WIPO-UDRP Decision D2005-1126

Case numberD2005-1126
ComplainantGener8Xion Entertainment, Inc., Gener8Xion Television, Inc., 8x Entertainment, Inc.
RespondentEXC International AG
PanelistCarson, Ross
Affected Domains 8x.com
StatusClosed
DecisionTransfer
Date of Decision26.12.2005

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

8x Entertainment, Inc., Gener8Xion Television, Inc., Gener8Xion Entertainment, Inc. v. EXC International AG

Case No. D2005-1126

1. The Parties

The Complainants are 8x Entertainment, Inc., Gener8Xion Television, Inc., Gener8Xion Entertainment, Inc., Los Angeles, California, United States of America; represented by Loeb & Loeb, LLP, United States of America.

The Respondent is EXC International AG, Franz Seywald, Gierstergasse, Vienna, Austria.

2. The Domain Name and Registrar

The disputed domain name <8x.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2005. On October 27, 2005, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On October 31, 2005, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 November 8, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November28, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 1, 2005.

The Center appointed Ross Carson as the sole panelist in this matter on December16,2005. 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

Complainant 8X Entertainment, Inc. is the owner, and its sister companies Gener8Xion Television, Inc. and Gener8Xion Entertainment, Inc. are licensees, of the mark 8X with respect to video recordings featuring motion pictures and with respect to the production and distribution of motion pictures. The mark was registered with the United States Patent and Trademark Office pursuant to Registration Number 2,769,548 in 2003, based upon an application filed on April 19, 2000. 8X Entertainment, Inc. also owns a registration of 8X ENTERTAINMENT with an 8X logo, which was registered with the United States Patent and Trademark Office pursuant to Registration Number 2,781,397 in 2003 based upon an application files on June 24, 2000. The registrations remain in full force and effect. True and correct copies of those registration certificates are attached hereto as Annexes 6 and 7 to the Complaint. The mark 8X has been in use for production and distribution of motion pictures since at least as early as March 2001, and has been used on video recordings and packaging since at least as early as May2001.

Complainant, Gener8Xion Entertainment, Inc. acquired ownership of the <8x.com> domain name sometime on or about July 17, 2000.

5. Parties’ Contentions

A. Complainants

Identical or Confusingly Similar

(Policy, paragraph 4(a)(i), Rules, 3(b)(viii), (b)(ix)(1)

Respondent is the registrant of the domain name in dispute <8x.com>. Complainant, 8X Entertainment, Inc., is the owner of United States Registration No. 2,769,548 for the trademark 8X registered in association with video recordings featuring motion pictures and with respect to the production and distribution of motion pictures. Complainant 8X Entertainment, Inc. submits that its sister companies Gener8Xion Television, Inc. and Gener8Xion Entertainment, Inc. are licensees of the trademark 8X. The trademark 8X has been used by Complainants in association with the goods and services in association with which it is registered since 200l.

Complainants submit that the addition of the gTLD “.com” to the trademark 8X does not avoid a finding of confusingly similar. The addition of descriptive or non-distinctive matter to a trademark does not avoid a finding of confusingly similar. NCAA v. Randy Pitkin et al, WIPO Case No. D2000-0903.

Rights or Legitimate Interests

(Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))

Complainants submit that Respondent cannot have any legitimate interest with respect to the <8x.com> domain name because the domain name was unlawfully hijacked. A hijacked domain name must be returned to its rightful owner.

Complainants state that Gener8Xion Entertainment, Inc. acquired the domain name <8x.com> through Network Solutions, Inc. (“Network Solutions”) on July 17, 2000 and the registration fee was paid for ten years. The registration was set to expire on July17,2010. Annex 4 to Complaint. Complainant further submits that without the Complainants’ knowledge or authorization the domain name in dispute was transferred to a different registrar, OnlineNic, Inc., sometime in November 2004. Thereafter, in December 2004, the name of the owner was changed from Gener8Xion Entertainment, Inc. to the name of Respondent.

Complainants state that DialogSelect has a service called Who Was which includes back records of Domain Information. Attached as Annex 4 to Complaint is a copy of a print-out from DialogSelect showing a record from June 23, 2000, that reflects the domain name registrant as Gener8Xion Entertainment, Inc. and indicates that the domain name would not expire until July 17, 2010.

Complainants state that there is another domain name registration archive service available through Whois Source, available at “www.whois.sc”. That service indicates that archive records were made at least twenty-six times during the period November11, 2001 to September 27, 2005. The archive records show that (a) on November 11,2004, the registrar was Network Solutions and the domain name registrant of <8x.com> was Gener8Xion Entertainment, Inc., (b) on November18,2004, the registrar had been changed to OnlineNic, Inc. and the domain name registrant was still Gener8Xion Entertainment, Inc. and (c) on December27,2004 the domain name registrant had been changed to Respondent. Attached as Annex 5 to Complaint is a copy of print-outs from Whois Source showing the history of the hijacking. Complainants submit that none of them authorized the transfer of the <8x.com> domain name from Network Solutions to OnlineNic, Inc. and never authorized a transfer of the domain name in dispute to Respondent.

