Registered in 2018, the domain name Renderman.com appears to be generic, when in fact it’s a direct infringement of a registered trademark.
PIXAR created a tool to render images way back in the 1980’s and in 1988 they registered the mark RENDERMAN in connection with its proprietary software used in computer graphics and digital film-making.
After filing a UDRP to get the domain the result was as expected; the sole panelist at the Forum (NAF) pointed out where the domain fails:
The Panel finds that Respondent’s conduct falls under paragraph 4(b)(i) above. The Panel has found the domain name to be identical to the trademark. The trademark is relatively distinctive and there is no explanation or reasonable inference to be drawn that Respondent had a legitimate expectation to be able to use the trademark. The domain name is offered for USD 11,910, way exceeding any likely out-of-pocket costs directly related to the acquisition/renewal of the domain name. The Panel finds circumstances indicating that Respondent registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the name to Complainant or a competitor of Complainant for a value exceeding the likely acquisitional cost.
Final decision: Grant the transfer of the domain Renderman.com to the Complainant.
Note: The domain Renderman was used by Barcelona-based company Renderman S.L. as early as in 2005, with an original registration date of 1997; it eventually dropped.
PIXAR v. Domain Admin / Global IP Holdings Inc.
Claim Number: FA2405002098971
PARTIES
Complainant is PIXAR (“Complainant”), represented by Annie S. Wang-Poloskov of Wang Law Corporation, California, USA. Respondent is Domain Admin / Global IP Holdings Inc. (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is renderman.com, registered with GoDaddy.com, LLC.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Debrett G. Lyons as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on May 22, 2024; Forum received payment on May 22, 2024.
On May 23, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the renderman.com domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 29, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 18, 2024 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@renderman.com. Also on May 29, 2024, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On June 19, 2024, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts trademark rights in RENDERMAN and submits that the disputed domain name is confusingly similar to its trademark. Further, Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Furthermore, Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
In particular, Complainant asserts that the domain name has not been used since its creation in 2018 and is offered for sale to the public for USD 11,910.00.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
The factual findings pertinent to the decision in this case are that:
1. Complainant uses the trademark RENDERMAN in connection with its proprietary software used in computer graphics and digital film-making;
2. Complainant is the owner of United States Patent & Trademark Office (“USPTO”) Reg. No. 1,513,454, registered November 22, 1988, for RENDERMAN; and
3. the disputed domain name was registered on November 15, 2018, has not been used and is for sale.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Identical and/or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). It follows that Complainant has trademark rights in RENDERMAN since it provides proof of registration of that mark with the USPTO, a national trademark authority.
Complainant submits that “the test for confusing similarity is met, as here, Respondent has used Complainant’s well-known Trademark in its entirety and merely sought to capitalize on Complainant’s notoriety.” That is not the accepted test for confusing similarity but, in any event, the question is immaterial since the disputed domain name is identical to the trademark for the purposes of paragraph 4(a)(i) of the Policy (see, for example, Morgan Stanley v. nashan, FA 1706094 (Forum Jan. 23, 2017) finding morgan-stanley.xyz identical to complainant’s MORGAN STANLEY mark).
The Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).
The name of the domain name owner does not carry any suggestion that Respondent might be commonly known by the domain name. There is no evidence that Respondent has any trademark rights of its own. The Panel accepts Complainant’s submission that it has not permitted Respondent to use or register the trademark. Finally, the domain name is not in use, resolving to a page maintained by the Registrar where the name is offered for sale.
It follows that a prima facie case has been made that Respondent has no rights or interest in the domain name (see, for example, Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017): “Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s kohler-corporation.com resolves to an inactive webpage displaying the message “website coming soon!”; Morgan Stanley v. Corporate Domain Portfolios c/o Ye Genrong, FA1006001328821 (Forum Jul. 25, 2010) finding that “Respondent’s general offer to sell the disputed domain name is further evidence that Respondent does not have rights or legitimate interests in the disputed domain name”).
The onus shifts to Respondent. In the absence of a Response, the Panel finds that Respondent has not discharged the onus and finds the Respondent has no rights or interests.
Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
The Panel finds that Respondent’s conduct falls under paragraph 4(b)(i) above. The Panel has found the domain name to be identical to the trademark. The trademark is relatively distinctive and there is no explanation or reasonable inference to be drawn that Respondent had a legitimate expectation to be able to use the trademark. The domain name is offered for USD 11,910, way exceeding any likely out-of-pocket costs directly related to the acquisition/renewal of the domain name. The Panel finds circumstances indicating that Respondent registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the name to Complainant or a competitor of Complainant for a value exceeding the likely acquisitional cost.
The Panel finds that Complainant has satisfied the third and final element of the Policy (see, for example, Galderma SA v. Clobex, D2002-0224 (WIPO May 21, 2002) (“Respondent’s readiness to sell the domain name
when no offer to buy it had been made by Complainant shows that Respondent was awaiting to be contacted by Complainant. This in turn is evidence that Respondent registered the domain name primarily for selling it to Complainant or a competitor for a big profit, which constitutes registration and use in bad faith according to paragraph 4(b)(i) of the [UDRP] Policy.”).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the renderman.com domain name be TRANSFERRED from Respondent to Complainant.
Debrett G Lyons, Panelist
Dated: June 20, 2024
