Weta Digital Ltd. v. Texas International Property Associates
Case No. D2010-1692
1. The Parties
The Complainant is Weta Digital Ltd., of Wellington, New Zealand, represented by Michael McNeil, United States of America.
The Respondent is Texas International Property Associates of Dallas, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”) is registered with Compana LLC/Budgetnames.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2010. On October 7, 2010, the Center transmitted, by email, to the Registrar a request for registrar verification in connection with the Domain Name. On October 8, 2010, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 October 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 11, 2010. No Response was filed with the Center. The Center issued a Notice of Respondent Default on November 12, 2010.
The Center appointed Tony Willoughby as the sole panelist in this matter on November 19, 2010. 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.
On reading the papers submitted in this case, the Panel found that there were certain assertions in the Complaint, which, while likely to be accurate, were unsupported by any documentary evidence. On November 30, 2010 the Panel issued a procedural order addressed to the Complainant to elicit whether any relevant supporting evidence was available to support the Complainant’s contentions. The Complainant responded on December 3, 2010 providing the supporting evidence requested. The Respondent was given an opportunity to file a submission in response, but did not do so.
On or about December 5, 2010, the Center became aware that the publicly available InterNic information, indicated that the Domain Name was now registered with Fabulous.com and no longer Compana LLC/Budgetnames.com. On December 6, 2010, Fabulous.com confirmed that it had become the Registrar of Record for the Domain Name.1
The original date for the decision was December 3, 2010 and extended by way of the procedural order to December 10, 2010. Regrettably, the Panel was inconvenienced by severe weather conditions and the date for the decision has had to be further extended to at least, December 12, 2010.
The Complainant was incorporated in New Zealand on December 2, 1992. Together with its associated companies the Complainant is world renowned for its work on visual effects for the film industry, having won Oscars for its work in 2001, 2002 and 2003 on The Lord of the Rings trilogy and winning again in 2005 for King Kong and in 2009 for Avatar.
A well-known film industry abbreviation for “effects”, “special effects” or “visual effects” is ‘”fx”.
The Complainant is the registrant of the domain name, , which was first registered on June 10, 1997.
The Complainant is licensed to use the following registered trade mark, namely New Zealand trade mark registration number 735806, filed on September 19, 2005, WETA (word) for goods and services in classes 20, 21, 41 and 42, which is registered in the name of its associated company, Weta Workshop Limited of Wellington New Zealand2.
The Domain Name was registered on May 17, 2005 and is connected to a parking page featuring links to a variety of sites ranging from “female libido” to “protective helmets”.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to a trade mark in which it has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith.
The Respondent has not filed a Response.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Domain Name comprises “weta”, “fx” and the generic “.com” domain suffix.
WETA is a New Zealand registered trade mark of Weta Workshop Limited and “fx’” is a standard film industry abbreviation for “effects”, “special effects” or “visual effects”, the field of activity in which the Complainant has established a significant reputation evidenced by its having won Oscars for its work in 2001, 2002 and 2003 on The Lord of the Rings trilogy, in 2005 for King Kong and in 2009 for Avatar.
Is WETA a trade mark in which the Complainant has rights?
The Complainant has produced the necessary evidence to demonstrate to the satisfaction of the Panel that it has registered trade mark rights in respect of the mark WETA by way of its license from its associated company, Weta Workshop Limited, to use the New Zealand registered trade mark details of which are set out in section 4 above.
However, in the view of the Panel, it is unnecessary for the Complainant to rely upon its registered rights. It is apparent from the evidence before the Panel that, at least 2003, the Complainant had built up a substantial reputation and goodwill in the film industry under and by reference to the name “Weta.” “Weta” is the distinctive element of the name under which the Complainant been trading since the 1990s. The Panel selects the year 2003 simply because the Panel is satisfied that by that year, with its third Oscar win, “Weta” would have been a very well-known name in the film industry. Moreover, since 1997 the Complainant had been using its domain name for its website.
B. Rights or Legitimate Interests
“Weta” is a Maori word given to various species of insects endemic to New Zealand. Had the Respondent’s website solely concerned itself with New Zealand insects (or indeed any other topic justifiably associated with the word/mark “weta”), then, subject to one qualification, discussed below, the Respondent might not have had too much difficulty in demonstrating relevant rights or legitimate interests in respect of the Domain Name.
However, the Domain Name features in addition to the word/mark “Weta” the film industry abbreviation “fx”, the abbreviation for “effects” or “special effects” or “visual effects”, which is precisely the Complainant’s specialist field of activity. Additionally, as previously indicated,, the Domain Name replicates the Complainant’s domain name apart from the generic domain suffix.
In the absence of any alternative explanation from the Respondent (the Respondent has not responded), the Panel is satisfied that the Respondent selected the Domain Name for the trade mark value of the name and with a view to attracting Internet users to its website in the hope and expectation that those visitors would earn for it pay-per-click or other referral income by way of the advertising links.
Although it is true that the New Zealand trade mark registration referred to in section 4 above post-dates registration of the Domain Name, the Panel is satisfied that the Complainant and its associated companies had acquired unregistered trade mark rights long before that date. (See Part 6(A) supra.). In the view of the Panel it is inconceivable that the Respondent would have selected the Domain Name without knowledge of and intent to trade off of the Complainant and its distinguished reputation in the field of visual effects.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
By way of the same reasoning applied in Part 6(B), regarding the Respondent’s lack of rights or legitimate interests in the Domain Name, the Panel is satisfied that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
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, , be transferred to the Complainant. In that regard the Panel notes for the record that the owner of the registered trade marks referred to in section 4 above has given its consent (if any such consent were needed) to the Domain Name being transferred to the Complainant.
Date: December 10, 2010