Complainants further submit that even if the domain name in dispute had not been hijacked, Respondent has no legitimate interest with respect to the domain name. A search in the Saegis database for trademark records of the United States, the European Union, the International Register, and the European countries available in that database has uncovered no applications or registrations by Respondent of any mark that consists of or contains 8X. Further, to the best of Complainants’ knowledge, Respondent is not the owner nor the beneficiary of any trademarks or service marks identical or similar to the domain name in dispute. Complainant further states that Respondent is not related to Complainants, is not a licensee of Complainants, and has not otherwise obtained any authorization to use the 8X trademark.

Complainants submit that this case is unusual because Respondent hijacked the <8x.com> domain name, but has not yet changed the DNS server information and thus has allowed the domain name to continue to point to the computer servers that host the website being used by Complainant and its sister companies. Thus, as of today, a person that visits the domain name in dispute would find promotional materials about Complainants and references to their 8X mark. Attached as Annex 3 to Complaint, is a copy of a print-out made from the <8x.com> website on October 4, 2005, which shows Complainants’ ongoing use of the domain name <8x.com>.

Complainants state that to the best of their knowledge Respondent has not used or made any demonstrable preparations to use the trademark 8X or a name corresponding to 8X in connection with a bona fide offering of goods or services.

The domain name was registered and is being used in bad faith

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

Complainants’ understanding from communications with Network Solutions and OnlineNic, Inc. is that the transfers were accomplished by someone taking control of and using Complainants’ e-mail account gener8Xion@hotmail.com. This e-mail account was specified as the e-mail account of the administrative contact for the domain name in dispute. Complainants have learned that computer “hacking” methods exist to unlawfully determine the passwords to hotmail.com e-mail accounts, such as Complainant’s e-mail account gener8Xion@hotmail.com. Complainants suspect that Respondent unlawfully used a computer “hacking” method or some other unlawful means to determine the password of Complainants’ hotmail.com e-mail account and then change it. However it happened, the fact is that someone unlawfully took control of Complainants’ e-mail account and used it to fraudulently represent to Network Solutions and to OnlineNic, Inc. that Complainants had authorized a transfer of the domain name in dispute, when in fact Complainants had not. ICANN has recently issued warnings about these types of hijackings and issued a report dated July12,2005, entitled “Domain Name Hijacking: Incidents, Threats, Risks and Remedial Actions”. Annex 11 to Complaint.

Complainants submit that the issue of bad faith must be considered in light of “all the circumstances of the case.” Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The circumstances of this case are unusual in that Respondent unlawfully hijacked the < 8x.com> domain name. Unlawful hijacking is on the very end of the spectrum in terms of being a bad faith registration and use. CC Computer Consultants GmbH and WAFA Kunststofftechnik GmbH v. APG Solutions & Technologies, WIPO Case No. D2005-0609; Tuyap Tum Fuarcilik Yapim Anonim Sirketi (Tuyap Fairs and Exhibitions Organization Inc.) v. Tuyap/Kukrumsal.net/Koznet Kurumsal Internet Hizmetleri, WIPO Case No. D2003-0442. In the CC Computer Consultants case, the panel determined that the respondent’s registration of the complainant’s domain name without permission and without changing the content of the website evidenced respondent’s bad faith:

“It is not clear to the Panel exactly how the Respondent technically registered the domain name, but it does seem clear that the registration was irregular, and that it was done without the permission of Complainant. Respondent registered a domain name, which is identical to [Complainant’s] trademark. The domain name directs to websites, which contain information about [complainant] in both English and German. In addition [Complainant’s] trademark is used as a heading on all of he websites. The content of the websites were never changed after Respondent’s registration of the domain name. These facts support the inference that Respondent had actual knowledge of [Complainant’s] rights in the mark when registering the domain name.”

Complainants submit that Respondent must have been aware of Complaints’ 8X trademark registration as the web pages associated with the domain name in dispute has featured the trademark 8X continually from as early as 2001 to today. Attached as Annex 8 to Complaint is a printout from The Way Back Machine showing the dates on which information was archived from <8x.com> and the representative pages archived by The Way Back Machine on October 18, 2000, February 1, 2001, May17,2001, June4, 2002, January 28, 2003 and February 16, 2004.

