United Artists Theatre Circuit, Inc. v. Domains For Sale, Inc.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

United Artists Theatre Circuit, Inc. v. Domains for Sale Inc.

Case No. D2002-0005

1. The Parties

Complainant is United Artists Theatre Circuit, Inc. ("Complainant"

and "United"), is a Maryland corporation with its principal place

of business at 9110 E. Nichols Avenue, Suite 200, Englewood, Colorado, USA.

Respondent is Domains For Sale Inc. ("Respondent" and "Domains")

located at 5444 Arlington Ave., New York, New York, USA.

2. The Domain Name and Registrar

The domain name at issue is <unitedartiststheatres.com> (the "Domain

Name"). The registrar is Tucows, Inc. (the "Registrar"), 96 Mowat

Avenue, Toronto, Ontario, Canada.

3. Procedural History

On January 3, 2002, the WIPO Arbitration and Mediation Center (the "Center")

received a copy of the Complaint of Complainant in hardcopy. On January 4, 2002,

the Center sent an Acknowledgment of Receipt of Complaint to Complainant. On

January 8, 2002, the Center received the Complaint via email. The Complainant

paid the required fee.

On January 8, 2002, after the Center sent a Request for Verification to the

Registrar requesting verification of registration data, the Registrar confirmed,

inter alia, that it is the registrar of the Domain Name and that the

Domain Name is registered in the Respondent's name.

The Center verified that the Complaint satisfies the formal requirements of

the ICANN 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").

On January 9, 2002, the Center sent a Notification of Complaint and Commencement

of Administrative Proceeding to the Respondent together with a copy of the Complaint,

and copied to the Complainant. This notification was sent by the methods required

under paragraph 2(a) of the Rules.

On January 31, 2002, the Center advised Respondent that it was in default for

failing to file its Response. No Response has been received.

On February 14, 2002, after the Center received a completed and signed Statement

of Acceptance and Declaration of Impartiality and Independence from Richard

W. Page (the "Sole Panelist"), the Center notified the parties of

the appointment of a single-member panel consisting of the Sole Panelist.

4. Factual Background

United is a long-established company that has been using the trade name and

service mark "United Artists Theatres" (the "Trademark")

throughout the United States for more than seventy-five years. United was founded

in 1926, by several Hollywood actors and producers, including Samuel Goldwyn,

Douglas Fairbanks, and Mary Pickford, and has operated continuously since then.

United currently operates nearly 1,600 screens at 222 theatres.

United owns the domain name <uatc.com> and operates a website at "www.uatc.com",

offering movie clips, theatre locations, and other information of interest to

its customers and potential customers. United also owns other domain names incorporating

its marks, including but not limited to: <uatc.info>; <unitedartiststheatres.info>;

<unitedartiststheaters.info>; <uatheatres.info>; <uatheaters.info>;

<satellitetheatrenetwork.info>; <satellitetheaternetwork.info>;

and <satellitetheaternetwork.biz>.

Beginning at least as early as December 19, 2001, and continuing nearly uninterrupted

through the date of this Complaint, the Respondent used the website "www.unitedartiststheaters.com"

to post content under the heading "Abortion Is Murder." The content

includes, among other things, photographs purportedly showing aborted fetuses

and anatomical diagrams of abortion procedures that many of Complainant’s customers

and potential customers may find highly offensive. The "www.unitedartiststheaters.com"

webpage contains links to a site under the domain name <abortionismurder.org>.

On December 20, 2001, the Respondent temporarily replaced the "Abortion

Is Murder" content at <unitedartiststheatres.com> with content that

appeared to serve the sole purpose of marketing and selling the Domain Name

at issue in this proceeding, <unitedartiststheatres.com>. The page read:

"This Domain is For Sale / $1500 / or Best Offer / BUY IT NOW Before someone

else does!" The webpage also provided a link to a PayPal page hosted at

"www.paypal.com", which allowed a prospective purchaser to remit payment

electronically to the e-mail address "Tomk668@aol.com", which is also

the email address for the Respondent’s administrative, technical, and billing

contacts. The Respondent stated, on the "www.unitedartiststheatres.com"

webpage, that "We only sell domains."

