Pixar v. Tom Romkey
Claim Number: FA0201000104133
Complainant is Pixar, Emeryville, CA (“Complainant”) represented by Jennifer L. Myron, of Arent, Fox, Kintner, Plotkin & Kahn PLLC. Respondent is Tom Romkey, Miami, FL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pixr.com>, registered with eNom, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.
Sandra Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 30, 2002; the Forum received a hard copy of the Complaint on February 4, 2002.
On January 30, 2002, eNom, Inc. confirmed by e-mail to the Forum that the domain name <pixr.com> is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 4, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 25, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On March 4, 2002 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.” Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Respondent’s domain name <pixr.com> is confusingly similar and phonetically identical to Complainant’s PIXAR mark.
2. Respondent cannot, in good faith, claim that he or his goods or services are commonly known by the name <pixr.com>. Additionally, Respondent is not making any legitimate, noncommercial or fair use of the disputed domain name nor is he using the domain name in connection with a bona fide offering of goods or services. Therefore, Respondent cannot demonstrate its rights and legitimate interests in <pixr.com>.
3. Respondent has attempted to sell the disputed domain name for consideration in excess for out-of-pocket costs. Furthermore, Respondent’s use of a domain name that is confusingly similar to another company’s mark is evidence that Respondent has a bad faith intent to profit from Complainant’s well-known PIXAR mark. Therefore, there is evidence that Respondent has registered and used <pixr.com> in bad faith.
An incomplete Response was received late (February 28, 2002) and therefore was not considered by the Panel.
Complainant is an Academy Award®-winning, digital animation studio that creates and produces animated feature films for the public, as well as computer software programs for graphics and animation. Complainant has used the PIXAR mark for nearly twenty years and holds three federal registrations; U.S. Reg. No. 1,729,056, registered November 3, 1992; U.S. Reg. No. 1,918,413, registered September 12, 1995; U.S. Reg. No. 2,084,959, registered July 29, 1997. Complainant’s feature films have received several awards and nominations for creative and technical achievements and have broken numerous box office records. Due to the huge success and popularity of Complainant’s films, the PIXAR mark has become famous and is identified by consumers as the source of high-quality digital animation goods and services.
Respondent registered the <pixr.com> domain name on July 12, 2001. According to Complainant, the website connected with the disputed domain name greets the Internet user with the message “pixr.com is under construction. Try Searching the Internet on these terms related to this Domain:” including “Animation,” “Computer Animation,” “Animation Graphics,” “Studio,” “Production,” and “3d Software.” Despite the fact the website is “under construction,” Respondent is offering the disputed domain name for sale at the website connected with <greatdomains.com>. On this website Respondent has offered to sell the disputed domain name for $14,000.
After three different cease and desist requests by Complainant and many other phone calls and e-mails in an attempt to contact Respondent, Respondent finally contacted Complainant and offered to lease the disputed domain name for $250 per year.
Paragraph 15(a) of the Rules instructs this Panel to “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.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) 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
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant has established its rights in PIXAR both through federal registration and through subsequent continuous use. Respondent’s <pixr.com> domain name is phonetically similar to Complainant’s PIXAR mark. Because of the phonetic likeness there is a confusing similarity between Complainant’s famous mark and the disputed domain name. See Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to Complainant’s mark satisfies ¶ 4(a)(i) of the Policy); See Am. Online, Inc. v. Peppler dba RealTimeInternet.com, FA 103437 (Nat. Arb. Forum Feb. 22, 2002) (finding the word “quest” and “crest” to be similar in sound and, thus, that Respondent’s <mapcrest.com> domain name and Complainant’s MAP QUEST mark are confusingly similar).
Furthermore, the disputed domain is nearly identical to Complainant’s famous mark since the only difference is that the disputed domain name omits the letter “a” from Complainant’s famous mark. Therefore, there is no doubt that <pixr.com> and PIXAR are confusingly similar. See Compaq Info. Techs. Group, L.P. v. Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to Complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the Complainant’s mark “State Farm”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to file a timely Response in this matter. Therefore, the Panel may presume that Respondent has no rights or legitimate interests in <pixr.com>. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
According to Complainant, Respondent has passively held the disputed domain since its registration. Further, Respondent has attempted to sell the disputed domain name both on the Internet at <greatdomains.com> and directly to Complainant. Such behavior by Respondent is not evidence of using the disputed domain name in connection with a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i). See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit).
Respondent has not presented any evidence that it has been or is now currently known as <pixr.com>. Therefore, Respondent has failed to satisfy Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
The mere fact Respondent has registered and held <pixr.com>, a domain name that is a misspelling of Complainant’s famous mark, the Respondent has not demonstrated a legitimate noncommercial or fair use of the disputed domain name. See Encyclopaedia Brittanica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the domain names are misspellings of Complainant's mark).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent has passively held the disputed domain name and has offered to sell the disputed domain name to the public for $14,000. Further, Respondent has offered to lease the disputed domain name to Complainant. Such behavior is evidence Respondent has registered <pixr.com> primarily for the purpose of selling or renting the disputed domain name for valuable consideration in excess of out-of-pocket costs. Therefore, Respondent has regsitered the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(i). See Educational Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith); see also Nabisco Brands Co. v. The Patron Group, D2000-0032 (WIPO Feb. 23, 2000) (finding that the Respondent registered and used the domain names to profit where Respondent offered to sell the domain names for $2,300 per name); see also Universal City Studios, Inc. v. Meeting Point Co., D2000-1245 (WIPO Dec. 7, 2000) (finding bad faith where the Respondent made no use of the domain names except to offer them to sale to the Complainant).
Respondent has registered and used a domain name which is confusingly similar to Complainant’s famous mark. Respondent’s domain name differs from Complainant’s famous mark merely by omitting the “a.” This use constitutes “typosquatting” which has been recognized as a bad faith use of a domain name under Policy ¶ 4(b)(iv). See AltaVista Co. v. Stoneybrook, D2000-0886 (WIPO Oct. 26, 2000) (awarding <wwwalavista.com>, among other misspellings of altavista.com, to Complainant); see also Dow Jones & Co. & Dow Jones, L.P. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (awarding domain names <wwwdowjones.com>, <wwwwsj.com>, <wwwbarrons.com> and <wwwbarronsmag.com> to Complainants).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief be hereby granted.
Accordingly, it is Ordered that the domain name <pixr.com> be transferred from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: March 13, 2002
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