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Universal City Studios LLLP v. domains, Ventures [2005] GENDND 1961 (8 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Universal City Studios LLLP v. domains, Ventures

Case No. D2005-0964

1. The Parties

The Complainant is Universal City Studios LLLP, Universal City, California, United States of America, represented by Seyfarth Shaw LLP of Los Angeles, California, United States of America.

The Respondent is domains, Ventures, Xiamen, Fujian, China.

2. The Domain Name and Registrar

The disputed domain name is <wwwuniversalorlando.com> and is registered with Moniker Online Services, LLC Inc., Pompano Beach, Florida, United States of America.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on September 8, 2005, and by hard copy on September 12, 2005.

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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).

Further, in accordance with the Rules, Paragraphs 4(c), the Center formally notified the Respondent of the Complaint, the proceedings commencing on September 13, 2005, and in accordance with the Rules, the due date for responding was October 3, 2005. The Respondent failed to submit a response within the limit. Accordingly, on October 4, 2005, the Center notified the Respondent’s default.

On or about September 11, 2005, the Center transmitted by email to Moniker, a request for a register verification in connection with the domain name at issue. Shortly after, this request was verified by a response, providing the contact details for the administrative, billing and technical contact.

The Center appointed James G. Fogo as the sole panel member in this matter on October 24, 2005.

The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Independence, as was required by the Center to ensure compliance with the Rules, paragraph 7.

The language of the proceedings is English.

4. Factual Background

The Complainant owns and has registered a family of trademarks of which three marks are well known in the United States of America and in many countries of the world through registration or pending registration. These marks are identified as follows:

(1) UNIVERSAL

From 1912 to the present, the world famous motion picture studio has produced and distributed motion pictures identified by the mark UNIVERSAL.

The mark UNIVERSAL was registered with the United States Patent and Trademark Office on December 23, 1980, Reg. No. 1,144,545, a Service Mark. On March 12, 1991 the United States Trademarks Office granted a further registration for UNIVERSAL, under Reg. No. 1,637,487.

The mark UNIVERSAL has been registered in more than 100 different countries of the world. The Complainant secured registrations of this mark in the Peoples Republic of China under Reg. 775672 and 778113 granted in each case in early 1995.

(2) UNIVERSAL STUDIOS

In the early 1960’s, the Complainant opened its first theme park, located in California.

By 1964, the Complainant began using the mark UNIVERSAL STUDIOS in connection with various sightseeing tours of picture production facilities and exhibitions. This mark was used in connection with goods and services including beach and bath towels, clothing, bags and wallets, domestic utensils, toys, paper goods, printed matter and candy. (Reg. No. 1,515,447, 1,515,541, 1,528,253, 1,530,900, 1,531,018, 1,531,965, 1,533,506 and 1,095,505).

The Complainant secured registrations of UNIVERSAL STUDIOS (English) in each of the following in respect of the Peoples Republic of China: Reg. 1676652 (12/7/2001) class 28, Reg. 1289883 (6/28/1999) class 41, Reg. 1761001 (5/7/2002) class 21, and Reg. 1697304 (1/14/2002) class 25.

(3) UNIVERSAL ORLANDO

In 1990, the Complainant opened a second theme park established in Orlando, Florida. The theme park has operated, since its opening, under the mark UNIVERSAL STUDIOS FLORIDA.

The entire resort complex surrounding the Florida theme park has been identified under the trademark “UNIVERSAL ORLANDO” since January 2000.

In August 1999, the Complainant registered, and has continuously used since that date, the domain name <universalorlando.com> to advertise its services under the UNIVERSAL ORLANDO mark throughout the world. Through the long, continuous and extensive use of these marks in connection with the Complainant’s goods and services, the marks have become well-known and famous throughout the world.

More recent, but still earlier than the date of the registration of <wwwuniversalorlando.com> the Complainant obtained a service mark for UNIVERSAL ORLANDO for amusement park services, granted by the United States Patent and Trademark Office on January 2, 2001, Reg. No. 2,417,610.

The disputed domain name was registered with Moniker on or about April 30, 2003.

5. Parties’ Contentions

A. Complainant

(1) The domain name in dispute, <wwwuniversalorlando.com>, is either virtually identical or confusingly similar to each of Complainant’s Registered Marks cited in this matter. The differences are in the addition of the prefix “www” and the suffix “.com”.

