name “PANAVISION” in connection with anything other than the Products, it would
have sought to purchase all available domains using that and similar names.

                                       page 7
The Respondents purchased the first domain name, <panavisionlcd.com>, in
connection with what they contend is their legitimate business of the supply of quality
LCD televisions at budget prices. From about January 2004, Respondents have been in
negotiations with a manufacturer of LCD and plasma screen televisions, with a view to
the Respondents marketing the same throughout the world. Respondents are prevented
from identifying the supplier by reason of a confidentiality agreement.

Thereafter, in October 2004, Respondents purchased the domain names
<panavisionelectronics.com> and <panavisionelectronics.net>, with a view to
marketing other electronic goods including DVD players manufactured by the same
supplier.

Respondents state that they were aware that Complainant was a leading supplier of
cinematographic equipment to the film and television production industries but, having
conducted appropriate trademark searches, were satisfied that the use of the mark
PANAVISION in the context in which they intended it to be used would not infringe
any of the classifications registered by the Complainant.

By the time of receipt of the letter from the Complainant of April 6, 2005, Respondents
claim that they were in advanced negotiations with certain suppliers of DVD films and
other forms of visual entertainment for the supply of their products for sale and/or
rental through the Internet. Respondents registered the domain names
<panavizionlcd.com>, <panavizion.net>, <panavizionentertainment.com>,
<panavizionentertainment.net>, <panaviziononline.com>, <panaviziontv.com>,
<panavizionmovies.com> and <panaviziononline.com> for the purpose of marketing
these products and services. Once again, Respondents claim that they are prevented
from identifying these suppliers by reason of confidentiality agreements.

Respondents contend that they intended to use their domain names for the bona fide
offering of their goods and services and had commenced the preparation of websites for
each of the then existing domain names <panavisionlcd.com>,
<panavisionelectronics.com> and <panavisionelectronics.net> but, following the
receipt of this Complaint, they have withheld further work in connection therewith.
Respondents state that construction of these websites will be completed on dismissal of
the Complaint.

Respondents contend, therefore, that they have a legitimate right or interest in the use
and continued use of the Disputed Domain Names under paragraphs 4(c)(i)
and/or 4(c)(iii) of the Policy.

As to the allegation by the Complainant that Respondents are misleadingly diverting
customers from Complainant, Respondents contend that it is improbable that customers
or potential customers of the Complainant would be diverted to Respondents‟ websites.

Whether the domain names have been registered and being used in bad faith.
[Policy, paragraph 4(a)(iii); Rules, paragraph 3(b)(ix)(3)]

Respondents refer to the matters set out above as proof that they have not registered or
used the Disputed Domain Names in bad faith.

Further, the Respondent states that Complainant has produced no evidence that they
have intentionally “attempted to attract ... internet users ...by creating a likelihood of

                                        page 8
     confusion with the Complainant‟s mark as to the source, sponsorship, affiliation or
     endorsement of …[its] ...product or services …”. The Respondent contends that the
     composition of the Complainant‟s and Respondents‟ probable customer bases is
     unlikely to be the same or even similar. Those who will be attracted to the
     Complainant‟s website will be of a quite specific group or groups within the
     cinematographic or television program production industries, whereas customers of the
     Respondents will be wholesalers, retailers or consumers of home entertainment
     products. The fact that the Complainant‟s mark PANAVISION is widely known in
     connection with the means of production of films and television programs is not likely
     to persuade consumers that it endorses particular televisions or DVD players.

     The Complainant‟s trademark PANAVISION is acknowledged by the Respondents, but
     they argue that the protection afforded to the Complainant is limited to the specific
     classifications of goods and services covered by the various registrations.

     They contend that the domain names have not been registered or acquired by the
     Respondents, whether primarily or otherwise, for the purpose of selling, renting, or
     otherwise transferring the domain name registrations to the Complainant, as the owner
     of the trademark PANAVISION, or to a competitor of the Complainant, for valuable
     consideration.

     They state that the domain names have not been registered by the Respondents in order
     to prevent the Complainant from reflecting the mark PANAVISION, in a
     corresponding domain name and, in connection therewith, the Respondents have not
     engaged in a pattern of such conduct.

     The Complainants and the Respondents, the Respondents contend, are not competitors:
     they operate substantially different businesses and the Disputed Domain Names have
     not been registered by the Respondents, primarily or otherwise, to disrupt the
     Complainant‟s business.

     Respondents contend that their immediate action, upon receipt of the notice of dispute,
     in discontinuing the use of the domain names <panavisionlcd.com>,
     <panavisionelectronics.com> and <panavisionelectronics.net> and the subsequent
     registration of the other Disputed Domain Names which do not infringe the
     Complainant‟s trademark, PANAVISION, indicates their good intentions in connection
     with their use of the Disputed Domain Names.


6.   Discussion and Findings

     The Complainant made a Supplemental Filing on June 27, 2005. As there was no prior
     request to the Panel to authorize such submission and, as there is no provision in the
     Policy or the Rules for such filings (and because the additional filings do not assist the
     Panel in reaching a decision), the Panel disregards the Supplemental Filing. See e.g.,
     JP Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v.
     Resource Marketing, WIPO Case No. D2000-0035.

     Paragraph 4(a) requires the Complainant to show that:

     (i)   the domain names are identical or confusingly similar to a trademark or service
           mark in which the Respondents have rights; and


                                            page 9
(ii)  the Respondents have no rights to or legitimate interests in respect of the domain
      names; and
(iii) the domain names have been registered and are being used in bad faith.

A.     Identical or Confusingly Similar

The Complainant has registered a large number of trademarks for PANAVISION
throughout the world as evidenced by the Complaint.

