The three member panel not only denied the complaint but held that the Complaint amounted to a Reverse Domain Hijacking.
Nice to see the panel looked at the facts and circumstances at the time of the registration of the domain and did not find as other panels have bad faith on the renewal of the domain.
Here is the panel’s findings:
“Cinemas are operated under the name “CINEMACITY” in Lebanon, UAE, Jordan and Syria. These include the largest cinema in Lebanon, which had a market share of 30% in 2009. Cinema City S.A.L. was registered as a company in Lebanon on September 22, 2005 and registered a device consisting primarily of the word CINEMACITY as a trademark in Lebanon on April 17, 2006. Cinema City LLC was registered as a company in UAE on July 14, 2008. Damascus for Cinema and Tourism Company LLC was registered as a company in Syria on March 12, 2009. The turnover of the CINEMACITY group exceeded $12.7 million in 2009 and was forecast to exceed $20 million in 2010. The group has 100 employees.”
“The Domain Name was registered by the Respondent on September 24, 1998. On January 25, 1999, the Domain Name resolved to a web page which displayed a logo containing the name “digimedia” and provided links primarily relating to Internet services. On July 2, 2005, it resolved to a web page which provided a search engine and links to searches on words or phrases primarily relating to films and DVDs. The Domain Name currently resolves to a web page at “www.yeah.com” which displays the name “Yeah!com” and links to pages of sponsored links relating to a variety of categories of goods and services, including DVDs. The page also provides a search facility which can be used to generate links relating to cinemas and films by entering an appropriate search term.”
“An email was sent to the Respondent on August 16, 2009, asking whether the Domain Name was available and what its suggested fee for transferring it would be. The Respondent replied on August 22, 2009, stating that it was not interested in parting with the Domain Name. On November 15, 2009, a further email was sent to the Respondent asking whether the Domain Name was sale. The Respondent replied on November 16, 2009, giving the same answer.”
“The Complaint refers to a trademark registration in Lebanon for a logo consisting primarily of the name CINEMACITY by Cinema City S.A.L. ”
“The Complaint also provides evidence of use of this trademark by Cinema City S.A.L. in Lebanon, by a company called Cinema City LLC in UAE, and by a company called Damascus for Cinema and Tourism Company LLC in Syria, and the Panel would regard the use so demonstrated as sufficient to establish common law rights in the mark.”
“The Panel finds that the Domain Name is confusingly similar to this mark”
“It suffices to state that, quite apart from the points made below, the Complaint as filed fails in limine for lack of evidence that the Complainant has any rights in the mark relied upon.
“The Panel considers that the mere registration and retention of a domain name in good faith do not of themselves confer a right or legitimate interest in respect of it on its registrant for the purposes of the UDRP.”
“The circumstances identified in paragraph 4(c) of the UDRP cover situations where the registrant of the domain name has an independent goodwill, reputation or recognition under the disputed domain name or a corresponding name, or at any rate has invested in preparations which will develop such a goodwill or reputation.”
“In this Panel’s view, these circumstances reflect an underlying concept that, even where a domain name corresponds to a complainant’s mark and even where it was registered and is used in the knowledge that it will interfere with that mark, it will not be regarded as abusive under the UDRP if the registrant has its own entitlement or interest in the domain name because it is known by that name or a corresponding name or has in good faith invested in becoming known by such a name.”
“Although it comprises descriptive elements, the composite phrase “Cinema City” is not a term in ordinary English usage.”
“Although this use has continued over a number of years, the Panel considers that it is most unlikely to have created any independent goodwill, reputation or recognition of the Respondent under this Domain Name. ”
“In all the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name within the meaning of the second condition of the UDRP in its paragraph 4(a)(ii).”
“In this case the Complaint contains no evidence of any use of “Cinema City” as a mark or company name prior to September 2005. ”
“The Domain Name was registered by the Respondent in September 1998. ”
“There is no evidence whatsoever that the Domain Name was registered in bad faith. The third requirement of the UDRP has not been satisfied and the Complaint must therefore be rejected.”
“In the present case, the Complaint correctly identified that the Domain Name was registered in 1998. Given that the earliest date of any registration or use of the mark relied upon in the Complaint was in 2005, the registration of the Domain Name could not have been in bad faith on any interpretation of the facts and cases cited in the Complaint.”
Any reasonable investigation would have revealed that there was a fundamental weakness in the Complainant’s case, in that there was no basis in the Complaint and cases cited therein for alleging that the Domain Name was registered in bad faith.”
“In the light of these observations, the Panel considers it unlikely that this deficiency was overlooked by the Complainant’s counsel and more probable that it was deliberately ignored in framing the Complaint.”
“In all the circumstances, the Panel finds that the Complaint was brought in bad faith, in an attempt at Reverse Domain Name Hijacking.”