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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Channel Four Television Corporation v. Rocco Vogel/Film 4 Human Rights Inc

Case No. D2008-1924

1. The Parties

The Complainant is Channel Four Television Corporation of London, United Kingdom of Great Britain and Northern Ireland, represented by Boult Wade Tennant, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Rocco Vogel/Film 4 Human Rights Inc of New York, United States of America.

2. The Domain Name and Registrar

The disputed domain name <film4.com> (the “Domain Name”) is registered with eNom Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2008. On December 17, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name. On December 17, 2008, eNom Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 6, 2009, 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 January 8, 2009 by e-mail and on January 22, 2009 in hardcopy. The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 22, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 11, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 16, 2009.

The Center appointed Warwick Smith as the sole panelist in this matter on March 9, 2009. 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.

In the absence of a Response, the Panel has checked to ensure that the Center has discharged its responsibility under the Rules, paragraph 2(a), to notify the Complaint to the Respondent. The Panel is satisfied that the Center has done so.

4. Factual Background

The Complainant

The following facts are taken from the uncontested statements made in the Complaint, including a signed witness statement provided by the Complainant’s in-house solicitor.

The Complainant is a British media corporation, which broadcasts television and film content throughout the United Kingdom and the Republic of Ireland. It commenced its television broadcasts on “Channel 4” in November 1982.

From 1982 until 1998, the Complainant developed, commissioned co-produced and pre-purchased films for theatrical release, as well as for television broadcast, under a “Film On Four” brand. “Film On Four” was the name of the slot on Channel 4 in which “Film On Four” films were shown.

In 1985, the Complainant established an internal division known as “Film Four International”, which was responsible for promoting and selling films commissioned and/or co-produced by the Complainant. The Complainant registered the word mark FILM FOUR INTERNATIONAL in the United Kingdom on September 13, 1986, and that registered mark covers cinematographic films, video recordings, and recorded television programmes, all in international class 9.

Over the years since 1986, the Complainant has developed an international reputation in the development, funding, and distribution of films under either a “Film on Four” brand, or under its FILM FOUR INTERNATIONAL mark. The Complainant has been involved in the production and distribution of numerous films which have achieved outstanding success, including box office hits such as “Four Weddings and a Funeral”, “The Full Monty”, and “Trainspotting”.

In addition to those commercial successes, the Complainant has been recognized with an award at the Cannes Film Festival, and (in 1994) an international EMMY (Founder’s Award) for “Film on Four”, in recognition of its 12 years’ contribution to the film industry.

The evidence establishes that, by 1997, when the Domain Name was registered, the Complainant had established an international reputation under its “Film on Four” brand and FILM FOUR INTERNATIONAL trademark.

In 1998, the Complainant launched a separate pay film channel called “FilmFour”. At that time, “Film on Four” was renamed “Film4”.

In 2006, the “FilmFour” channel and the Complainant’s film production arm were again re-branded, this time as “Film4”. At or about that time, the Film4 television channel went free-to-air in the United Kingdom and in the Republic of Ireland, and the channel now reaches some 18 million British households.

In addition to its FILM FOUR INTERNATIONAL mark, the Complainant has registered numerous similar trademarks in various countries. These other trademarks include the Community Trademark FILMFOUR, registered in March 2002 in international classes 9, 16, 35, 38, 40, 41, and 42.

According to the Complainant’s solicitor, the Complainant became aware of the registration of the Domain Name in 2006.

The Respondent and the Domain Name the Position prior to October 31, 2008

The Domain Name was initially registered on February 21, 1997.

For some time prior to October 31, 2008, the Domain Name was registered to a Swedish-based corporation called Intership Limited (“Intership”). It is not clear from the evidence whether Internship was the original 1997 registrant. The Complainant notes that Intership appears to be a shipping company, offering accommodation and offshore construction vessels and barges. (The Complainant produced a printout from a website at “www.barges.com”, and the web page (prominently headed “Intership Limited”) does contain material of that kind. It does not hint at any connection with the film industry.) Nevertheless, the Complainant notes that the Domain Name has historically been pointed to a website which appears to be a template World News website. The Complainant produced a page from August 2002 printed from the Wayback Machine at “www.archive.org”. That web page was headed “World news.com”, and it contained a “WorldNews.com”, copyright claim. It contained various short reports on news items from around the world.

