Imagine Holding Company, Llc v Paul John Padilla

WIPO Case No. D2025-0343

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION
Imagine Holding Company, LLC v. Paul John Padilla

Case No. D2025-0343

1. The Parties

The Complainant is Imagine Holding Company, LLC, United States of America (“United States”), represented by Gibson Dunn & Crutcher, LLP, United States.

The Respondent is Paul John Padilla, Philippines.

2. The Domain Name and Registrar

The disputed domain name <imagine-entertainmentllc.com> is registered with GoDaddy.com, LLC (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2025.
On January 29, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On January 29, 2025, the Registrar transmitted by email to the
Center its verification response disclosing registrant and contact information for the disputed domain name
which differed from the named Respondent (Registration Private, Domains By Proxy, LLC) and contact
information in the Complaint. The Center sent an email communication to the Complainant on January 30,
2025, providing the registrant and contact information disclosed by the Registrar, and inviting the
Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on

February 5, 2025.

The Center verified that the Complaint together with the amended Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on February 5, 2025. In accordance with the Rules, paragraph
5, the due date for Response was February 25, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on February 26, 2025.

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The Center appointed Kaya Köklü, Phillip V. Marano, and Marilena Comanescu as the Administrative Panel in this matter on March 10, 2025. 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 is a film and television production company founded in 1985 and headquartered in the
United States.

As of 1992, the Complainant has registered various IMAGINE marks in the United States. Among other registrations, the Complainant is the registered owner of the United States Trademark Registration No. 1,735,409, registration on November 24, 1992, for IMAGINE, claiming protection for film and television production services as protected in class 41.

The Complainant also owns and operates multiple domain names comprising its IMAGINE trademark, such as <imagine-entertainment.com>, which was first registered on January 12, 1996.

The Respondent is reportedly located in the Philippines.

The disputed domain name was registered on September 12, 2024.

According to the case record, the disputed domain name resolves to the Registrar’s parked page displaying Pay-Per-Click (“PPC”) links. However, according to undisputed evidence provided in the Complaint, the disputed domain name has been used multiple times for sending out emails to third parties, mainly authors of books, pretending that these emails have been sent by one of the Complainant’s founders, falsely indicating that the Complainant is interested in making a film adaptation of their books. In these emails, the respective recipients were invited to give a feedback and to share personal contact information.

On November 16 and 21, 2024, the legal counsels of the Complainant sent a cease-and-desist letter to the
Respondent, claiming to immediately cease impersonating the Complainant and its founder. The

Respondent did not reply.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the
Policy, the Rules and any rules and principles of law that it deems applicable.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

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(i)        the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights;

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

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

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel might, where
relevant, accept the provided reasonable factual allegations in the Complaint as true. See section 4.3 of the
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”).

It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views stated therein.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.

The Complainant has shown rights in respect of the IMAGINE mark for the purposes of the Policy. WIPO
Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the IMAGINE mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms and letters, here “entertainment” and “llc”, may bear on assessment of the second and third elements, the Panel finds such additions do not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has

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not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

Even more, the Panel notes that the disputed domain name is confusingly similar to the to the Complainant’s IMAGINE mark and almost identical to its officially used domain name <imagine-entertainment.com>, which per se results in a risk of implied affiliation. Bearing also in mind that the disputed domain name has already been used by the Respondent to mislead third parties in a false belief that emails sent from the disputed

domain name originate from the Complainant and its founder, the Panel has no doubt that the Respondent’s
intent is to impersonate the Complainant for illegal activities like phishing, which in view of the Panel can

never confer rights or legitimate interests upon the Respondent. WIPO Overview 3.0, section 2.13.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

In the present case, the Panel finds that the Respondent must have had the Complainant and its IMAGINE mark in mind when registering the disputed domain name, particularly considering the inherently misleading composition of the disputed domain name, which comprises the Complainant’s IMAGINE mark in its entirety and is also almost identical to the Complainant’s officially used domain name <imagine-entertainment.com>. It is obvious to the Panel that the Respondent has deliberately chosen the disputed domain name to target

the Complainant.

Even though the disputed domain name resolves to the Registrar’s parked page displaying some PPC links, the Panel notes the ongoing threat of the inherently misleading disputed domain name to the Complainant, since the disputed domain name has already been used by the Respondent multiple times to mislead third parties in a false belief that emails sent from the disputed domain name originate from the Complainant and/or one of its founders. The use of the disputed domain name to send fraudulent phishing emails to third parties impersonating one of the founders of the Complainant is a per se illegitimate if not illegal activity that can never confer rights or legitimate interests on a respondent, and moreover such behaviour is manifestly considered evidence of bad faith use. WIPO Overview 3.0, section 3.4.

In the Panel’s view, the Respondent’s failure to respond to the Complainant’s cease-and-desist letter and the in bad faith.

All in all, the Panel finds that all these circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. In fact, the Panel is convinced that this is a typical cybersquatting case, which the UDRP was designed to stop.

The Panel finds that the Complainant has established the third element of the Policy.

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7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <imagine-entertainmentllc.com> be transferred to the Complainant.

/Kaya Köklü/ Kaya Köklü Presiding Panelist

/Phillip V. Marano/ Phillip V. Marano Panelist

/Marilena Comanescu/
Marilena Comanescu
Panelist
Date: March 24, 2025