A Spanish film company called Wanda Films attempted to get the domain WandaFilm.com via the UDRP process. The Respondent is a Chinese film distribution company doing business in China where it was founded in 2005.
According to the UDRP, the Complainant’s Website is only available in Spanish and targets only the Spanish speaking market, while the Respondent is domiciled in China and targets the Chinese market, and the Respondent’s Website is only available in Chinese.
It was clear that the domain does not interfere with the ability of the Complainant to do business in Spain. Additionally, 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.
A three-member WIPO panel found that the domain WandaFilm.com was registered and used in good faith, ordering it to remain with the Respondent. They also found the Complainant guilty of engaging in Reverse Domain Name Hijacking.
ARBITRATION AND MEDIATION CENTER – ADMINISTRATIVE PANEL DECISION
Wanda Films, S.L. v. 张霖 (Zhang Lin), 万达电影股份有限公司
(wandadianyinggufenyouxiangongsi)Case No. D2024-2526
1. The Parties
The Complainant is Wanda Films, S.L., Spain, represented by Sabatellini & Associats, S.L.P., Spain.
The Respondent is 张霖 (Zhang Lin), 万达电影股份有限公司 (wandadianyinggufenyouxiangongsi), China,
represented by Schellenberg Wittmer Ltd., Switzerland.2. The Domain Name and Registrar
The disputed domain name wandafilm.com is registered with DNSPod, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June
20, 2024. On June 21, 2024, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On June 26, 2024, 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.On June 26, 2024, the Center informed the parties in Chinese and English, that the language of the
registration agreement for the disputed domain name is Chinese. On June 27, 2024, the Complainant
submitted a request that English be the language of the proceeding. The Respondent did not submit any
submissions on the language of the proceeding.The Center verified that the Complaint together with 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 and 4, the Center formally notified the Respondent in Chinese
and English of the Complaint, and the proceeding commenced on July 2, 2024. In accordance with the
Rules, paragraph 5, the due date for Response was July 22, 2024. On July 15, 2024, the Respondent sent
an email to the Center requesting a four-day extension. On July 15, 2024, the Center granted the four-day
extension to the Respondent in accordance with the paragraph 5(b) of the Rules, and the due date for
Response was extended to July 26, 2024. The Response was filed in English with the Center July 26, 2024.The Center appointed Sebastian M.W. Hughes, Iris Quadrio, and Roger Staub as panelists in this matter on
August 16, 2024. The Panel finds that it was properly constituted. Each member of 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.Noting the Response is filed in English, the Panel considers that the Parties have effectively agreed on
English to be the language of the proceeding. Therefore, the Panel determines under paragraph 11(a) of the
Rules that the language of the proceeding shall be English.4. Factual Background
A. Complainant
The Complainant is a company incorporated in Spain in 1992, specialising in the production and distribution
of Spanish, Latin American, and European films for the Spanish speaking market, under the trade mark
WANDA FILMS (the “Trade Mark”).The Complainant is the owner of three registrations for the Trade Mark in Spain, the earliest (word mark)
registration No. M1745034, with a registration date of April 16, 1994.The Complainant is also the owner of the domain names wandafilms.com and wandavision.com,
registered on July 4, 2002 and July 26, 2002, respectively, and each resolved to the same Spanish language
website promoting the Complainant’s business (the “Complainant’s Website”).The Complainant is also the owner of the domain name wandavision.es, registered on February 28, 2024,
and which is not, at the date of this Decision, resolved to any active website.B. Respondent
The Respondent is a company incorporated in China in 2005, listed on the Shenzhen Stock Exchange since
2015, and operating under the name Wanda Film (万达电影) since 2017.The Respondent is part of the Dalian Wanda Group, a large Chinese corporate group established in 1988,
and is the one of the largest cinema operators in China. The Respondent is authorised by the Dalian Wanda
Group to use the Wanda Film name and trade mark in respect of its cinema and film investment, production
and distribution business.Prior to its name change, in 2017, to Wanda Film Holding Company Limited (万达电影股份有限公司), the
Respondent operated its Chinese language website to promote its business at “www.wandacinemas.com”;
and, since 2017, it has used the disputed domain name to promote its business via the same, Chinese
language website targeting the Chinese speaking market, at “www.wandafilm.com” (the “Respondent’s
Website”).The Respondent’s two applications filed in 2022 to register the trade mark WANDA FILM in China have been
refused by the Chinese Trade Marks Office. The Respondent has filed a pending application to review the
second of its trade mark applications, which is still pending. However, the Panel notes the China National
Intellectual Property Administration’s website shows that the Respondent has two valid registrations inChina for the trade mark WANDA – registration No. 5249869 , with a registration date of July 14, 2009; and
registration No. 11389926 , with a registration date of June 14, 2014.C. The Disputed Domain Name
The disputed domain name was registered on September 28, 2005.