It has been held on numerous occasions that adding “www” to the beginning of a domain name will not avoid a finding of confusing similarity. See, for example Google, Inc v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240 (November 9, 2000).

Further, the presence of the “.com” suffix is so frequent as not to distinguish the Domain Name in any significant way from the Complainant’s Registered Mark.

It follows that the domain name in issue is identical to the Complainant’s UNIVERSAL ORLANDO mark. The marks UNIVERSAL and UNIVERSAL STUDIOS, elements found in the domain name <wwwuniversalorlando>, are world famous marks.

It is inconceivable that the Respondent did not know of the existence of the trademarks held by the Complainants described above.

(2) The Complainant first discovered that the Domain Name <wwwuniversalorlando.com> had been registered in or about May, 2003. At that time the registrant was identified as one “Albert Jackson”, of George Town, Grand Cayman, KY. Albert Jackson has been a respondent in a number of previous proceedings under the Policy.

From July, 2003 through February, 2004, the Complainant attempted to contact Mr. Jackson, with no response. However, in February, 2004, a letter was delivered to Mr. Jackson’s address, disclosing that the name of the registrant of the domain name had changed to “domain asia ventures” of Xiamen, Fujian, China.

Upon an unsuccessful attempt to contact “domain asia ventures” in July, 2004, the domain name was again transferred, this time in or about September, 2004, to “Michael Huan”of Singapore. A letter sent by the Complainant to Mr. Huang in December 2004, was returned as undeliverable.

On July 15, 2005, eight days after delivery of an e-mail from Complainant’s counsel to the contact e-mail address on the registration, the name of the registrant was changed back to “domain asia ventures”.

The Complainant considered that the Respondent has acted in an attempt to hide its identity, indicating its lack of a legitimate interest in the Domain Name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under paragraph 5(e) of the Rules, it is provided that if a Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the Complaint. No exceptional circumstances have been brought to the Panel’s attention, and it will proceed to make findings below based upon the material contained in the Complaint.

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements:

(i) that the Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name;

(iii) that the disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The evidence shows that the Complainant has rights in the marks UNIVERSAL, UNIVERSAL STUDIOS and UNIVERSAL ORLANDO. The first of these marks has been used for more than 90 years, the second has been used for more than 40 years and the third has been used since 2000. These marks have been continuously used. The Respondent’s Domain Name was registered in May 2003, later than each of the Complainant’s prior rights.

The Respondent’s disputed Domain Name is <wwwuniversalorlando.com> and it has been noted that adding “www” at the beginning of a domain name will not avoid a finding of confusing similarity. The addition of “.com” at the end of the Domain Name is not significant. Thus what is left of the domain name “universalorlando” is identical or confusingly similar to marks in which the Complainant has rights.

The registration by the Respondent of an essentially identical domain name would clearly create confusion.

The Panel holds that the Complainant has met the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Complainant contends that having failed to file a response, this Respondent has no rights or legitimate interests. However, the Complainant must establish that the Respondent has no right or legitimate interest in the domain name pursuant to paragraph 4(c).

The Complainant asserts that the Respondent cannot make any showing that it has any rights or legitimate interests in the domain name at issue. Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel to be based on its evaluation of all evidence presented, shall demonstrate a respondent’s rights to or legitimate interests in a domain name:

“(i) before any notice to you of the dispute, your use of, or demonstrable or preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or service; or

(ii) you … 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.”

Respondent can prove no evidence to support any of these defences.

The Complainant has never licensed nor otherwise authorized or permitted the Respondent to use the domain name at issue.

Instead of making a legitimate non-commercial or fair use of the domain name, there is evidence that the Respondent has sought to use the domain name to attract, deceive and divert Internet visitors looking for the Complainant’s website. The Respondent is not using the domain names for a bona fide use, but for commercial gain. Therefore the Complainant has successfully met its second burden, under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Rules sets out four non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith. The Respondent received actual notice of the Complainant’s rights soon after the Complainant learned of the Respondent’s registration of the domain name at issue.

Paragraph 4(b)(iv) of the Policy provides that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainant’s as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location. The website linked to the domain name at issue provides links to a number of websites, including some belonging to competitors of the Complainant. It is clear that the Respondent is using a domain name that is confusingly similar to the Complainant’s marks in an attempt to attract Internet users for a commercial purpose.

7. Decision

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, <wwwuniversalorlando.com> be transferred to the Complainant.

James G. