Imax Corporation v. 1st Net 2000 Production
WIPO Case No. D2001-0037
- Outcome
- Transfer
- Domain names
- imaximax.com, imaxworld.com, imaxworld.net
- Complainant
- Imax Corporation
- Respondent
- 1st Net 2000 Production
- Panelist
- Schoneveld
- Decided
- 22 Mar 2001
- Language
- English
Source: WIPO Arbitration and Mediation Center. Official copy: https://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0037.html
WIPO Arbitration
and Mediation Center
ADMINISTRATIVE
PANEL DECISION
IMAX Corporation
v. 1st Net 2000 Production
Case No.
D2001-0037
1. The Parties
The Complainant is IMAX
Corporation of 2525 Speakman Drive, Sheridan Park, Mississauga, Ontario
L5K 1B1 Canada.
The Respondent is 1st
NET 2000 PRODUCTION, 119 Hampton Road, Redland, Bristol BS66JG United Kingdom.
2. The Domain Names
and Registrar
The disputed domain names
are "imaximax.com", "imaxworld.com" and "imaxworld.net".
The Registrar of the domain names is Network Solutions, Inc. through City Netgates
Limited.
3. Procedural History
The essential procedural
history of this proceeding is as follows:
(a) The Complainant
initiated the proceeding by filing a complaint by email received by WIPO Arbitration
and Mediation Center ("WIPO") on January 8, 2001, and by courier
mail received by WIPO on January 11, 2001, together with payment.
On January 11, 2001, WIPO transmitted by email an acknowledgement of receipt
of the Complaint to the Complainant and Respondent. The next day WIPO transmitted
a Request for Registrar Verification to the Registrar, Network Solutions, Inc.
(with the Registrar’s Response received by WIPO on January 16, 2001).
(b) On January 12, 2001,
WIPO received an e-mail message from the Respondent which showed that the Respondent
had received the acknowledgement of receipt of the Complaint.
(c) On January 17, 2001,
WIPO sent by email a Complaint Deficiency Notification and on the same day received
the Complainant’s reply to this Deficiency Notification. The Complainant’s reply
amended the Complaint by including material that satisfied the deficiency in
the original Complaint dated January 8, 2001.
(d) On January 18, 2001,
WIPO received another email from the Respondent and replied to the Respondent
on the same day, recommending to the Respondent where further information on
the relevant dispute resolution procedures could be found and the time frame
in which to submit a response.
(e) On January 21, 2001,
the WIPO Case Administrator completed the Formal Requirements Compliance Checklist.
The Panel has independently reviewed these Requirements and concurs with the
assessment of the Case Administrator that the Complaint is in formal compliance
with the requirements of the Uniform Domain Name Dispute Resolution Policy (the
"Policy"), Uniform Domain Name Dispute Resolution Policy Rules ("Rules")
both of which were approved by the Internet Corporation for Assigned Names and
Numbers ("ICANN") on October 24, 1999, and the WIPO Supplemental Rules
for Uniform Domain Name Dispute Resolution Policy, in effect as of December
1, 1999, (the "WIPO Supplemental Rules").
(f) On January 21, 2001,
WIPO transmitted notification of the Complaint and commencement of the proceeding
to the Respondent via e-mail and facsimile, and on January 22, 2001, by courier
mail.
(g) On February 6, 2001,
WIPO received the Respondent’s Response by email and the following day WIPO
sent its acknowledgement of receipt of the Response.
(h) On February 9, 2001,
WIPO invited the undersigned panelist to serve in this proceeding. This invitation
was accepted by completion and signature of the Statement of Acceptance and
Declaration of Impartiality and Independence, sent to WIPO by facsimile on February
12, 2001.
(i) On February 14,
2001, WIPO dispatched a Notification of Appointment of the undersigned sole
panelist as the Administrative Panel (the "Panel") and Projected Decision
Date of February 28, 2001, to all concerned parties via e-mail.
Having reviewed the communications
record in the case file of this proceeding the Panel is satisfied that WIPO
has discharged its responsibilities under Paragraph 2(a) of the Rules "to
employ reasonably available means calculated to achieve actual notice to Respondent"
and it is clear that the Respondent has received actual notice. The Panel also
finds that it has been properly constituted and appointed in accordance with
the Policy, Rules and WIPO Supplemental Rules.
By letter dated February
16, 2001, the Complainant requested leave from the Panel to make certain Reply
submissions. Following submission of the Complaint and Response, there is no
provision in the Rules for any further written submissions by the Parties other
than at the request of and in the sole discretion of the Panel (Rules paragraph
12). The Panel has made no request for further submissions and the Complainant
has raised no special or compelling reason why the Panel should take into account
the Complainant’s Reply submissions. Hence the Panel denies the Complainant’s
request to make its Reply submissions of February 16, 2001.
No other requests have
been received from the Complainant or Respondent regarding further submissions,
waivers or extensions of deadlines. The proceeding has been conducted in English.
4. Factual Background
The Complainant is a company
that began using IMAX as part of its corporate name in 1975, when it changed
its name from Multiscreen Corporation Limited to Imax Entertainment Limited,
then subsequently changed to Imax Systems Corporation in November 1977, and
most recently changed to Imax Corporation in May 1991. The Complainant asserts
that "IMAX" is a trademark coined by the founders of Imax Corporation
and which the Complainant allegedly began using in Canada in 1967, and has used
in the United Kingdom since 1983.
The Complainant owns trademarks
in 51 countries in which the mark "IMAX" has been registered or has
pending applications. The earliest of these was registered by the Canadian Trademark
Office on August 21, 1970. In the United Kingdom the Complainant is registered
as the owner of the registered mark No. A978726 for IMAX in association with,
inter alia, motion picture theatre wares and services, and has been so
since August 4, 1981. The Complainant is also the owner of over 20 domain names
that include the word "imax" as the whole or part of the domain name.
The Complainant’s website at "www.imax.com" has information
on theatres, films, corporate profile, affiliates, and merchandise links, all
of which prominently use the word "IMAX".
The Complainant has produced
evidence of the prominent use of the word IMAX in advertising, licensed merchandise
such as T-shirts, videos cassettes, compact discs and other material for at
least 15 cinema productions and media reports indicating that it has itself
produced or co-produced over 25 films since 1970. The Complainant has also produced
evidence of brochures and advertisements promoting the IMAX trade marks, as
well as media articles (dating from December 1990, to February 2000), referring
to the Complainant’s activities with reference to the word "IMAX".
A view by the Panel on
February 18, 2001, of "imaximax.com", "imaxworld.com" and
"imaxworld.net", the web sites with the domain names the subject of
this proceeding, resulted in each case in the message: "Unable to determine
IP address from host name for "www.imaximax.com" / "www.imaxworld.com"
/ "www.imaxworld.net." (respectively).
The Respondent states that
he is a "co-producer of the British Week of film screenings and co-producer
of the Cinema 2000 Productions documentary film making team, responsible for
the filmed record of the events on the Isola del Cinema" Festival of Film
in Rome (Response point 19).
It appears that the Respondent
registered the three domain names in dispute, "imaximax.com",
"imaxworld.com" and "imaxworld.net", according
to a search of the WHOIS database of the Registrar, on July 13, 1999, the date
"Record created".