5. Parties’ Contentions

A. Complainant’s contentions

i. Complainant contends that it has common law rights in the Trademark UNITED

ARTISTS THEATRES. Complaint asserts that under U.S. law, actual use of a designation

as a mark creates rights and priority over junior users. J. Thomas McCarthy,

McCarthy on Trademarks § 16.4 (2001). Through its active use of the Trademark

throughout North America, United has developed its business and generated commercial

goodwill in the name and Trademark, UNITED ARTISTS THEATRES. With 222 United

Artists Theatres currently in operation nationwide, the Trademark UNITED ARTISTS

THEATRES has become a well-known service mark, tradename and d/b/a of the Complainant.

United has actively used the Trademark and name UNITED ARTISTS THEATRES for

more than seventy-five years. Respondent does not appear to have any use other

than or prior to registration of the Domain Name on November 1, 2001. Complainant

concludes that its common law Trademark has priority over any use by Respondent.

Prior to Respondent’s registration of the Domain Name at issue in this proceeding,

United has developed considerable name recognition for the Trademark throughout

North America as a leading motion picture exhibitor.

ii. Complainant argues that the Domain Name is identical with and confusingly

similar to the UNITED ARTISTS THEATRES Trademark, pursuant to Paragraph 4(a)(i)

of the Policy.

iii Complainant contends that Respondent has no rights or legitimate interests

in the Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondent has

failed to demonstrate any of the three circumstances that constitute rights

to or legitimate interests in the Domain Name.

Complainant asserts that the phrase "United Artists Theatres," especially

with the unusual spelling of "Theatre," is a unique combination of

words that has a long-standing association with United. The Respondent does

not use the words "United Artists Theatres" or any similar combination

in the text of its "Buy This Domain" or "Abortion Is Murder"

webpages for criticism or commentary of United, nor does the Respondent otherwise

make fair use of the Trademark. Since the Respondent has no rights granted by

the owner of the Trademark and makes no fair or legitimate use of the Trademark,

the Respondent does not have any right or legitimate interest in respect of

the Domain Name at issue.

Complainant further asserts that it has never licensed the Trademark or any

of its marks to the Respondent. To the best of United’s knowledge, the Respondent:

(1) has never owned or operated a business under the trade name "United

Artists Theatres"; (2) has no rights to any registered or unregistered

marks containing the words "United Artists Theatres"; (3) does not

currently use the trade name and service mark "United Artists Theatres"

or any similar name in any commercial or other venture (other than in connection

with the domain name at issue); and (4) has never used the Domain Name in connection

with a bona fide offering of goods or services.

Complainant alleges that Respondent cannot demonstrate rights or legitimate

interest in the Domain Name under Paragraph 4(c)(i).

iv Complainant contends that Respondent registered and is using the Domain

Name in bad faith in violation of Paragraph 4(a)(iii).

Complainant further contends that the Respondent’s use of the Domain Name to

display "Abortion Is Murder" content that many United customers and

potential customers may find highly offensive is likely to cause confusion regarding

United’s affiliation or sponsorship of the views reflected therein. In particular,

the use of color photographs purportedly showing aborted fetuses and graphic,

anatomical diagrams of abortion procedures on a website with the Domain Name

containing Complainant’s Trademark is likely to tarnish Complainant’s reputation

and to erode the goodwill that it has developed and honed over the course of

its 75 year history.

