Panavision International, L.P. and Panavision Inc. v asta young

WIPO Case No. D2024-4093

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Panavision International, L.P. and Panavision Inc. v. asta young

Case No. D2024-4093

1. The Parties

The Complainants are Panavision International, L.P. and Panavision Inc., United States of America (“United

States”), represented by Bryan Cave Leighton Paisner LLP, United States.

The Respondent is asta young, France.

2. The Domain Name and Registrar

The disputed domain name <panavision.cam> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2024. On October 7, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 7, 2024, 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 (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainants on October 8, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on October 12, 2024.

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 October 16, 2024. In accordance with the Rules, paragraph
5, the due date for Response was November 5, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on November 6, 2024.

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The Center appointed Petra Pecar as the sole panelist in this matter on November 11, 2024. 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 Complainants, Panavision International, L.P. (hereinafter referred as “First Complainant”) and recognized providers of cinematographic and digital imaging equipment and services. Established in the United States in 1954, the Complainants have built a reputation as trusted partners to major studios, networks, and independent producers by offering high-quality cameras, lenses, lighting, and accessories. The Complainants' equipment has played a pivotal role in numerous acclaimed films and series, resulting in substantial industry goodwill and numerous prestigious awards.

The First Complainant is the owner of several registrations for PANAVISION worldwide, including the following:

- European Union Registration No. 000153668 for word mark PANAVISION registered in Classes 9, 11, 41, and 42 on February 10, 2000;

- International Registration No. 1430590 for word mark PANAVISION registered in Class 25 on

September 14, 2018, designated among others in France and European Union; and

- National French Registration No. 1686998 for word mark PANAVISION registered in Classes 9, 11, 38, and 42 on January 17, 1992.

The Complainants have maintained an active online presence since at least 1998 through their domain
name, <panavision.com>, where they promote digital imaging and cinematographic equipment under the
PANAVISION marks. The Complainants also own numerous related domain names, including
<panavision.ca>, <panavision.camera>, <panavisions.com>, <panavizion.com>, <panavsion.com>,
<panavisioncamera.com>, <panavisionvideo.com>, <panavisionlcd.com>, <panavisionimaging.com>,
<panavisioninc.com>, <panavisiontt.com>, and <paniavision.com>.

The disputed domain name was registered on June 25, 2024, and at the time of the Complaint filing it revolved to a parked webpage.

The Respondent is an individual from France.

5. Parties’ Contentions

A. Complainants

The Complainants contend that they have satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainants contend that the Respondent’s disputed domain name fully incorporates and is confusingly similar to their PANAVISION marks. The addition of the generic Top-Level Domain (“gTLD”), “.cam” does not reduce confusion, as such suffixes are typically disregarded. Given that suffix “.cam” aligns

with cameras and imaging equipment, it causes confusion tied to the Complainants' business. The
Respondent’s use of the disputed domain name appears to deliberately mislead users by mimicking the
Complainants' brand, causing potential consumer confusion and exploiting their reputation.

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The Complainants assert that the Respondent lacks legitimate rights or interests in the disputed domain name <panavision.cam>. The Respondent’s unauthorized use of the well-known PANAVISION marks occurred without any association or licensing from the Complainants. The Respondent was not commonly known by the disputed domain name. By incorporating the PANAVISION marks with the descriptive suffix “.cam,“ the Respondent misled consumers, demonstrating illegitimate use.

The Complainants contend that the Respondent registered and used the disputed domain in bad faith, as indicated by the Respondent’s lack of any connection to the Complainants, engagement in typosquatting by altering the gTLD extension, absence of rights or legitimate interests, and use of a descriptive gTLD “.cam” intended to create confusion and benefit from the Complainants’ established reputation. Additionally, the Respondent’s passive holding of the disputed domain name and use of a privacy shield to conceal identity reflect a clear intent to mislead users and gain commercially at the Complainants’ expense.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

6.1. Procedural Issues

6.1.1. Consolidation of Multiple Complainants

Pursuant to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition domain name affects both Complainants, and they therefore have a common grievance against the Respondent. Therefore, the Panel considers that it is fair and equitable and procedurally efficient under the circumstances of the case to permit the consolidation, as the Complainants have a specific common grievance against the Respondent, since their rights are affected by the disputed domain name. Consequently, the Panel allows the Complainants to proceed jointly with their Complaint.

(“WIPO Overview 3.0”), section 4.11.1, the consolidation of multiple complainants filing a joint complaint
against one or more respondents is subject to the discretion of the appointed panel. In assessing whether a
complaint filed by multiple complainants may be brought against one or more respondents, the appointed
panel should consider whether (i) the complainants have a specific common grievance against the
respondent, or the respondent has engaged in common conduct that has affected the complainants in a
similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation. The Panel
finds that the disputed domain name targets PANAVISION marks owned by the First Complainant. The First
6.2. Findings

As the Respondent did not file a Response to the Complainants’ contentions, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainants.

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in
accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”, as
indicated in paragraph 15(a) of the Rules.

Under paragraph 4(a) of the Policy, the Complainants are required to prove each of the following three elements:

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

(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 by the Respondent in bad faith.

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6.3. Substantive Issues

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 Complainants’ trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.

The Complainants have shown rights in respect of a 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 identical to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Furthermore, it is well accepted practice by UDRP panels that a gTLD, such as “.cam”, is typically ignored when assessing whether a domain name is identical or confusingly similar to a trademark (see section 1.11.1 of the WIPO Overview 3.0). For that reason, the Panel accepts not to take gTLD “.cam” when assessing confusing similarity of the disputed domain name.

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 Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainants’ 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.

According to the Complainants, there is no association or connection between the Respondent and the register any domain name incorporating the Complainants’ PANAVISION marks. Furthermore, the Respondent has not responded to the Complaint, failing to present any information or factors that could justify prior rights or legitimate interests in the disputed domain name.

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.

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The disputed domain name was registered at least 32 years later in respect of the Complaints’ PANAVISION marks. The Panel finds that is improbable that the Respondent was not aware of the PANAVISION mark since a quick Internet search would reveal the existence of the PANAVISION mark.

The distinctiveness and fame of the PANAVISION marks are well established and undisputed. Neither the PANAVISION mark can be found in the dictionary. The PANAVISION mark in particular has developed strong secondary meaning because of the Complainants’ long period of exclusive use of the mark and its status as a major supplier of photographic equipment. According to the above, the Panel finds that the PANAVISION marks have certain reputation particularly within the photographic equipment field. The Panel considers that the composition of the disputed domain name itself (including the selected gTLD “.cam”, which can be perceived as an abbreviation of “camera”) shows that the Respondent likely knew of the Complainants’ PANAVISION mark, and registered due to its identity with the Complainants’ mark.

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.

Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. The disputed domain name displays an “Index of /“ page, indicating that the server does not have an active homepage or is configured to list directory contents. The disputed domain

name webpage shows a directory structure with one folder named cgi-bin, which suggests that the site may
not have been fully set up or is misconfigured. WIPO Overview 3.0, section 3.3. Having reviewed the
available record, the Panel notes the reputation of the Complainants’ PANAVISION mark, and the
composition of the disputed domain name, and finds that in the circumstances of this case the passive

holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

The Panel finds that the Complainants have established the third element of the Policy.

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 <panavision.cam> be transferred to the Complainants.

/Petra Pecar/ Petra Pecar Sole Panelist Date: November 25, 2024