The Complainant, by letter
dated August 30, 2000, notified the Respondent "of Imax’s rights"
and stated that "if you (Respondent) activate any site under the domain
names, "imaxworld.com", "imaxworld.net", and
"imaximax.com", Imax will be compelled to enforce its rights.
In view of the foregoing and without prejudice to IMAX’s rights to pursue the
ICANN dispute resolution policy, or its rights in the courts, if you wish to
transfer the domain names to Imax, we will reimburse your registration and transfer
fees, up to an amount of $300.00 CDN per domain name." (word in brackets
provided).
By an email letter from
the Respondent to the Complainant which the Complainant indicates is of September
1, 2000, (and which the Respondent does not deny) it is stated, in relevant
part:
" I am the owner of
the domain names imaximax.com/.net and imaxworld.com/.net. The names were bought
on a whim when the new IMAX theatre was under construction in Bristol UK, with
the thought in mind that there is no accounting for taste and thus four different
site designs would attract most of the interested people. The intention of setting
up a network of sites to promote IMAX films (entered on Bristol) and to, with
your cooperation, merchandise IMAX products worldwide on the web was really
all I had in mind. …….Essentially I have a valuation of 1million dollars for
the dot com and 250,000 for the dot nets and little capital to develop tem (sic),
but feel that to sell them without informing you of their existence would be
unethical. ……….Maybe this does not say too much to you right now, but my proposal
is this; If you would like to broaden your retail base by buying the domain
names and using them, as I had hoped to for active e-commerce sites, each with
a different design element, then I would be happy to consider an offer. If you
are not interested in the idea, I will make the domains available on the open
market. ....…."
By a letter signed by the
Respondent to the Complainant’s attorney which the Complainant indicates is
of September 2, 2000, (and which the Respondent does not deny) it is stated,
in relevant part:
"Since….and the realization
that the Imax Corporation would be unlikely to co-operate in a venture with
such a small entity as myself………., I have made moves to sell the Domain Names.
This only reluctantly and after making every possible attempt to raise funds
to furnish a web presence equal to the task of presenting Imax theatres and
Imax film to the world. ……. I would also like to inform you of my personal reasons
with regard to the domain names mentioned above. ……I only recently, about two
years ago, came across the Imax film format. The Imax Theatre Bristol opened
this month, but hen (sic) the plans were announced, it occurred to me that the
theatre and Imax films generally were mostly unheard of locally. ……My idea for
the sites was to contact every Imax theatre world wide and to have them register
their schedules and provide through the domains an online booking service for
travelers, business people and tourists. …….This site was, with the co-operation
of the Imax Corporation, to be linked to the "imax.com" home site
where merchandising would be available. ……Seeing that the Imax Corporation may
feel obliged to complicate the construction, hosting and trading of a web site
using the names in question, I would like to offer an alternative to a lengthy
and highly public courtroom battle. Viz: that Imax Coproration procures an independent
professional valuation for the domain names "imaximax.com",
"imaxworld.com","imaximax.net", and "imaxworld.net"
and if this valuation differs from the valuations that I have already a mean
valuation is calculated and a sale agreed."
By email from the Respondent
to the Complainant’s attorney of January 5, 2001, it is stated that:
"I was hoping to register
1stnet2000 as a limited company to manage the visitors to my sites, but that
was a plan for when the sites were up and running. ……..Anyway, even if I committed
the cardinal sin of a slander site with the names, would that not draw publicity
for the Imax company. Okay. I have no intention of doing that, for the reasons
I have said before, but it is an increasingly accepted rule that any publicity
is good publicity in the quest for fame and notoriety. By contrast, in the computer
press fair play begets good publicity and $300 dollars is not fair play. This
really means that Imax is not concerned with their public image, or what I would
do with the sites. ……..Though a web site can become a weapon, you already have
my assurance that mine will not be used so. I can assure you also that many
of the complexities of this affair are within my grasp. …."
Respondent indicates that
he has "suggested a property for property exchange of cyber space (the
domain names) in return for Moon Acreage of 7500 acres at $20US per acre
…" (Response point 14). With regard to this suggestion the Respondent states
that he would "…like to withdraw this counter offer to the Complainant
in deference to the judgement of the ICANN Administrative Panel" (Response
point 16).
It appears the Respondent
has received valuation of the domain names from "www.shoutloud.com"
and "www.greatdomains.com" "whose valuation ranged from
$250,000 – 1,000,000US for "www.imaximax.com" and "www.imaxworld.com"
individually and up to $250,000US for "www.imaxworld.net.""
(Response point 14 and tenth paragraph of Respondent’s letter to Complainant’s
attorneys of September 2, 2000).
The Respondent states that
"…the domain names were equally available to the Complainant as to any
other interested party through the "www.eorobid.com" auction
site, wherein the Respondent gave and gives no indication as to a preferred
buyer." (Response point 22).
5. Parties’ Contentions
A. Complainant
The Complainant asserts
that:
(a) The Complainant
is the inventor and developer of film, movie and screening technology. For over
30 years, the Complainant has been engaged in a range of activities in the large-format
cinema field, principally including:
(i) theatre design,
operation, and licensing;
(ii) 2-D and 3-D camera
and projector invention, development, sale and leasing;
(iii) film financing,
development, production and distribution; and,
(iv) theatre sound system
development and leasing.
(b) The Complainant
identifies its products and services by the trade mark IMAX, and a family of
related IMAX marks. "IMAX" is a trademark coined by the founders of
Imax Corporation and which the Complainant began using in Canada in 1967. The
Complainant has used the IMAX mark extensively and continuously in countries
around the world, more specifically in Canada since 1967, and in the United
Kingdom since 1983. Over the years, the IMAX mark has become well known across
the world to identify large-format theatres and related products and services
of the highest quality.
(c) The Complainant
is also the owner of other trademarks comprising IMAX, used and/or registered
in countries around the world, including the following:
THE IMAX EXPERIENCE
AN IMAX EXPERIENCE
AN IMAX 3D EXPERIENCE
IMAX RIDEFILM
IMAX SOLIDO
IMAX 3D DOME
IMAX DOME
IMAX HD
IMAX PSE
IMAX SIMULATOR RIDE
IMAX SR
(d) The Complainant
premiered the first IMAX large-screen projection (for IMAX System) at the 1970,
Expo in Osaka, Japan. In 1973, Imax premiered a sister projector system under
the trademark OMNIMAX. The OMNIMAX System is designed for domed theatres with
giant hemi-spherical screens. The IMAX System is enhanced by a state-of-the-art
sound system. This sound system was first introduced in 1991, to coincide with
the release of Imax’s first feature-length film entitled "Rolling Stones
At The Max" which documented a concert by the famous rock music band "The
Rolling Stones". Films produced for viewing in the IMAX System have received
widespread recognition and popularity. Numerous films have been made, and they
have been viewed by millions of people around the world including in the United
Kingdom.
(e) The Complainant
is listed on both NASDAQ and the Toronto Stock Exchange. It has headquarters
in the Sheridan Science and Technology Park in Mississauga, Ontario, and offices
in New York, Los Angeles, Europe, Singapore, and Japan.
