Academy of Motion Picture Arts and Sciences v. Chego Nado

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Academy of Motion Picture Arts and Sciences v. Chego Nado

Case No. D2003-0541

1. The Parties

The complainant is Academy of Motion Picture Arts and Sciences, c/o Scott Miller, Beverly Hills, California, United States of America, represented by Quinn Emanuel Urquhart Oliver & Hedges, LLP, United States of America.

The respondent is Chego Nado, Sosi, Turkey.

2. The Domain Name and Registrar

The disputed domain name <porno-oscar.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 10, 2003. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the respondent of the Complaint, and the proceedings commenced on July 21, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2003. The respondent did not submit any response. Accordingly, the Center notified the respondent’s default on August 14, 2003.

The Center

appointed

George R. F. Souter

as the Sole

Panelist

in this

matter on

August 14, 2003.

The panel

finds that

it was properly

constituted.

The panel

has submitted

the Statement

of Acceptance

and Declaration

of Impartiality

and Independence,

as required

by the Center

to ensure

compliance

with the

Rules, paragraph 7.

4. Factual Background

The complainant, Academy of Motion Picture Arts and Sciences, was founded in 1927, for the purposes, inter alia, of advancing motion picture arts and sciences and promoting cultural, educational, and technological progress by fostering cooperation among the motion picture industry’s creative leadership. As a constant incentive for members of the industry to strive to achieve those purposes, and as a means of recognizing persons who make outstanding contributions to their respective fields, the complainant holds an annual "Academy Awards" ceremony where it confers an "Award of Merit," known to the public as an "Oscar," in over twenty categories of achievement. The Academy Awards ceremony, also known as "The Oscars" is seen in either a live or delayed broadcast in over 100 countries, including Turkey (where the respondent is located).

The complainant has provided the panel with copy certificates of registration of the trademark OSCARS in the USA, and OSCAR in the USA and Turkey. The Turkish registration of OSCAR, No 173152, which dates from 1996, is registered in respect (in English translation) of "Entertainment services including the presentation of awards for meritorious achievement."

5. Parties’ Contentions

A. Complainant

The complainant contends that the domain name at issue is confusingly similar to the complainant’s well known OSCAR and OSCARS marks, that the respondent has no rights or legitimate interests in the domain name, and that the domain name was registered and used in bad faith.

In particular, the complainant alleges that the respondent is not "making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue according to paragraph 4(c)(iii) of the Policy," by drawing Internet users to a pornographic website for commercial gain. The complainant provided evidence to the panel of such usage. The complainant also alleges that this usage constitutes evidence of registration and use in bad faith.

B. Respondent

The respondent did not reply to the complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy lists three tests which a complainant must satisfy in order to succeed:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

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

(i) Identical or Confusingly Similar

The question

of whether

the mere

addition

of a common

word to

a trademark

(in this

case the

word "porno,"

plus a non-distinctive

hyphen,

which can

be disregarded)

is sufficient

to avoid

a finding

of confusing

similarity

has been

raised a

number of

times in

previous

cases, and,

generally,

the finding

has been

that it

is not.

In Nokia

Corporation

v. Nokiagirls.com

a.k.a IBCC,

WIPO

Case No.

D2000-0102,

for example,

the panel

decided

that the

mere addition

of "girls"

to the NOKIA

trademark

did not

avoid a

finding

of confusingly

similar.

In this

case, the

panel takes

the view

that the

addition

of "porno"

(plus hyphen)

to the trademark

merely suggests

that the

products/services

to be expected

are those

of the trademark

owner’s

"Oscar"

type or

class, but

with a pornographic

context.

The panel

finds that

there is

confusing

similarity

in this

case.

In this connection, and also in connection with tests (ii) and (iii) below, the panel is aware that the term "Oscar," deriving from the complainant’s activities, is well known to such an extent that it is defined in Webster’s Encyclopedic Unabridged Dictionary of the English Language (ISBN 0-517-88781-X, at page 1018), as follows: "one of a group of statuettes awarded annually by the Academy of Motion Picture Arts and Sciences for professional achievements in motion picture production and performance (said to have been named in 1931 by an employee of the Academy of Motion Picture Arts and Sciences after her uncle)."

(ii) Rights or Legitimate Interests

The respondent has not taken the opportunity accorded to him under these proceedings of justifying its adoption of the domain name. There appear to be no circumstances attached to the respondent’s name or address which might lead to any suspicion of legitimate interest. In these circumstances, the panel decides that the complainant, whose Complaint was transmitted to the respondent under this procedure, has satisfied the second test. In particular, the panel accepts the complainant’s contention that the respondent has no rights or legitimate interests in the domain name, mentioned above, in the specifics of this case.

(iii) Registered and Used in Bad Faith

In Nokia

Corporation

v. Nokiagirls.com

a.k.a IBCC,

WIPO

Case No.

D2000-0102,

the panel

found that

"[t]he

trademark

NOKIA is

currently

enjoying

such fame

internationally

that it

cannot reasonably

be argued

that respondent

… could

have been

unaware

of the trademark

rights vested

therein

when registering

the domain

name."

The panel

approves

that decision,

mutatis

mutandis,

in the circumstances

of the present

case, and

finds that

the domain

name at

issue was

registered

in bad faith.

The third test is, in reality, a dual test, requiring the panel to be satisfied both that the domain name has been registered in bad faith and used in bad faith.

AOL

Time Warner

Inc.

v. John

Zuccarini,

WIPO

Case No.

D2002-0827,

is an example

of one of

the many

cases where

use in bad

faith has

been found

in the circumstances

where a

website

operated

under a

deceptively

confusing

domain name

has been

used to

direct Internet

users to

a pornographic

website

to the potential

detriment

of the complainant,

as has been

proved to

the panel’s

satisfaction

in this

case, where

the panel

considers

that the

potential

detriment

to the complainant’s

reputation

is acute.

Accordingly,

a finding

that there

has been

use in bad

faith in

this case

is inevitable,

and the

panel so

finds.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the panel orders that the domain name, <porno-oscar.com>, be cancelled.

George R. F. Souter

Sole Panelist

Dated: August 24, 2003

More cases by this complainant

• Academy of Motion Picture Arts and Sciences v. 007 Promotions — D2009-1523 · 0scars100.com, 100thoscars.com, oscars.cc · Transfer · 23 Dec 2009
• Academy of Motion Picture Arts and Sciences v. America-Asian (Beijing) Science & Education Center — D2006-1158 · chinaacademyawards.com, chinaacademyawards.net, chinaacademyawards.org · Transfer · 18 Jan 2007
• Academy of Motion Picture Arts and Sciences v. This Name Is For Sale — D2005-1063 · academyawards.net · Transfer · 30 Nov 2005
• Academy of Motion Picture Arts and Sciences v. Lin ZanSong — D2005-1034 · ampas.com · Transfer · 17 Jan 2006
• Academy of Motion Picture Arts and Sciences v. domain leasing — D2003-0706 · oscartv.com · Cancellation · 06 Nov 2003