Where a domain name contains a dominant feature of the complainant‟s mark, the
domain name will be found confusingly similar, see Olympus USA, Inc.,Olympus
America, Inc., and Olympus Optical Co., Ltd v. World Photo Video and Imaging
Corp.., WIPO Case No. D2001-1464 (March 2002) (respondent‟s domain name
<olympususa.com> found confusingly similar to complainant‟s OLYMPUS mark).

Where two names differ by only one letter and the differences between them could
easily be attributed to a typographical error, confusing similarity will be found.
Coldwater Creek Inc. v. John Zuccarini, WIPO Case No. D2003-0708
(November 15, 2003), <coldwatercrek.com> found confusingly similar to
COLDWATER CREEK). Also, changing one letter in a valid mark can often be per se
cybersquatting. eCrush.com Inc. v Cox, Davis & Simpsom, LLC, Mr. Ken Cox, Mr.
Brian Simpson, Mr. Ron Davis, WIPO Case No. D2004-0552 (September 11, 2004).
This is even more so where the letter „S‟ is substituted by the letter „Z‟, which are often
used interchangeably between US and other English speaking countries.

The Respondents‟ submission concerning the relevant markets and the differences in
the nature of their goods and services do not address the issue of confusing similarity of
the marks. In addition, the Respondents admit that they have registered the Disputed
Domain Names for the purposes of marketing DVD films and other forms of visual
entertainment for the supply of their products for sale and/or rental through the Internet.
Accordingly, these goods and services are identical to, or similar to, the goods and
services for which PANAVISION is registered.

The change from PANAVISION to PANAVIZION with a „Z‟ does not affect the aural
or conceptual similarity and only marginally affects the visual similarity between
PANAVISION and the Respondents‟ domain names.

Accordingly, the Panel finds that the Disputed Domain Names are confusingly similar
to the registered and famous PANAVISION mark in which the Complainant has rights.

B.     Rights or Legitimate Interests

The Respondents claim that they have been in negotiations from about January 2004 in
relation to selling LCD screens at budget prices. However, no evidence that
<panavisionlcd.com> was to be used with this business has been produced, nor has
there been any evidence of any negotiations which could also have been produced.
There is no evidence of any confidentiality agreements and, in any event, the evidence
could have been made available without reference to the other contracting party and
commercially sensitive information if, indeed, any confidentiality existed.

Accordingly, the Panel does not accept that, before any notice to the Respondents of the
dispute, the Respondents made any demonstrable preparations to use The Panavision
Domain Names in connection with a bona fide offering of goods or services. In any

                                       page 10
event, the Panel does not consider that use of The Panavision Domain Names in the
context of the Respondents‟ business was bona fide in view of the domain names
including the identical PANAVISION mark with a non-distinctive suffix. The Panel
accepts, and it is not denied by the Respondents, that The Panavision Domain Names
were used by the Respondents in relation to the website‟s advertised PANAVISION
brand plasma and LCD televisions. The Respondents have now agreed to transfer
those domain names to the Complainant.

Accordingly, by then registering The Panavizion Domain Names which are also the
subject of this proceeding, the Respondents are not in a position to say that they have
made demonstrable preparations to use The Panavizion Domain Names prior to the
notice of the dispute. The Respondents do not claim that they have been commonly
known by The Panavizion Domain Names nor that they are making a legitimate
non-commercial or fair use of The Panavizion Domain Names without intent for
commercial gain. Neither do the Respondents deny that they are misleadingly diverting
customers from the Complainant – merely stating that it is improbable that customers
or potential customers of the Complainant would be diverted to the Respondents‟
website. Accordingly, the Panel finds that the Respondents have no rights to or
legitimate interests in respect of The Panavizion Domain Names at issue.

C.    Registered and Used in Bad Faith

The Complainant contends that the Respondents have registered and used The
PANAVISION and PANAVIZION Domain Names intentionally attempting to attract,
for commercial gain, internet users to their 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 their website or location or a product or service on their
website or location.

The Complainant contends that the fact that the Respondents used PANAVISION in its
entirety initially is, alone, strong evidence of bad faith intent. Since The Panavision
Domain Names incorporate the well-known PANAVISION trademark, the
Complainant contends that this will clearly attract consumers who are seeking to reach
the Complainant at its website located at “www.panavision.com”. The Complainant
further contends that creating such consumer confusion for the purpose of commercial
gain constitutes strong evidence of bad faith. The Panel accepts this. The Panel further
accepts that the Respondents‟ goods and services are similar with or identical to goods
within the Complainant‟s specification of goods and that the Respondents‟ trading off
Panavision‟s reputation and use in this context is evidence of bad faith registration.


In addition to these aspects, the fact that, following complaint, the Respondents
registered further domain names which were identical aurally and conceptually and
only very slightly different visually to the Complainant‟s trademark, particularly taking
into account the frequent substitution of „S‟ and „Z‟ in English words further indicates
bad faith.

Two of the domain names are inactive. Two are “under construction”, one showing the
products and services to be offered. However, the Respondents‟ Response makes it
clear that they plan to use the website. The fact that the websites are not currently
active, in the light of the Respondents‟ admission that they are proposing to use them
and are already using the remaining Panavision Domain Names, in the Panel‟s view,
reinforces the Complainant‟s allegation of bad faith use.

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     Accordingly, the Panel finds that the Disputed Domain Names have been registered and
     used in bad faith.


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 names, <panavisionelectronics.com>,
     <panavisionelectronics.net>, <panavisionlcd.com>, <panavizion.com>,
     <panavizionentertainment.com>, <panavizionentertainment.net>,
     <panavizionmovies.com>, <panavizion.net>, <panaviziononline.com> and
     <panaviziontv.com>, be transferred to the Complainant.




                                       Isabel Davies
                                       Sole Panelist

                                   Dated: July 21, 2005




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