Complainants submit that the Respondent acquired the domain name in dispute with full knowledge that the domain name was confusingly similar to Complainants’ registered trademarks for or including 8X. ComplainantS further submit that acquiring the domain name of another by unlawful hijacking constitutes registration and use in bad faith. As stated, Complainants did not authorize any transfer of the domain name in dispute to the OnlineNic registrar and did not authorized any transfer of the registration of the domain name in dispute to Respondent.

B Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, Complainants must prove that each of the three following elements is satisfied:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have 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.

Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainants.

Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of or requirement under the Rules or any request from the Panel, the Panel shall draw such inferences there from, as it considers appropriate. The Respondent did not file a Response to the Complaint. By reason of the failure of the Respondent to file a Response, the Panel infers that the Respondent does not contest the proof submitted in the Complaints.

A. Identical or Confusingly Similar

The Complainant 8X Entertainment, Inc. is the owner of the trademark 8X, United States registration No. 2,769,548. The trademark is registered in relation to the goods “video recordings in the field of entertainment featuring motion pictures” and in relation to “entertainment services, namely, production and distribution of motion pictures. The Complainants’ sister companies Gener8Xion Television, Inc. and Gener8Xion Entertainment, Inc. are licensees of the above noted registered trademark and associated trademarks incorporating 8X. The trademark 8X has been in use in commerce in association with the goods and services since 2001 and is still in use. The domain name in dispute <8x.com> contains the whole of the registered trademark together with the non-distinctive phrase “.com” one of the gTLD’s required for registration of a domain name.

The Panel finds that the domain name in dispute is confusingly similar to the registered trademark of the Complainant 8X Entertainment, Inc.

B. Rights or Legitimate Interests

The Respondent has never used or made demonstrable preparations to use the domain name in dispute or a name corresponding to the domain name in dispute in connection with a bona fide offering of goods or services.

The Respondent has not acquired any trademark or service mark rights in the trademark 8X. Respondent has not been licensed by Complainant, 8X Entertainment, Inc. to use a trademark for or including 8X. Respondent has not filed any evidence that Respondent has been commonly known by the domain name. The Respondent has not changed the DNS information in the <8x.com> domain name record and the domain name continues to direct users of the Internet to Complainants’ information.

The Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the domain name in dispute.

C. Registered and Used in Bad Faith

Complainants have established that Complainant Gener8Xion Entertainment, Inc. was the registrant of the domain name in dispute as late as November 8, 2004. Whois Source, Annex 5 to the Complaint. Network Solutions, LLC. was the Registrar of record. The Whois Source record of the domain name in dispute for November18,2004 shows that Gener8Xion Entertainment Inc. is the Registrant and that the new Registrar is OnlineNic, Inc. Complainants never transferred or authorized any other person to change the Registrar for the domain name in dispute. The Whois Source record of the domain name in dispute for December 27, 2004 shows that the name of the Registrant was changed from the Complainant, Gener8Xion Entertainment, Inc., to the Respondent. The Complainants never transferred or authorized the transfer of the domain name in dispute to the Respondent.

Respondent has not submitted any evidence as to how Respondent acquired the domain name in dispute. The unauthorized changing of Registrars and Registrants of domain name occurred without the knowledge or consent of the Complainants. ICANN has recently issued warnings entitled, “Domain Name High Jacking: Incidents, Threats, Risks and Remedial Actions”, dated July 12, 2005. Circumstances evidencing Registration and Use in Bad Faith are set out in paragraph 4(b) of the Policy. The circumstances enumerated in paragraph 4(b) of the Policy are not limiting. Previous panels have held that unauthorized transfers of Registrars and Registrants of a domain name constitutes a circumstance evidencing Registration and Use in Bad Faith. CC Computer Consultants GmbH v. APG Solutions & Technologies, WIPO Case No. D2005-0609.

The web pages associated with the domain name in dispute show the Complaint trademark 8X as well as the corporate names Gener8Xion Entertainment and 8X Entertainment, Inc. Annex 8 and 9 to the Complaint. The Panel infers that the Respondent must have been aware of the Complainant’s 8X Entertainment, Inc.’s 8X trademark prior to the time of transfer of the Registrar and change of the name of the Registrant of the domain name in dispute.

The representatives for the Complainants were unable to serve the Respondent with a hard copy of the Complaint and were unable to contact the Respondent at the e-mail address provided in the Whois contact details. Proof of the attempts to contact the Respondent were provided to the Center.

The fact that Respondent has used false contact information regarding post address,

e-mail address and administrative contact when registering the domain name is also an indication of bad faith.

The Panel finds that the Complainants have proven that the Respondent registered and used the domain name in dispute in bad faith.

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 <8x.com> be transferred to the Complainant Gener8Xion Television, Inc.

Ross Carson
Sole Panelist

Dated: December 28, 2005