Complainant alleges that the Respondent’s offer to sell the Domain Name <unitedartiststheatres.com>

for valuable consideration in the amount of $1500, in excess of the registrant’s

expenses, as well as its advertisement that "This Domain is For Sale,"

clearly indicate that Respondent has registered the Domain Name primarily for

the purpose of selling it. "Offers to sell to the public at large domain

names that are identical or confusingly similar to marks of others may constitute

bad faith within the meaning of paragraph 4(a)(iii) of the Policy." Laboratoire

Pharmafarm (SAS) v. M. Sivaramakrishan, WIPO

Case No. D2001-0615 (June 6, 2001). Complainant states that here the webpage

operated by Respondent at "www.unitedartiststheatres.com" on December

20, 2001, boasted that "This Domain is For Sale" to the public for

$1500. The Respondent represented that it "only sells domains," acknowledging

that its registration and use of the Domain Name <unitedartiststheatres.com>

is primarily for the purpose of selling it. Even the Respondent’s name, "Domains

for Sale Inc.," suggests that its primary purpose in registering and using

the domain names it now possesses is to sell them for profit.

The Complainant further alleges that the Respondent offers the Domain Name

for $1500 – the exact filing fee for domain name disputes with this Panel –

clearly evidences bad faith. By offering to sell the Domain Name at that price,

the Respondent hopes to maximize its profits by charging the highest possible

price not in excess of the Trademark owner’s costs in defending its rights to

the Trademark through the UDRP process. This further demonstrates that the Respondent

registered and used the Domain Name with the intent of selling it to Complainant

as its rightful owner.

Complainant further alleges that by registering and using the Domain Name <unitedartists

theatres.com>, the Respondent has effectively prevented United from reflecting

its Trademark in the corresponding Domain Name.

Finally, Complainant requests that even if the Sole Panelist finds that the

Respondent does not fall exactly within any of the precise categories that characterize

"bad faith" under the Uniform Domain Name Dispute Resolution Policy,

paragraph 4(b), when taken together, the facts clearly establish that the Respondent’s

registration and use of the Domain Name are in bad faith. Complainant states

that the express list of bad faith factors stated in paragraph 4(a)(iii) of

the Policy is nonexclusive in character. Laboratoire Pharmafarm (SAS) v.

M. Sivaramakrishan, WIPO Case No. D2001-0615

(June 6, 2001). Therefore, when the circumstances are viewed in their entirety,

the facts demonstrate that the Respondent has registered and used the Domain

Name <unitedartists theatres.com> in bad faith.

B Respondent’s contentions

i. Respondent does not dispute that the Complainant has common law rights

in the Trademark.

ii. Respondent does not dispute that the Domain Name is identical with or

confusingly similar to the Trademark.

Respondent does not contest Complainant’s position that Respondent lacks rights

to or legitimate interests in the Domain Name.

Respondent does not contest Complainant’s assertion that Respondent registered

or used the Domain Name.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Sole Panelist as to the principles

the Sole Panelist is to use in determining the dispute: "A Panel shall

decide a Complaint on the basis of the statements and documents submitted in

accordance with the Policy, these Rules, and any rules and principles of law

that it deems applicable."

Because both the Complainant and Respondent are domiciled in the United States

and United States courts have recent experience with similar disputes, to the

extent that it would assist the Sole Panelist in determining whether the Complainant

has met its burden as established by Paragraph 4(a) of the Policy, the Panel

shall look to rules and principles of law set out in decisions of the courts

of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie,

WIPO No. D2000-1772 (April 10, 2001).

Even though Respondent has failed to file a Response or to contest Complainant’s

assertions, the Sole Panelist will review the evidence proffered by Complainant

to verify that the essential elements of the claims are met.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of

the following:

i) that the domain name registered by the Respondent is identical or confusingly

similar to a trademark or service mark in which the Complainant has rights;

and,

ii) that the Respondent has no legitimate interests in respect of the domain

name; and,

iii) that the domain name has been registered and is being used in bad faith.

Enforceable Trademark Rights

An individual may be entitled to a common law trademark or service mark without

registering the mark with the appropriate authority. See, Steven Rattner

v. BuyThis Domain Name, (WIPO Case No.

D2000-0402); Jeanette Winterson v. Mark Hogarth, (WIPO

Case No. D2000-0235); Julia Fiona Roberts v. Russell Boyd, (WIPO

Case No. D2000-0210). The Complainant must show that his, her or its name

has achieved has sufficient secondary meaning or association with Complainant.