(f) The Complainant
is actively involved in every aspect of the large-format medium and works with
filmmakers, sponsors, and its clients in museums, science centres, natural history
facilities, theme parks, downtown developments, and world’s fairs to provide
and maintain the high quality of the IMAX System. As part of these activities,
the Complainant leases the IMAX System and licenses use of the IMAX Family of
Marks to operators of specially designed theatres in countries around the world.
Currently, there are approximately 220 IMAX theatres, operating in 26 countries
around the world. There are presently 7 IMAX theatres operating in the United
Kingdom.
The Complainant has
always controlled the character and quality of the wares and services in association
with which its trademarks have been used by its licensees through its license
agreements. Control is exercised, inter alia, by closely controlling
the design specifications for the construction of theatres; providing motion
picture projection equipment and accessories made by the Complainant to its
exacting standards; monitoring reports received from theatre licensees in
accordance with written license agreements, and providing routine and emergency
maintenance services to ensure a consistent high quality of presentation.
Revenues from royalties from IMAX theatres, the sale of licensed merchandise,
equipment rental and leasing, and film distribution (all in association with
one or more of Imax’s trade marks), are significant. The Complainant is the
largest and most successful company selling large-scale cinema equipment and
theatres in the world.
(h) The Complainant
has supported its sales, promotion, distribution and licensing of the IMAX System
throughout the world, including the United Kingdom, through significant advertising
and promotional activities. This advertising and promotion has been placed in
various media, including print, television, and radio, and through displays
located in IMAX theatres, and at trade shows, always in association with one
or more of the IMAX Family of Marks.
(i) The technical and
engineering excellence of the IMAX System and products and the high quality
of films produced by the Complainant have all been recognized through various
awards and nominations. As a result of lengthy and substantial use and advertising
worldwide, the IMAX family of trademarks has become famous and well recognized
throughout the world, exclusively in association with the complainant’s cinema
systems and services. The Complainant is a leader in its field, and the trade
mark IMAX, a coined word with no inherent meaning, would be immediately recognized
as a trade mark of the Complainant, and associated with IMAX goods and services.
The Complainant is continuously taking steps to protect it rights in the IMAX
family of trade marks, not only by registering its trade marks and domain names,
but also by opposing trade mark applications and objecting, where necessary,
to other uses of IMAX or confusingly similar trade marks. Court proceedings
and oppositions have been commenced in more than a dozen countries around the
world.
The Complainant makes the
following arguments:
(1) The Respondent registered
the Disputed Domain Names on or about October 20, 1999. The Domain Names are
confusingly similar to the IMAX trademark of the Complainant. As part of a review
of IMAX domain names to ensure that there was no improper or infringing use
of the IMAX trade mark, the Complainant noted the Disputed Domain Names. As
soon as the registration of these Disputed Domain Names came to the attention
of the Complainant, its attorney wrote to the Respondent in the interest of
trying to resolve the matter expeditiously, by offering up to $300 (Cdn) per
domain name for their transfer to the Complainant.
(2) The Complainant,
and not the Respondent, is the owner of all rights and interest in the trade
mark and domain name IMAX. The Respondent has not and can not have any legitimate
rights in the Domain Names. The Respondent has no inherent rights in, or interest
in the IMAX trade mark or domain name. The Respondent has never carried on business
under any name resembling "Imax". In fact, in his communications with
agents for the Complainant, it admits that it selected his domain names based
upon his knowledge and admiration of the Complainant’s products. The Respondent’s
sole interest in these names is to capitalize on the goodwill of the Complainant
in its trademark.
(3) A mere registration
of a domain name does not confer rights in the name. Accordingly, a registrant
does not necessarily have a legitimate interest in a domain name. In Rollerblade,
Inc. v. Chris McCrady, (WIPO D2000-0429) the arbitrator ruled that there
was no legitimate interest in the domain name "rollerblade.net" merely
by virtue of interest in the complainant’s products. Similarly, in this case,
the Respondent does not have any legitimate interests or rights in the Disputed
Domain Names by a mere registration, by stating that it admires the Complainant’s
products, or by stating that it would have like to engage in some future business
with the Complainant to promote IMAX films, as alleged in the Respondent’s letter
dated September 1, 2000, to the Complainant.
(4) The Complainant
submits that the registration of the Disputed Domain Names by the Respondent
is in bad faith. The Respondent stated that he purchased the Disputed Domain
Names in order to approach the Complainant for business purposes. The Respondent
further states that the offer to reimburse his registration expenses is too
low, and that he would only relinquish these names for substantially higher
consideration. This is evidence of bad faith, in that the Respondent acknowledges
that ownership of these Disputed Domain Names rightfully belongs to the Complainant
and that his sole interest in these names is to extract valuable consideration
from the Complainant, either through money from the sale of these names or as
leverage to extract a business partnership arrangement from the Complainant,
in its letter dated September 1, 2000, to the Complainant, and in its letter
dated September 2, 2000, to the Complainant’s attorney.
(5) The Respondent also
revealed a lack of interest in the Domain Names given the Complainant’s unwillingness
to cooperate with it in the development of a network to promote the products
and services of the Complainant in its letter to the Complainant, and in its
e-mail to the Complainant’s attorney dated January 6, 2001. This is another
indication of bad faith registration of the Disputed Domain Names.
(6) The Complainant
submits that the Respondent has failed to make good faith use of the Disputed
Domain Names since the date of the Disputed Domain Names’ registration, namely
on or about July 13, 1999. According to the WIPO decision regarding
the domain name "americanvintage.com", (WIPO D00-0004), the arbitrator
stated that: "[an inference of bad faith is] supported by the respondent’s
failure for a substantial period of time to make good faith use of the domain
name for its business. ….Nevertheless, it appears that the respondent has done
nothing with the Domain Name for over two years. While inconclusive, it is
possible to infer from this failure of use that the domain name was registered
without a bona fide intent to make good faith use." [underline added]
(7) The Respondent has
not established a web site corresponding to the Disputed Domain Names. According
to the recent WIPO decision (WIPO D00-0001) regarding the domain name "musicweb.com",
although no active web site had been established corresponding to the domain
name, seeking payment over out-of-pocket cost for the transfer of a domain name
constitutes "commercial use" and such "commercial use" constitutes
bad faith use. Similarly, in the case at bar, the Respondent has requested for
an amount substantially in excess of out-of-pocket expenses for the transfer
of the Disputed Domain Names to the Complainant.
(8) The use of the Disputed
Domain Names by the Respondents would be improper and contrary to the trademark
laws of numerous countries, including the trademark laws under any of the jurisdiction
that the present dispute proceeding may be subject to. In particular, among
these trade mark laws, the use of the Disputed Domain Names would be contrary
to the provisions of the Trade-marks Act of Canada (location of the Complainant),
the Trade Marks Act 1994 of the United Kingdom and the Community Trade
Mark Regulation of the European Community (location of the Respondent),
and the Lanham Act of the United States (location of the Registrar).
(9) The use of the Disputed
Domain Names would be contrary to trademarks laws in that the use of any domain
name that is prefaced by the trademark IMAX would give rise to a cause of action
in passing off, unfair competition, trademark dilution, depreciation of goodwill,
and/or misrepresentation, and would be misleading to the public who, in view
of the Complainant’s lengthy and extensive use, worldwide, of its IMAX family
of trademarks, would assume that the Disputed Domain Names are operated by or
affiliated with the Complainant. Any such use would be in bad faith.
(10) The Respondent’s
activities are not in accordance with ICANN UDRP in that the Respondent has
no legitimate rights or interest in the Domain Names, it has registered such
Disputed Domain Names in bad faith, and its use, to date, and in the future,
unless stopped, is and would be in bad faith.
The Complainant seeks transfer
of the disputed domain names to the Complainant.
B. Respondent
The Respondent raises issues
concerning the jurisdiction and powers of the Panel, and the purpose of the
Complainant in bringing the Complaint. The Respondent also challenges the Complainant’s
assertions and arguments concerning the three elements to be proven by the Complainant
in this proceeding, namely whether (a) the domain names are identical or confusingly
similar to the Complainant’s mark, (b) the Respondent has no rights or legitimate
interest in the domain names and (c) registration and use in bad faith of the
domain names "imaximax.com", "imaxworld.com" and "imaxworld.net".
- Jurisdiction and Remedial
Powers of the Panel
The Respondent raises issues
concerning the jurisdiction and remedial powers of the Panel in the following
way:
"The Respondent would
like to have mentioned that the ICANN Administration Panel has been in operation
since January 1, 2000. At the time of the domain names registration on
26, July 1999, the Respondent acted, by registering the domain names
with the full permission of the laws applicable to domain name registration.
There was no impediment to the Respondent acting thus and while a dispute has
now been identified, the Complaint exists only as a result of this policy change
of January 1, 2000." (Response paragraph 53)
"In reference to the
sites mentioned (in 34) above), the Respondent would like to express concern
at the use of the term "in bad faith". The Respondent respectfully
submits to the ICANN Administrative Panel that the application of these words
is a ‘catchall phrase’ lacking in adequate definition in consideration of the
value attributed to high-level domain names. The Respondent would like to submit
that the phrase is open to interpretation and is prejudiced against non-corporate
entities and implies a character judgement and assumed intent upon the Respondent’s
registration of the domain names in any hearing of this nature that the
ICANN Administration Panel is not assembled to dispense. The Respondent respectfully
submits that this leaves the ICANN Administration Panel only with the role of
ensuring a fair financial solution to the Complaint in the light of 1) above,
as opposed to assessing the right to ownership and the intent of the Respondent
in purchasing the domain names, as the Respondent has, albeit reluctantly,
agreed in principle to relinquishing the domain names, by virtue of the Respondent’s
compliance with these proceedings." (Response paragraph 36).
"As the Complainant
has already made a financial offer to the Respondent, the Administration process
must be, in the view of the Complainant, to assess fairly the valuation of the
domain names. The Administration Panel in this instance therefore exists
only to adjudicate an adjustment to the Complainant’s offer to a sum agreeable
to all parties in order to reasonably and without prejudice effect the transfer
of the domain names." (Response paragraph 3).
"In consideration
of the Complainant’s chosen course of action, the Respondent seeks from the
ICANN Administrative Panel a settlement from the Complainant that reflects the
true valuation of the domain names." (Response paragraph 6).
- Complaint for an Improper
Purpose
The Respondent asserts
that the Complaint is "in breach of the Clause XII Certification (21) (Rules,
paragraph, 3(b)(xiv)) ‘that this Complaint is not being presented for any improper
purpose, such as to harass…’ by demanding that the Respondent seek legal representation
to defend the Respondent’s legal registration and ownership of the domain
names and by misleading the Respondent into the belief that a negotiation
was possible." (Response point 9). The Respondent also asserts other matters
allegedly indicating that the Complaint is not being presented for any proper
purpose and/or to harass the Respondent. These are, as stated in the Response,
that:
1) As the Respondent
has shown willing to consider an improved offer and has suggested as much to
the Complainant through the Complainant’s solicitors Bereskin Parr, the Respondent
submits that the Complainant has indeed employed its corporate position to avoid
a free market transfer of the domain names and has instead set out to
harass the Respondent by employing the solicitors Bereskin Parr, to equally
contend whose services is beyond the financial capability of the Respondent.
The Complainant has thus voided its, the Complainant’s, right to complain through
the ICANN complaint procedure according to clause XII Certification (Rules,
paragraph 3 (b) (xiv)). The Complainant has initiated an unequal contest that
would have been avoided by direct communication from the Complainant indicating
the Complainant’s interest in the transfer of the domain names.
2) It is the Respondent’s
humble opinion that the Complainant’s express desire to purchase precludes the
need for complaint as such a compliant is no longer at the Respondent’s ownership
of the domain names, but at the valuation set thereupon.
3) In the Respondent’s
humble opinion, the Complainant has made an assumption as to the Respondents
position. Following this assumption the Complainant’s course of action suggests
that the Complainant is hoping to employ the ICANN Administrative Panel to effect
a ‘compulsory purchase’ of the domain names, that is beyond the remit
of corporate prerogative, and thus to avoid paying a realistic market price
for the domain names.
4) In the Respondent’s
humble opinion, the Complainant is hoping to employ the ICANN Administrative
Panel to effectively nullify the domain name valuations given below (See Response
14) by "www.shoutloud.com" and "www.greatdomains.com".
5) In demanding that
the Respondent proceeds through the courts the Complainant has placed the respondent
in an embarrassing position in which the respondent is expected to, in like
manner to that of the Complainant, arm himself with legal representation. This
circumstance is beyond the means of the Respondent. This the Respondent finds
demeaning and aggressive in the light of the Respondent’s willingness to compromise
in the matter of a negotiated transfer of the domain names and the expressed
willingness of the Respondent to act in denial of the valuations mentioned above.
6) Although the Complainant
received reply to their communication and offer of $300 Canadian on or prior
to December 1, 2000, suggesting that they seek an alternative valuation to the
Complainant’s offer of $300 Canadian per domain name and that this reply was
given to the solicitors of Complainant, a further 16 weeks passed before the
Complainant again responded by demanding compliance with the Complainant’s unchanged
offer of $300 Canadian within 5 days, making no mention of the Respondent’s
communication and counter offer. The Respondent would like to submit that the
Complainant’s offer was insulting and that the Complainant’s behavior has been
by turns demanding and implacable and amounts to bullying and is thus in contravention
of the rules of the Complaints procedure.
7) This first ‘deadline’
set by the Complainant for response before the September 15, 2000, stated in
a letter of the August 30, 2000, is not wholly unreasonable, although the Respondent
is more used to a 28-day period for business replies. However, the five day
demand by facsimile and email, though without a written letter, for a further
demand for compliance to the demands of the first letter that included the offer
described in paragraph 1) of this document expressed and urgency on behalf of
the Complainant that the Respondent felt and still feels was with the intent
to hurry the Respondent unduly. The Respondent realizes that the Complainant
was indeed subject to a five-day deadline in accordance with the ICANN Complaints
submission procedure, however, this did not imply that the Respondent was also
bound by it, as no notification had or has been given to the Respondent that
the Respondent is bound by law to these deadlines. This in the humble opinion
of the Respondent, constitutes harassment, in that the deadline allowed the
Respondent inadequate time to seek suitable counsel bearing in mind that the
Respondent’s chosen domiciled area is not as well equipped with suitably skilled
legal personnel as some other areas. The Respondent would like to point out
that the Respondent does not retain a legal advisor.
