Entertainment company tries to reverse hijack domain name – Domain Name Wire | Domain Name News

Spanish film producer goes after domain name used by publicly traded Chinese cinema operator.

A World Intellectual Property Organization panel has found (pdf) that Wanda Films, S.L. tried to reverse hijack the domain name WandaFilm.com.

The company produces and distributes films in Europe and Latin America for the Spanish speaking market. It uses the domains WandaFilms.com and WandaVision.com (the latter not to be confused with the Disney show of the same name).

WandaFilm.com is owned by a Chinese company that runs a chain of cinemas in that market. Founded in 2005, the company started operating under the name Wanda Film in 2017. It is listed on the Shenzhen Stock Exchange.

The three-person panel found that it was clear the Respondent has rights or legitimate interests in the domain name and didn’t register it in bad faith.

The panel admonished the Complainant for filing a case when it knew the domain was being used in a way that was not cybersquatting. It wrote:

First, the Complainant operates exclusively in the Spanish speaking market, possesses registrations for the Trade Mark in Spain only, and does not have any operations in China.

Secondly, the Respondent operates exclusively in the Chinese speaking market, and does not have any operations in Spain or in the Spanish speaking market.

Thirdly, the Complainant was aware of the Respondent’s long standing use of the Wanda Film name and mark in the Chinese speaking market since 2017.

It points out that the Complainant provided evidence that showed it was aware of the Respondent’s long running use of the name. The panel continued:

In light of the Complainant’s clear knowledge of the Respondent’s rights or legitimate interests in the disputed domain name (WIPO Overview 3.0, section 4.16), the contentions made by the Complainant in the Complaint as set out in Section 5.A. above – namely, that (i) the Respondent “is using the domain name […] to tarnish the goodwill of the Complainant’s trademarks or service marks for the purpose of creating confusion among users and to take advantage of the prestige acquired by the Complainant”; and (ii) “the Respondent activates its website […] to take advantage of the visibility that the Complainant already has and to make users believe that the services provided have the same business origin […]” – are entirely devoid of merit.

This is a case that could better be described as a trademark dispute. The Uniform Domain Name Dispute Resolution Policy (UDRP) is not designed to handle such cases. It’s a bit scary that a sizeable operating company could have its website’s domain targeted in a UDRP.

Sabatellini & Associats, S.L.P. represented the Complainant. Schellenberg Wittmer Ltd. represented the Respondent. The panelists were Sebastion Hughes, Iris Quadrio, and Roger Staub.