This result is consistent with United States trademark law in which names are

protectable as trademarks or service marks upon a showing that the name has

become distinctive through the acquisition of secondary meaning. See, McCarthy

on Trademarks and Unfair Competition '16.4 (2001). Secondary meaning is

the consumers association of the mark with a particular source or sponsor and

is established out of long association of the name with the business, whereby

the name and the business have become synonymous in the mind of the public,

submerging the primary meaning of the name in favor of its meaning as a word

identifying that business. See Visser v. Macrese et al., 214 Cal. App.

2d 249, 253, 29 Cal. Rptr. 367, 369 (Cal. Dist. Ct. App. 4th 1963);

see also Levis Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1354

(9th Cir. 1991), (en banc). In assessing secondary meaning, one must

consider a variety of factors, including, but not limited to, A(1) advertising

expenditures, (2) consumer ... linking [of] the mark to the source, (3) unsolicited

media coverage of the product, (4) sales success, ... and [(5)] length and exclusivity

of the marks use, see Paco Sport, Ltd. v. Paco Rabanne Parfums, 86 F.Supp.

2d 305, 313 (S.D.N.Y. 2000), (quoting Centaur Communications, Ltd. v. A/S/M

Communications, Inc., 830 F.2d 1217, 1222 (2d. Cir. 1987).

Given the continuous seventy-five year use of the Trademark by Complainant,

the recognition of the Trademark with the public and the failure by Respondent

to contest Complainant’s asserted rights, the Sole Panelist concludes that for

purposes of this proceeding the Complainant has shown it possesses common law

trademark rights.

Identity or Confusing Similarity

Complainant further contends that the Domain Name is identical with and confusingly

similar to the trademark pursuant to the Policy paragraph 4(a)(i).

Respondent has not contested the assertions by Complaint that the Domain Name

is identical with and confusingly similar to the Trademark.

Therefore, the Sole Panelist finds that the Domain Name is identical with and

confusingly similar to the UNITED ARTISTS THEATRES Trademark pursuant to the

Policy paragraph 4(a)(i).

Rights or Legitimate Interest

Complainant contends that Respondent has no rights or legitimate interest in

the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has

no rights to or legitimate interests in the Domain Name. Once a Complainant

establishes a prima facie showing that none of the three circumstances

establishing legitimate interests or rights apply, the burden of production

on this factor shifts to the Respondent to rebut the showing. The burden of

proof, however, remains with Complainant to prove each of the three elements

of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic

Communications, Inc., WIPO Case No. D2000-0270

(June 6, 2000).

Complainant has asserted that it has never licensed the Trademark or any of

its marks to the Respondent. Complainant further asserted that after its due

diligence it found no evidence that the Respondent: (1) has ever owned or operated

a business under the trade name "United Artists Theatres"; (2) has

had any rights to any registered or unregistered marks containing the words

"United Artists Theatres"; (3) has ever used the trade name and service

mark "United Artists Theatres" or any similar name in any commercial

or other venture (other than in connection with the Domain Name at issue); or

(4) has ever used the domain name in connection with a bona fide offering

of goods or services.

The Policy paragraph 4(c) allows three nonexclusive methods for Respondent

to rebut a prima facie showing by Complainant that Respondent has no rights

or a legitimate interest in the Domain Name:

(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 Sole Panelist finds that the Complainant has sustained its burden of proving

that the Respondent lacks rights to or legitimate interests in the Domain Name.

Respondent has not come forward to rebut Complainant’s assertions and the Sole

Panelist finds no evidence that the use of the Domain Name meets the elements

for any of the nonexclusive methods provided for in the Policy paragraph 4(c).