8) By failing to reply
to the Respondent’s free market alternative of the exchange of 7,500 acres of
land on the moon of market value $20 USD per acre, the Complainant has chosen
to pursue a course with this Complaint that is, by its existence and in the
light of the Respondent’s above mentioned concessions, unnecessary and therefore
aggressive and contrary to the spirit of section "XII Certification (20)
of the Complaint Transmission" as the domain names were equally available
to the Complainant as to any other interested party through the "www.eorobid.com"
auction site, wherein the Respondent gave and gives no indication as to a preferred
buyer.
9) The Complainant’s
attitude suggests that the Complainant would choose to have no mention of the
Complainant’s name on the Internet other than instances where the Complainant
has itself made such mention. If the Complainant would suggest that use of the
Complainant’s names be forbidden by any other party does this imply that the
Complainant will take legal action against every entity that uses the Complainant’s
‘coined’ name in a context that implies benefit to another party by its mention.
If this were the case, would the Complainant care to name for the ICANN Administration
Panel other parties against whom the Complainant is considering action. The
Respondent believes that this would display a highly aggressive policy underlying
the Complainant’s action against the Respondent. The Respondent believes that
the diversity of the Complainant’s domain name registrations indicates that
this policy is already in effect and that the Complainant will deliberately
seek to restrict legitimate business practice by any means, where competition
is likely.
10) The Respondent respectfully
asks why the Complainant chooses only to target domain name holders in this
matter and to make no Complaint in other cases?
11) It is the Respondent’s
opinion that the Complainant has chosen to predetermine the Respondent’s ownership
of the domain names as being with the intent to slander or defame. The
Respondent respectfully inquires as to the legitimacy of such an implication.
It appears that the Complainant
registered the domain name "www.imaximax.net" on September
26, 2000. The Complainant already has ten other domain names that include the
Complainant’s trademark name. The Respondent notes that one of these contains
the name of another high profile Media Corporation Paramount Pictures, the domain
registration being "www.paramountimax.com". Does this imply
that:
i. the Complainant has
acted in a manner requiring that Paramount Pictures lodge a Complaint similar
to the Complaint against the Respondent by registering a ‘confusingly similar’
domain name to that of Paramount Pictures?
ii. the Complainant
found a more suitable means of resolving this situation outside the ICANN Complaint’s
forum. If this is the case why therefore has the Complainant made no similar
process available to the Respondent.
The Respondent would respectfully
draw the attention of the Administrative Panel to this registration by the Complainant
of the "www.imaximax.net" domain name. This name was registered
after the Complainant first contacted the Respondent through Bereskin Parr.
The Respondent initially (through the ISP City NetGates of Broad Street Bristol)
included this domain name in the registration application of the domain names.
The respondent made mention of this fact to the Complainant through Bereskin
Parr, on receipt of the Complainant’s offer of $300 Canadian and of the Respondent’s
belief that this domain name also was registered to the Respondent. However,
due to an error by a member of the City NetGates staff the "www.imaximax.net"
domain was not registered. However, the Complainant’s registration indicates
desperation on the part of the Complainant that implies that the Respondent
would make malicious use of this domain name. This implies a passive aggressive
stance by the Complainant that can only be described as damaging to the Respondent’s
good name and thus implies harassment.
In the light of the Complainant’s
exceedingly low cash offer and the Complainant’s subsequent, and initially wrongly,
completed submission to the World Intellectual Property Organization (W.I.P.O)
requesting that the complaint procedure be initiated, the Respondent would like
to question the Complainant’s true motive in making the Complaint. (The Respondent
was served with the Complaint notice (08/01/01), only to be informed that the
Complaint had been withdrawn (17/01/01). The Respondent was later informed on
that day (17/01/01) that the Complainant was responding to the Complaint Deficiency
Notification.) The Respondent humbly submits that this pattern speaks for itself
in regard to the Complainant and bespeaks a highly self-oriented and somewhat
incompetent attitude, taking no account of the implications of this ineptitude
to the Respondent.
The Respondent respectfully
suggests that in the light of events since the lodging of the Complaint the
Complainant has demonstrated an irresponsible attitude that is inappropriate
to an organization of such magnitude and presumes influence beyond the Complainant’s
ability to do good. In view of the Complainant’s behavior, the Respondent now
sees that no true benefit could come from the Respondent pursuing the Respondent’s
original goal of facilitating access to information on the Complainant’s facilities
in the Respondent’s home city and country.
12) The fact of the
Complainant failing to correctly submit to the ICANN Administration Complaints
Procedure a completed Complaint, requiring issue of a Complaint Deficiency Notice,
indicates that the Complainant prefers to issue the threat of litigation than
to pursue a fair solution to a ‘problem’. The Complainant has assumed a ‘first
strike’ mentality in the hope that the Respondent would be unable to make objection
to the Complainant’s behavior. The Respondent respectfully submits that the
problem is in reality is only to be found only in the Complainant interpretation
of the Respondent’s ownership of assets.
- Domain Names Identical
or Confusingly Similar to Complainant’s Mark
The Respondent raises issues
concerning the similarity of the domain names with the word Imax and the trademarks
of the Complainant in the following manner:
The Respondent asserts
that none of the UK registered trademarks of the Complainant "…cite … Internet
activity …..there is no specific mention of Internet activity among the activities
mentioned by the Complainant as pertaining to its trademark." (Response
paragraph 27)
"The Respondent would
like to have noted the following points in regard to the suggestion that the
domain names are confusingly similar.
The words ‘confusingly
similar’ also imply that there exists a difference. Identical domain names would
of course be cause for confusion. Domain names differ not only by word, but
also numerically, thus no error in destination can be made when seeking a particular
web site.
The words imaximax and
imaxworld chosen by the Respondent contain per se four and three syllables respectively.
The word and trademark iMac used by the well known Apple Corporation to define
a range of computers has not only two, the same number of syllables as the Complainant’s
own Imax trademark name, but bears a distinctly greater phonetic and written
similarity than the Respondent’s four and three syllable words.
The words iMac and Imax
can be accidentally interchanged with a single keystroke. This is not possible
when typing the Respondent’s domain names.
The Respondent would like
to ask the Complainant if the Complainant, in the light of the ‘confusing similarity’
between the iMac and the Imax trademarks, is considering a similar suit against
the Apple Corporation, or whether the Respondent is, in the view of the Complainant
to be considered the greater threat according to the ‘confusingly similar’ clause
of this Complaint.
If the Complainant is not
pursuing litigation against the Apple Corporation, the Respondent would humbly
ask that this Complaint in itself be seen as harassment of the Respondent by
the Complainant by virtue of the Complainant’s unwillingness to challenge and
entity of equal resources before challenging the comparatively insignificant
perceived threat of the Respondent’s ownership of the domain names.