After the Complainant had become aware of the registration of the Domain Name, it sent a letter (on December 1, 2006) to Intership, referring to the Complainant’s registered trademarks (including the Complainant’s Community Trademark FILM FOUR), and alleging that the website then being operated at the Domain Name was seeking to associate itself with the Complainant’s brand. The letter asserted that the Complainant had good grounds for filing a complaint under the Policy, but would prefer to explore a sensible commercial solution. The letter was sent to Intership by courier, with a copy to the then-listed administrative contact for the Domain Name, Vanilla Limited. The Complainant produced a copy of an email which it received from a Mr. Ripley of World News Network on April 13, 2007, apparently in response to the Complainant’s December 2006 letter. Mr. Ripley advised that the Domain Name was not for sale, but that the owners would be interested in a joint venture/sponsorship arrangement “whereby they could contribute up to USD 10 million in development and advertising costs for this online movie portal”.

The Complainant’s solicitor referred in his witness statement to a telephone call he received from Mr. Ripley on May 3, 2008, in the course of which Mr. Ripley made an offer to sell the Domain Name to the Complainant for USD 5 million.

The Complainant did not explain the long gaps in the communications between the parties (e.g. the delay between the December 1, 2006 letter from the Complainant and the email received from Mr. Ripley on April 13, 2007, and the apparent inactivity between April 2007 and Mr. Ripley’s telephone call on May 3, 2008).

The Complainant produced an extract from the website to which the Domain Name resolved on October 24, 2008. The web page was headed “World Movies”, and contained numerous click-on links generally relating to the movie industry. This page contained a 2005 copyright claim by World News Network.

On October 28, 2008, the Complainant’s representatives sent a detailed cease and desist letter to Intership, asserting their client’s various trademark rights, and demanding the transfer of the Domain Name to the Complainant. The cease and desist letter recorded the fact that Mr. Ripley had suggested in his May 2008 telephone call that the Domain Name could be sold to the Complainant for USD 5 million.

The cease and desist letter also referred to archived pages from the website to which the Domain Name had resolved. With the cease and desist letter, the Complainant’s representatives provided copies of archived pages from the website to which the Domain Name resolved as at April 10, 2005. Those pages featured numerous movie-related news items, including a number of items related to Bollywood movies.

The October 28, 2008 cease and desist letter was returned undelivered by the courier company, with the advice that Intership could not be located at the given address. However, the letter had also been sent by email to Mr. Ripley at his email address, and the emailed copy of the letter appears to have reached him. On November 6, 2008, the Complainant’s representative received an email from Ms. Periasamy, advising that Intership was no longer the owner of the Domain Name. The email advised that the contact for the new owner was “Film 4 Human Rights Inc/Rocco Vogel”, and it provided contact details corresponding with those which now appear in the WhoIs particulars for the Domain Name.

The WhoIs particulars for the Domain Name show that the Domain Name information was updated on October 31, 2008. There were further changes in the WhoIs particulars not long after that date. As at November 10, 2008, the WhoIs particulars showed the registrant as “Film 4 Human Rights Inc/Rocco Vogel”, but by December 15, 2008 the reference to “Film 4 Human Rights Inc” had been removed, and Mr. Vogel alone was listed as the registrant. Subsequently, the Registrar advised the Center that ‘Film 4 Human Rights Inc” has been added back into the registrant particulars.

The Complainant has produced the results of searches it ran through the United States Securities & Exchange Commission’s EDGAR company search database, in which the Complainant sought to establish the existence or otherwise of a corporation called “Film 4 Human Rights Inc”. The search results printouts produced by the Complainant showed no evidence of the existence of any legal entity called “Film 4 Human Rights Inc”.

The Position after October 31, 2008 – the Respondent Mr. Rocco Vogel

The Complainant produced an extract from the website to which the Domain Name has resolved since October 31, 2008 (the “Respondent’s website”). It featured a short-form biography for Mr. Vogel, in which he was described as a film director, producer, editor, and screen writer, who had studied film making in London, New York, and Paris. According to the biography, Mr. Vogel’s portfolio includes projects directed in London, Rome, New York and New Delhi. The biography stated that, after spending some time shooting low budget movie videos in New York, Mr. Vogel was hired full time by World News Network in 2005.

The Complainant has conducted Internet checks which it says show that Mr. Vogel is associated with Intership. First, the Complainant has produced a web page from the website at “www.soulcalibre.com”, printed on November 10, 2008, containing a photograph and short form biography for Rocco Vogel. WhoIs particulars for the domain name <soulcalibre.com> show the registrant contact as “Vanilla Limited Minakumari Periasamy”, of Malaysia.

An undated extract from the “www.soulcalibre.com” website, again providing biography details for Mr. Vogel, contained a list of references for him. The list included “World News Inc.” and “Mr. Ripley”.

The Complainant produced a copy of the Respondent’s website printed on November 4, 2008. It prominently featured the heading “film 4 human rights”, immediately above the subheadings “music videos”, “short films”, and “documentary”. A photograph and bio were shown for Mr. Vogel.

The Complainant says that, prior to the receipt of its representatives’ October 28, 2008 cease and desist letter by the then administrative contact for the Domain Name, there is no evidence that Mr. Vogel had any interest in releasing videos or other media under the names “Film4”, “Film 4 Human Rights Inc”, or any similar expression.

The Panel visited the Respondent’s website on March 22, 2009. It was headed “Rocco Web Reel”, and appeared to be generally in the same form as it was in on November 4, 2008. But in addition to the “Bio” page, there was a link to a “CV” page, which was said to be “under construction”.

Additional Evidence Produced by the Complainant

The Complainant says that it has had no association with Intership, or with the Respondent. It says that it has never granted either party any right to use a domain name which is confusingly similar to the Complainant’s marks.

The Complainant referred to a number of panel decisions under the Policy, in which the former administrative contact for the Domain Name, Vanilla Limited, was named as respondent.

5. Parties’ Contentions

A. Complainant

The Complainant contends:

1. The Domain Name is confusingly similar to the Complainant’s FILM FOUR INTERNATIONAL, FILM ON FOUR and FILM4 trademarks. The essential feature of both the Complainant’s trademarks and the Domain Name, is the combination of the words “film” and “four”. It does not make a material difference that the Domain Name appears with the numeral “4” rather than the word “four”.

2. The Respondent has no rights or legitimate interests in respect of the Domain Name, having regard to the following facts:

(i) The Domain Name was re-registered in the name of the Respondent on October 31, 2008, directly as a result of Intership receiving notice from the Complainant that it was facing a complaint under the Policy.

(ii) Intership does not appear to have had any connection with film or media services. Notwithstanding that apparent lack of interest, Intership has historically redirected visitors to websites established at the Domain Name to a template World News website, which again had no particular connection to the film or media industry, and displayed no apparent use of the expressions “Film Four”, “film4”, or any similar name.

(iii) There is no evidence of the existence of any legal entity called “Film 4 Human Rights Inc”.

(iv) Having regard to the facts as stated, the Respondent has no genuine interest or legitimate rights in the Domain Name or in the expression “Film 4 Human Rights”. The facts clearly show that the Respondent registered the Domain Name as part of an attempt by Intership to avoid an administrative proceeding under the Policy.

(v) The Complainant has no association with either the Respondent or Intership, and has not granted either of them any right to use a domain name which is confusingly similar to the Complainant’s marks.

3. The Domain Name was registered and has been used by the Respondent in bad faith, having regard to the following:

(i) Intership would have been aware of the Complainant’s established reputation in its FILM FOUR INTERNATIONAL and FILM ON FOUR marks.

(ii) Intership would have acquired the Domain Name with the intention of selling, renting, or otherwise transferring the Domain Name to the Complainant for valuable consideration in excess of its out-of-pocket expenses.

(iii) Having regard to the highly distinctive nature of the Complainant’s marks, there is no likelihood that the Respondent or Intership randomly selected the Domain Name. The Domain Name was selected with knowledge of the Complainant’s reputation, and with the intention of future commercial gain.

(iv) The Respondent’s connection with Vanilla Limited, a known cybersquatter, provides further evidence that the Respondent has acted in bad faith.

(v) Intership anticipated that the Complainant would want to acquire the Domain Name, and obtained the Domain Name in order to prevent the Complainant from doing so. In the meantime, Intership aimed to attract people looking for the Complainant’s website, to the website to which the Domain Name then resolved, in order to generate pay-per-click revenue and/or in order to attract users and extort a higher price for the Domain Name from the Complainant. Nowhere on the websites to which the Domain Name resolved prior to October 31, 2008 was there any legitimate use of the expressions “filmfour” or “film4”, or of any similar name.

(vi) The bad faith intentions of Intership are further evidenced by its attempt to sell the Domain Name to the Complainant for an extortionate amount of money.

(vii) Instead of responding substantively to the cease and desist letter from the Complainant’s representative, Intership immediately re-registered the Domain Name to an associate. That was not the act of a good faith registrant.

(viii) The Respondent’s sole purpose in registering/acquiring the Domain Name was to assist Intership in avoiding a complaint under the Policy. The Respondent’s connection with Intership and with the former administrative contact, provides sufficient evidence of this, and shows that the Respondent and Intership were willing participants in an attempt to avoid the UDRP process. Having regard to the foregoing, the Respondent is part of the same bad faith as Intership.

(ix) The use of the Domain Name by the Respondent is in bad faith, as he would have been aware of the Complainant’s rights at the time he acquired and commenced use the Domain Name on October 31, 2008.

B. Respondent

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

6. Discussion and Findings

A. What the Complainant Must Prove Under the Policy - General

Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:

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

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

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

Paragraph 15(a) of the Rules requires the 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”.

Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g., by failing to file a response), as the panel considers appropriate.

B. Identical or Confusingly Similar

The Complainant has sufficiently proved this part of the Complaint. It has proved that it is the registered proprietor in the United Kingdom of the mark FILM FOUR INTERNATIONAL, and that it is the proprietor of the Community Trademark FILMFOUR.

The “.com” is not taken into account in the comparison, and the only difference between the Domain Name and the Complainant’s registered Community Trademark is the difference between “four” and “4”. Those two expressions convey precisely the same meaning, and the essential feature of the Complainant’s Community Trademark, the combination of “film” and “four”, is reproduced exactly in the Domain Name (apart from the inconsequential difference between “four” and “4”).

The Panel therefore concludes that the Domain Name is confusingly similar to the Complainant’s FILMFOUR Community Trademark.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:

(i) before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or

(iii) where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The consensus view of WIPO panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the Center’s online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:

“A Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP”.

In this case, the Complainant has not authorized the Respondent to register any domain name which is identical or confusingly similar to its marks, including in particular its Community Trademark FILMFOUR.

There is no persuasive evidence to suggest that the Respondent, or any business or organization operated by it, is or has been commonly known by the name “Film4”. Paragraph 4(c)(ii) of the Policy therefore cannot have any application.

Nor does it appear that paragraph 4(c)(iii) of the Policy could provide a basis for the Respondent to claim a right or legitimate interest in the Domain Name. The Respondent’s website appears to be commercial in nature, and could not be described as a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain.

Those facts provide sufficient prima facie proof that the Respondent has no rights or legitimate interests in respect of the Domain Name, so the evidentiary burden shifts to the Respondent to furnish proof that he has such a right or interest. The Respondent has failed to submit any Response, so this part of the Complaint must also be decided in the Complainant’s favor.

For completeness, the Panel adds that, for the reasons which are set out in section 6D of this Decision, the Respondent could not (on the available evidence) have brought itself within the safe harbor protection of paragraph 4(c)(i) of the Policy. The Panel’s findings of bad faith, set out below, preclude any possibility of a finding that the Respondent has used the Domain Name in connection with any bona fide offering of goods or services.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:

(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or

(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.

The Panel also finds this part of the Complaint proved. The Panel has reached that view having regard to the following considerations.

(i) The Complainant must prove both bad faith registration and bad faith use (Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003).

(ii) As for bad faith registration in this case, the relevant date is not the original 1997 registration date, but the date of acquisition (registration) by the Respondent, on or about October 31, 2008. (See the decision of this Panel in Certipost NV v. Virtual Point Inc, WIPO Case No. D2008-1183, and the cases referred to at page 11 of that decision).

(iii) On the available evidence, there can be no reasonable doubt that the Respondent knew of the Complainant and its FILM FOUR mark (or its “Film4” branding) when he acquired/registered the Domain Name. First, the Respondent clearly had close links with Intership, or at least with those who were operating the website at the Domain Name on Intership’s behalf. Mr. Ripley, who communicated with the Complainant on behalf of Intership, was listed as one of Mr. Vogel’s referees, and the previous administrative contact for the Domain Name, Vanilla Limited, was the registrant of a domain name which pointed to a website (www.soulcalibre.com) which prominently featured Mr. Vogel. Secondly, the “Bio” notes on the Respondent’s website make it clear that the Respondent is involved in the film-making industry, and has studied and worked in London. Given the extent of the Complainant’s reputation in the film industry in the United Kingdom, the Respondent could hardly have failed to be aware of the Complainant and its “Film Four” (or “Film4”) brand.

(iv) The next question is why the Respondent chose to register/acquire the Domain Name. It appears that Mr. Vogel was already featured on an existing website (“www.soulcalibre.com”), and in the period of nearly five months since the Respondent acquired the Domain Name it has done nothing with it other than uploading Mr. Vogel’s Bio. Particularly in light of Respondent’s knowledge of Complainant and its “Film4” branding, there appears to have been no apparent (legitimate) reason for either Intership or the Respondent to use the expression “Film4” in a domain name. (Even if Intership and/or Mr. Vogel have been involved in the production of music videos, documentaries, or short films (as appears to have been the case with Mr. Vogel), that does not sufficiently explain their rather particular choice of “Film4”, the Complainant’s brand, as an address for their websites.)