D. Use of the Disputed Domain Name
The disputed domain name is used to promote the Respondent’s business via the Respondent’s Website.
5. Parties’ Contentions
A. Complainant
The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer
of the disputed domain name.Notably, the Complainant contends that:
(i) The Respondent is using the disputed domain name in an attempt to tarnish the goodwill of the Trade
Mark for the purpose of creating confusion among users and to take advantage of the prestige acquired by
the Complainant; and(ii) The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the
Respondent’s Website, creating the likelihood of confusion with the Trade Mark as to the source,
sponsorship, affiliation, or endorsement of the Respondent’s Website or the services listed on the
Respondent’s Website.B. Respondent
The Respondent contends that the Complainant has failed to satisfy each of the requisite elements under the
Policy.Notably, the Respondent contends that:
(i) As the Complainant’s three registrations for the Trade Mark are restricted to Spain, whereas the
Respondent is domiciled in China and operates the Respondent’s Website exclusively in Chinese, the
Complainant cannot assert any of its rights in the Trade Mark in relation to the disputed domain name, under
the Policy;(ii) The Respondent was not aware of the Complainant, its business and the Trade Mark until the
commencement of this proceeding;(iii) The Complainant’s Website is only available in Spanish and targets only the Spanish speaking market;
(iv) The Respondent is domiciled in China and targets the Chinese market, and the Respondent’s Website
is only available in Chinese; and(v) Although the Complainant and the Respondent offer similar services, they do so in different parts of
the world and in different languages.6. Discussion and Findings
A. Identical or Confusingly Similar
It is well accepted that the first element functions primarily as a standing requirement. The standing (or
threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between
the Complainant’s trade mark and the disputed domain name. WIPO Overview of WIPO Panel Views on
Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. It is also well-established that
the jurisdiction where the Complainant’s trade mark is registered is not a relevant consideration in respect of
the first element, although it may be relevant to the second and third elements. WIPO Overview 3.0, section
1.1.2.The Complainant has shown rights in respect of a trade mark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.Disregarding the letter “s”, the entirety of the mark is reproduced within the disputed domain name.
Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.7.The Panel finds the first element of the Policy has been established.
B. Rights or Legitimate Interests
The Panel finds that, before notice to the Respondent of the dispute, the Respondent has used the disputed
domain name in connection with a bona fide offering of services. WIPO Overview 3.0, section 2.2.The Panel also finds that the Respondent has been commonly known by the disputed domain name.
WIPO Overview 3.0, section 2.3.The Panel further notes that the Respondent has valid registered trade mark rights for the trade mark
WANDA in China.The Panel finds the second element of the Policy has not been established.
C. Registered and Used in Bad Faith
The evidence in the case file as presented does not indicate that the Respondent’s aim in registering the
disputed domain name was to profit from or exploit the Complainant’s Trade Mark.The Panel finds the third element of the Policy has not been established.
D. Reverse Domain Name Hijacking
Paragraph 15(e) of the Policy provides that, if after considering the submissions, the Panel finds that the
Complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking (“RDNH”)
or to harass the domain-name holder, the Panel shall declare in its decision that the Complaint was brought
in bad faith and constitutes an abuse of the administrative proceeding. The mere lack of success of the
complaint is not, on its own, sufficient to constitute RDNH. For an RDNH finding to be made, it is not
necessary for a respondent to seek such finding or prove the presence of conduct constituting RDNH.
WIPO Overview 3.0, section 4.16.The Panel considers that, in all the circumstances, the Complainant, being legally represented, ought to be
held to a higher standard. WIPO Overview 3.0, section 4.16.This is a proceeding in which, on the facts, the Complainant and its legal representatives ought to have
recognised it would not be possible to establish both the second and third elements under the Policy.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. In the Complaint, the Complainant referred to (and sought
to rely upon):(i) Evidence from the Respondent’s Website demonstrating that it was established in 2005, formerly
known as Wanda Cinema Line, listed on the Shenzhen Stock Market in 2015, and officially changed its name
to Wanda Film in 2017; and(ii) Evidence from Wayback Machine archives again demonstrating the Respondent’s name and business
and its use of the name Wanda Film in the Chinese market since 2017.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.7. Decision
For the foregoing reasons, the Complaint is denied. Moreover, the Panel finds that the Complaint has been
brought in bad faith and constitutes an attempt at RDNH./Sebastian M.W. Hughes/
Sebastian M.W. Hughes
Presiding Panelist
/Iris Quadrio/
Iris Quadrio
Panelist
/Roger Staub/
Roger Staub
Panelist
Date: August 31, 2024