The Respondent respectfully
requests that the ICANN Administrative Panel also to consider the following;
the use of a computer, in most instances requires a level and degree of literacy
that could be said to be average in the Western world. While ownership of a
computer is not universal a substantial number regards their use as within their
grasp. In the light of this, it would seem to the Respondent that a person of
the required intelligence to use a computer seeking the Complainant’s domain
name would find it without hindrance." (Response paragraphs 43 to 48 and
50)
- Rights or Legitimate
Interest in Domain Names and Bad Faith
The Respondent challenges
the view of the Complainant that the Respondent has no rights or legitimate
interest in the domain names, and that the domain names are being used and have
been registered in bad faith. In this regard the Respondent submits that:
"The Respondent did
not register "www.imax.net" nor "www.imax.org"
as the Respondent felt that these suffixes did not offer adequate alternate
definition to "www.imax.com" the Complainant’s own ‘home’ domain
name. This, on reflection, indicates a consideration by the Respondent towards
the Complainant’s proprietary concerns that the Respondent believed adequate
at the time of registration of the domain names." (Response paragraph
49)
"The Respondent would
like to respectfully inform the Administration Panel that the service that the
Respondent would have provided was and still is needed by the general public,
regardless of the needs of the Complainant, and as such would have formed a
viable trading business. The Respondent would like this to be taken into consideration
in any assessment made by the Administrative Panel." (Response paragraph
56)
"The Respondent had
every intention of creating a supportive network of portals through which the
Complainant’s theatres and film screenings would be broadly publicized and had
intimated this intention to the Complainant by e-mail within months of the purchase
of the domain names. (See ICANN Deposition: Additional Material attached)
The Respondent has however found the financial burden excessive when considering
the best result for such a web presence. This in turn has led the Respondent,
in the absence of outside funding, to consider selling the domain names."
(Response paragraph 38)
"By making the Complaint,
the Complainant is suggesting that the Complainant’s market position is, if
challenged, inadequate as it stands. This Complaint contradicts the Complainant’s
expressed self-image as represented by the inclusion of the promotional material
in the Complaint document. The Respondent humbly submits that if this is the
case and the Complainant is therefore needful of supportive mention of the Complainant’s
trade name and that the Complaint cannot be valid. The Respondent humbly submits
that while different, indication of the Complainant’s name by any other party
in the absence of malice reflects positively upon the Complainant’s expressed
self-image as a single corporate entity." (Response paragraph 32)
6. Discussion and Findings
Jurisdiction and Remedial
Powers of the Panel
The Registrar’s verification
response to WIPO dated January 16, 2001, indicates that for the domain names
in dispute "Network Solutions’ 4.0 Service Agreement is in effect."
This Service Agreement 4.0 at points D and E provides:
"D. Dispute Policy
Changes or Modifications. Registrant agrees that NSI, in its sole discretion,
may change or modify the Dispute Policy, incorporated by reference herein, at
any time. Registrant agrees that Registrant's maintaining the registration of
a domain name after changes or modifications to the Dispute Policy become effective
constitutes Registrant's continued acceptance of these changes or modifications.
Registrant agrees that if Registrant considers any such changes or modifications
to be unacceptable, Registrant may request that the domain name be deleted from
the domain name database.
E. Disputes. Registrant
agrees that, if the registration of its domain name is challenged by any third
party, the Registrant will be subject to the provisions specified in the Dispute
Policy."
Hence, changes to Network
Solutions’ dispute policy become binding on the Respondent unless the Respondent
cancels registration of the domain names and failure to do so is deemed to be
acceptance of the changes in Network Solutions’ dispute policy. The Respondent
has not cancelled its registration of the domain names "imaximax.com",
"imaxworld.com" and "imaxworld.net" so it can only be concluded
that the Respondent has agreed to the changes in Network Solutions’ dispute
policy. Network Solutions’ current dispute policy incorporates the ICANN Uniform
Domain Name Dispute Resolution Policy (the "ICANN Policy"). Hence
the Respondent is, in accordance with ICANN Policy paragraph 4a, required to
submit to this mandatory administrative proceeding. In any event the Respondent
submits to the jurisdiction of the Panel highlighting in his Response at point
7 that "The Respondent will accept as binding any judgement reached by
the ICANN Administration Panel."
The Complaint satisfies
the requirements of the ICANN Policy, Rules and WIPO Supplementary Rules and
the Panel has been properly constituted and appointed under the ICANN Policy,
Rules and WIPO Supplementary Rules. The Panel therefore finds that it has jurisdiction
to conduct this proceeding and to make a decision subject to the ICANN Policy,
Rules and WIPO Supplementary Rules.
The remedial powers of
the Panel is the subject of submissions made by the Respondent (see above).
The Respondent submits "…that this leaves the ICANN Administration Panel
only with the role of ensuring a fair financial solution to the Complaint…"
It is noted that Paragraph 4i of the ICANN Policy states "The remedies
available to a complainant pursuant to any proceeding before an Administrative
Panel shall be limited to requiring the cancellation of your domain name or
the transfer of your domain name registration to the complainant." It is
clear then that this Panel has no power to require either of the Parties to
pay any amount or to order any monetary remedy or "financial solution"
to either the Respondent or Complainant. The only decisions available to the
Panel are dismissal of the Complaint and transfer or cancellation of one or
more of the domain names in dispute.
The Respondent also asserts
that "bad faith" within the meaning of the ICANN Policy "…is
open to interpretation and is prejudiced against non-corporate entities and
implies a character judgement and assumed intent upon the Respondent’s registration
of the domain names in any hearing of this nature that the ICANN Administration
Panel is not assembled to dispense." Before making any decision to cancel
or tranfer a domain name the Panel has a duty to come to the conclusion that
the relevant domain name has been registered and is being used in bad faith.
Despite any difficulties in assessing the evidence of, and in interpreting the
meaning of the words "bad faith", it is nevertheless the duty of the
Panel (as it often is in any legal proceeding) to come to a conclusion on the
issue of bad faith whenever a Panel is required to do so. Panels have done so
in hundreds of cases previously and there is no good reason to suggest that
the concept of "bad faith" is something upon which a Panel "is
not assembled to dispense".
Complaint Made for an Improper
Purpose and Harassment
The Respondent asserts
that the Complainant made the Complaint for an improper purpose such as to harass,
" by demanding that the Respondent seek legal representation to defend
the Respondent’s legal registration and ownership of the domain names
and by misleading the Respondent into the belief that a negotiation was possible."
The Respondent gives a number of examples that he asserts demonstrates the improper
purpose of the Complainant in bringing the Complaint. These are:
1) Complainant is hoping
to employ the ICANN Administrative Panel to effectively nullify the domain name
valuations of some millions of dollars given by "www.shoutloud.com"
and "www.greatdomains.com".
2) the Complainant’s
offer of $300 Canadian was insulting and the Complainant’s behavior has been
by turns demanding and implacable and amounts to bullying.
3) The "deadline"
of 5 days allowed the Respondent by the Complainant to reply to the letter from
the Complainant was inadequate time to seek suitable counsel bearing in mind
that the Respondent’s chosen domiciled area is not as well equipped with suitably
skilled legal personnel as some other areas.
4) After referring to
the name Imac and the Complainant’s failure to take action against the users
of that name, the Respondent respectfully asks why the Complainant chooses only
to target domain name holders in this matter and to make no Complaint in other
cases?