In the absence of any response, the Panel can only sensibly conclude that both Intership and Mr. Vogel had the intention of trading off the Complainant’s goodwill in its FILM FOUR INTERNATIONAL and / or FILM FOUR marks. In the case of Intership, it may or may not have registered the Domain Name in bad faith: it is not clear whether Intership was the original 1997 registrant, or whether it acquired the Domain Name at some later time. The earliest evidence that was produced (from August 2002) shows that the Domain Name was then pointed to a news-related website operated by WorldNews.com. It was not until April 2005 that the evidence shows a change of focus to movie-related items. However, it is clear that Intership was well aware of the Complainant and its goodwill in the expression “Film Four”, well before October 2008. In April 2007, Mr. Ripley had expressed interest in some sort of joint venture with the Complainant for the use of the Domain Name, and in May 2008 he offered to sell the Domain Name to the Complainant for USD $5,000,000. On the evidence produced, the Panel is satisfied that, immediately prior to October 31, 2008, Intership / WorldNews.com / Mr. Ripley were all well aware of the confusing similarity between the Domain Name and the Complainant’s marks, and knew that some Internet users looking for websites associated with the Complainant would be likely to mistakenly arrive at the website at the Domain Name. In the absence of any Response, the Panel is satisfied that those parties intended that that should occur. The Panel is also satisfied that the intention of those who were then responsible for the operation of the Domain Name was to profit commercially from that confusion (whether by attracting increased Internet traffic to their (commercial) website, or to provoke an offer from the Complainant to purchase the Domain Name at a price which would provide Intership or WorldNews.com or Mr. Ripley with a profit).

(v) Within a few days after Mr. Ripley’s receipt of the October 28, 2008 cease and desist letter, Intership transferred the Domain Name to an associate, the Respondent.

(vi) In the absence of a Response, and having regard to:

(a) the short timeframe between Mr. Ripley’s receipt of the cease and desist letter and the transfer of the Domain Name to the Respondent; and

(b) the proved connection between Mr. Vogel, Mr. Ripley, and Vanilla Limited, and;

(c) Mr. Vogel’s apparent failure to make any significant use of the Domain Name since he acquired it on October 31, 2008,

the Panel accepts the Complainant’s submission that the Respondent was a party to an attempt by Intership to defeat any complaint which the Complainant might file under the Policy, by participating in the transfer of the Domain Name into its own name. It is not clear precisely how the Respondent and/or the Intership interests intended to exploit their continued holding of the Domain Name (through the Respondent), but it seems clear that it would have involved a commercial use of the Domain Name, featuring Mr. Vogel and his activities (so continuing to trade off the Complainant’s goodwill in its marks), and / or another attempt to sell the Domain Name to the Complainant at a profit. In either event, the October 31, 2008 registration by the Respondent must have been a bad faith registration (under paragraph 4(b)(iv) or paragraph 4(b)(i) of the Policy).

(vii) As for bad faith use by the Respondent, the Panel is satisfied that the Respondent’s present (almost passive) holding of the Domain Name qualifies as a bad faith use under the Policy. To the extent that a website might be genuinely under construction at the Domain Name, it is apparent that it is or will be a commercial website, through which the Respondent will derive commercial gain (whether directly, or indirectly by promoting his music videos, short films, and documentaries). The Panel has found that the Respondent was at all material times aware of the Complainant and the confusing similarity between the Domain Name and the Complainant’s marks, and the Panel finds that the Respondent intended (and still intends) to attract to the Respondent’s website site visitors looking for a website associated with the Complainant. Those findings would be sufficient to establish bad faith registration and use under paragraph 4(b)(iv) of the Policy. If the Respondent has no genuine intention to establish a fully operational website at the Domain Name, the only sensible inference the Panel can draw is that the Respondent is holding the Domain Name, whether for Intership interests or on his own account, with a view to provoking an offer to purchase the Domain Name by the Complainant at a price which will yield a profit for the Respondent (or, as the case may be, for Intership / WorldNews.com / Mr. Ripley). In that case too, the registration and use would have to be a bad faith registration and use (this time, under paragraph 4(b)(i) of the Policy).

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders the transfer of the Domain Name <film4.com> to the Complainant.

Warwick Smith
Sole Panelist

Dated: March 23, 2009

 

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