Therefore, the Sole Panelist finds that Respondent has no rights or legitimate

interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Bad Faith

Complainant contends that Respondent registered and is using the Domain Name

in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant

to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have

acquired the domain name primarily for the purpose of selling, renting, or otherwise

transferring the domain name registration to the Complainant who is the owner

of the trademark or service mark or to a competitor of that Complainant, for

valuable consideration in excess of your documented out-of-pocket costs directly

related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner

of the trademark or service mark from reflecting the mark in a corresponding

domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose

of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to

attract, for commercial gain, Internet users to your web site or other on-line

location, by creating a likelihood of confusion with the Complainant's mark

as to the source, sponsorship, affiliation, or endorsement of your web site

or location or of a product,

The four criteria set forth in the Policy paragraph 4(b) are nonexclusive.

Telstra Corporation Limited v. Nuclear Marshmallows, WIPO

Case No. D2000-0003. In addition to these criteria, other factors alone

or in combination can support a finding of bad faith.

Use of Entire Mark Without Plausible Good Faith Use

One such factor is the use of Complainant’s entire mark in the Domain Name,

thus making it difficult to infer a legitimate use of the Domain Name by Respondent.

In Cellular One Group v. Paul Brien, WIPO

Case No.D2000-0028 (March 10, 2000), Complainant filed a WIPO Complaint

against the Registrant of domain name <cellularonechina.com>. The WIPO

panel agreed with Complainant, based on facts essentially the same as those

set forth in this Complaint, that the Registrant unlawfully registered an identical

or confusingly similar domain name in bad faith. Moreover, the Panel inferred

bad faith use of <cellularonechina.com>, because the domain name included

Complainant’s entire trademark. In light of Cellular One’s trademark registrations

and applications, "it is not possible to conceive of a plausible circumstance

in which Respondent could legitimately use the domain name." See Telstra

Corp. Ltd. v. Nuclear Marshmallows, WIPO

Case No. D2000-0003 ¶ 7.

Respondent’s Domain Name uses the entirety of Complainant’s Trademark, namely

UNITED ARTISTS THEATRES. No plausible explanation exists as to why Respondent

selected the name UNITED ARTISTS THEATRES as part of the Domain Name other than

to trade or affect on the goodwill of Complainant.

Offer to Sell to Public

A second factor is that Respondent has offered the disputed domain name for

sale to the public. There is nothing inherently wrongful in the offer or sale

of domain names, without more, such as to justify a finding of bad faith under

the Policy. However, the fact that domain name registrants may legitimately

and in good faith sell domain names does not imply a right in such registrants

to sell domain names that are identical or confusingly similar to trademarks

or service marks of others without their consent. Although Respondent’s offer

of the disputed Domain Name for sale was not made specifically to Complainant

or its competitor, offers for sale to the public may nevertheless constitute

evidence of bad faith under the Policy.

Complainant’s allegation that Respondent offered to sell his ownership of the

Domain Name was set forth above. The offering for sale of a domain name, even

to a third party, supports bad faith. See Policy, Paragraph 4(b); Sporty’s

Farm L.L.C. v. Sportsman’s Market, Inc., 202 F.3d 489 (2d Cir. 2000); Porsche

Cars North America, Inc. v. Spencer, 55 U.S.P.Q.2d 1027 (E.D. Cal. 2000);

Morrison & Foerster LLP v. Wick, 94 F. Supp.2d 1125 (D. Colo. 2000).

Respondent has sought to profit from the mere registration of Complainant’s

Trademark as a domain name. Respondent has offered domain names using the marks

of others.

Respondent has failed to come forward with any facts to contradict the assertions

of Complainant.

Based upon this evidence, the Sole Panelist finds that Complainant has shown

sufficient facts to support a finding that the Domain Name was registered and

used in bad faith pursuant to the Policy paragraph 4(a)(iii).

7. Decision

The Sole Panelist concludes (a) that the Domain Name <unitedartiststheatres.com>

is confusingly similar to Complainant’s common law trademark rights in UNITED

ARTISTS THEATRES, (b) that Respondent has no rights or legitimate interest in

the Domain Name and (c) that Respondent has registered and used the Domain Name

in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of

the Rules, the Sole Panelist orders that the Domain Name be transferred to the

Complainant.

Richard W. Page

Sole Panelist

Dated: March 27, 2002