5) The Complainant’s
registration of imaximax.net indicates desperation on the part of the Complainant
that implies that the Respondent would make malicious use of this domain name.
This implies a passive aggressive stance by the Complainant that can only be
described as damaging to the Respondent’s good name and thus implies harassment.
6) In the light of the
Complainant’s exceedingly low cash offer and the Complainant’s subsequent, and
initially wrongly, completed submission to the WIPO requesting that the complaint
procedure be initiated, the Respondent questions the Complainant’s true motive
in making the Complaint. The fact of the Complainant failing to correctly submit
to the ICANN Administration Complaints Procedure a completed Complaint, requiring
issue of a Complaint Deficiency Notice, indicates that the Complainant prefers
to issue the threat of litigation than to pursue a fair solution to a ‘problem’.
The Complainant has assumed a ‘first strike’ mentality in the hope that the
Respondent would be unable to make objection to the Complainant’s behavior.
The Respondent respectfully submits that the problem is in reality is only to
be found only in the Complainant interpretation of the Respondent’s ownership
of assets.
There is nothing raised
by the Respondent concerning the conduct of the Complainant, which indicates
that this Complaint was initiated or pursued with an improper purpose such as
harassment. The conduct of the Complainant as set out by the Respondent indicates
that the Complainant was taking action, which was lawful and directed at the
protection of its trademark. There is nothing to suggest that the Complaint
was initiated other than to pursue the Complainant’s legal rights such as to
protect its business from the possibility of an unauthorized entity passing-off
its name incorporated into the disputed domain names, as domain names which
were associated with or otherwise approved by the Complainant when they were
not.
Parties to ICANN administrative
proceedings may have many reasons for engaging, or not engaging, legal counsel
to represent them. The fact that one party to the dispute has not obtained the
assistance of a lawyer experienced in domain name disputes is not something
which by itself could be regarded as evidence of harassment by the Complainant
or the use of these proceedings for an improper purpose. Indeed the Complainant
is unlikely to have been aware of this before seeing the Respondent’s response,
so would normally not be considered a factor indicating that the Complaint is
being used for an improper purpose.
The Complainant’s letter
to the Respondent of August 30, 2000, noted the date of September 15, 2000,
by which the Respondent could contact the Complainant to express interest in
accepting the offer of $300 Cdn per domain name. The only consequence if the
Respondent did not contact the Complainant by that date was that the Complainant
"shall assume that you are not interested in this proposal." Given
that this was the only consequence, the so-called deadline, although a short
one, mattered little and could not be considered as an indication that this
proceeding was brought for an improper purpose.
The Complainant has not
singled out the Respondent when taking action to protect its legal interests
in its trademarks. The Complainant states, and the Respondent has not denied,
that "Court proceedings and oppositions have been commenced in more than
a dozen countries around the world". (Complaint point 24)
Having considered the matters
raised by the Respondent and after noting the conduct of the Complainant, the
Panel finds that the Complaint was not brought in bad faith or for an improper
purpose such as to harass, and is not an abuse of this administrative proceeding.
ICANN Policy Paragraph
4(a) – the three elements required to be shown by the Complainant
As already mentioned, the
ICANN Policy is incorporated into the registration agreement between the Respondent
and the Registrar (Network Solutions Inc.) for the domain names the subject
of this proceeding. Paragraph 4(a) of the ICANN Policy requires that the Respondent
submit to this administrative proceeding in the event a third party such as
the Complainant asserts that:
- the Respondent's domain
names are identical or confusingly similar to a trade mark or service mark in
which the Complainant has rights; and
- the Respondent has
no right or legitimate interests in respect of the domain names; and
- the domain names have
been registered and are being used in bad faith.
The Policy provides that
the Complainant must prove that each of these three elements are present.
- Domain Names Identical
or Confusingly Similar to the Mark of the Complainant
The Complainant has shown
that it is the owner of numerous registered trademarks and service marks (in
various jurisdictions around the world) which include the word "IMAX"
and in one case has been the registered owner since at least 1969. The Complainant
has provided evidence of wide spread use of its registered marks both in the
United Kingdom and around the world. In particular these marks, which are the
word "Imax" or include the word "Imax", are registered in
the United Kingdom the country of the Respondent’s registration address. In
the United Kingdom the Complainant’s registered trademarks include "IMAX",
"OMNIMAX", and "AT THE MAX". These marks are not identical
to the disputed domain names "imaximax.com", "imaxworld.com"
and "imaxworld.net". Other than the ".com" or ".net"
additions required for technical reasons, the domain names include the word
"world" or repeat the word "imax".
IMAX is a made up word
and its wide use in the United Kingdom, the place of the Respondent’s address,
means that it is unlikely that the use of the word "Imax" in the domain
names imaximax and imaxworld would lead the viewer to conclude anything other
than that the source of the products or services associated with these domain
names would be offered by or with the consent of the registered trademark holder
of "IMAX", namely the Complainant. The repetition of the word "imax"
and the addition of the merely descriptive word "world" in the disputed
domain names does not affect this conclusion.
The fact that other domain
names such as Imac have only one different letter and has one syllable with
the same pronunciation also does not affect this conclusion.
Given the wide spread use
in the United Kingdom of the Complainant’s trademarks which include the word
"IMAX" and the close similarity of these registered trademarks of
the Complainant to that of the disputed domain names, the Panel finds that the
domain names "imaximax.com", "imaxworld.com" and "imaxworld.net"
are confusingly similar to the Complainant’s trademarks, at least in the United
Kingdom. Even if this confusion would only arise among persons in a limited
geographical area such as in the United Kingdom, the domain name remains confusingly
similar to the trademark of the Complainant within the meaning of Paragraph
4(a)(i) of the ICANN Policy.
- Rights to or Legitimate
Interests in the Domain Name
The ICANN Policy requires
that the Complainant show that the Respondent has no rights or legitimate interests
in respect of the domain names "imaximax.com", "imaxworld.com"
and "imaxworld.net". Paragraph 4(c) of the Uniform Policy sets out
circumstances, in particular but without limitation, which, if found by the
Panel to be proved, demonstrate the Respondent’s rights or legitimate interests
in the domain name for the purposes of paragraph 4(a)(ii). The provisions of
this paragraph are as follows:
"c. How to Demonstrate
Your Rights to and Legitimate Interests in the Domain Name in Responding to
a Complaint.
Any of the following circumstances,
in particular but without limitation, if found by the Panel to be proved based
on its evaluation of all evidence presented, shall demonstrate your rights or
legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice
to you of the dispute, your use of, or demonstrable preparations to use, the
domain name or a name corresponding to the domain name in connection with a
bona fide offering of goods or services; or
(ii) you (as an individual,
business, or other organization) have been commonly known by the domain name,
even if you have acquired no trademark or service mark rights; or
(iii) you are making
a legitimate noncommercial or fair use of the domain name, without intent for
commercial gain to misleadingly divert consumers or to tarnish the trademark
or service mark at issue."
The Respondent has never
been known by the domain names, an assertion of the Complainant, which the Respondent
does not deny. The Respondent has not used the domain names or made any demonstrable
preparations to use the domain names, as a web site or otherwise, in order to
offer goods or services. The Respondent indicates that he has not had the finance
to do what he wants to do with the domain names, as indicated in his correspondence
with the Complainant.
The Respondent indicated
his interest in the disputed domain names in two letters written before and
shortly after intervention by lawyers for the Complainant. These are:
"The intention of
setting up a network of sites to promote IMAX films (centered on Bristol) and
to, with your cooperation, merchandise IMAX products worldwide on the web was
really all I had in mind." (Respondent’s letter of September 1, 2000).
"My idea for the sites
was to contact every Imax theatre world wide and to have them register their
schedules and provide through the domains an online booking service for travelers,
business people and tourists. …….This site was, with the co-operation of the
Imax Corporation, to be linked to the "imax.com" home site where merchandising
would be available." (Respondent’s letter of September 2, 2000).
It is apparent from this
correspondence with the Complainant that the Respondent wished to promote IMAX
films and to register Imax film schedules on the websites corresponding to the
domain names. It is noted however, that this intention was always linked to
the intention to offer bookings to Imax cinemas and to merchandise Imax products.
Under the laws of England and Wales (the jurisdiction of the Respondent’s registration
address), any use of the Complainant’s trademarks to sell or market Imax products
(such as theatre tickets and other merchandise) using the domain names without
the consent of the Complainant, would be illegal. Further, the Respondent’s
letters and the Response show that it was always the Respondent’s intention
to use the disputed domain names for commercial gain using the Imax registered
trademark name and not simply to provide information to potential viewers of
Imax films or customers of Imax theatres or customers of the Complainant. It
is clear that the Respondent’s principal interest in the disputed domain names
was, and continues to be, to obtain some commercial gain based on the goodwill
of the Complainant in the made-up word Imax and the Complainant’s trademarks
which incorporate that word.
After taking into account
all the above factors the Panel finds that the Respondent has no rights or legitimate
interests in respect of the domain names "imaximax.com", "imaxworld.com"
and "imaxworld.net".
- Domain Name Registered
and Used in Bad Faith
The third element of the
ICANN Policy requires that the Complainant show that the domain names have "been
registered and is being used in bad faith". The domain names "imaximax.com",
"imaxworld.com" and "imaxworld.net" do not resolve to a
web site. This situation is one that has continued since the creation of the
record of the domain name.
The Respondent clearly
states in his letters to the Complainant, and in the Response, that at the time
of registering the domain names in dispute he did so with the intention to enter
into some commercial cooperation with the Complainant and "with your cooperation,
merchandise IMAX products". It is apparent that the disputed domain names
were registered for commercial gain. It is clear that at the time of registering
the disputed domain names the Respondent had the intention to use his registration
of the domain names in order to, at the very least, entice the Complainant into
entering into a business relationship with the Respondent. At the time of registration
or at some time thereafter, the Respondent had the intention to coerce the Complainant
into entering into a business relationship with the Complainant or to require
the Complainant to pay over US$100,000 for the domain names. When Imax did not
cooperate the Respondent resorted to thinly veiled threats to use or sell the
domain names to provide bad publicity for Imax if the Complainant failed to
pay for the domain names in an amount which vastly exceeded any out-of-pocket
expenses directly related to the domain name. The Respondent’s letters of September
1 and 2, 2000, and January 5, 2000, to the Complainant amply demonstrate this.
The letter of September 1, 2000, states
"Maybe this does not
say too much to you right now, but my proposal is this; If you would like to
broaden your retail base by buying the domain names and using them, as I had
hoped to for active e-commerce sites, each with a different design element,
then I would be happy to consider an offer. If you are not interested in the
idea, I will make the domains available on the open market. ....…."
The Respondent’s letter
of September 2, 2000, states, in part:
"Granted that you
may fear trademark infringement, but my letter clearly explains my desire for
co-operation with the Imax Corporation and I have no wish to undermine a phenomenon
such as the Imax file format, or its makers. It was to this end that I wrote
to Imax Corporation ….. informing the Corporation of my ownership of the Domain
Names …. and requested that they consider an option to collaborate or purchase
of the names. I made no indication of price and the email leant heavily towards
a sister site arrangement whereby I would be permitted to sell Imax merchandising
through the web sites I was hoping to design. ….I have had no reply to the email.
….Since that date and the realization that the Imax Corporation would be unlikely
to co-operate in a venture with such a small entity as myself….I have made moves
to sell the Domain Names."
The thinly veiled threat
of the Respondent to provide bad publicity using the domain names is set out
in his letter of January 5, 2001, in which it is stated:
"Anyway, even if I
committed the cardinal sin of a slander site with the names, would that not
draw publicity for the Imax Company. Okay. I have no intention of doing that,
for the reasons I have said before, but it is an increasingly accepted rule
that any publicity is good publicity in the quest for fame and notoriety. By
contrast, in the computer press fair play begets good publicity and $300 dollars
is not fair play. This really means that Imax is not concerned with their public
image, or what I would do with the sites. ……..Though a web site can become a
weapon, you already have my assurance that mine will not be used so. I can assure
you also that many of the complexities of this affair are within my grasp."
It is noted that in the
Respondent’s letters to the Complainant and in the Response, the Respondent
frequently refers to offers to sell the domain names to the Complainant at considerable
commercial gain. The last such offer, included in the Response, was "a
property for property exchange of cyber space (the domain names) in return for
Moon Acerage of 7500acres at $20US per acre." - equivalent to US$150,000.
The Panel finds that the
Respondent registered the domain names "imaximax.com", "imaxworld.com"
and "imaxworld.net" with the purpose of requiring the Complainant
to enter into commercial negotiations with the Respondent for a cooperation
arrangement. At the same time or shortly thereafter, the Respondent had the
intention to use, used, and continues to use the domain names, in order to coerce
the Complainant to enter into a business relationship with the Respondent or
to require the Complainant to pay for the domain names in an amount which vastly
exceeds any out-of-pocket expenses directly related to the domain name. When
Imax did not cooperate the Respondent resorted to thinly veiled threats to use
or sell the domain names so that they would provide bad publicity for Imax if
the Complainant failed to pay such an amount for the domain names.
In view of the foregoing
the Panel finds that the Respondent has registered and is using the domain names
"imaximax.com", "imaxworld.com" and "imaxworld.net"
in bad faith.
7. Decision
The Panel finds that the
Complainant has shown, as required by Paragraph 4(a) of ICANN Policy, that (i)
the domain names "imaximax.com", "imaxworld.com" and "imaxworld.net"
are confusingly similar to trademarks in which the Complainant has rights (ii)
the Respondent has no rights or legitimate interests in respect of these domain
names and (iii) the domain names have been registered and are being used in
bad faith. As the distinguishing part of the domain names "imaximax.com",
"imaxworld.com" and "imaxworld.net" is the Complainant’s
mark "Imax", registered in numerous countries around the world and
comprised of a made-up word that is unlikely to be associated with any source
other than the Complainant, the Panel decides that the domain name registrations
for "imaximax.com", "imaxworld.com" and "imaxworld.net"
be transferred to the Complainant.
Frank R.
Schoneveld
Sole Panelist
Dated: March
1, 2001
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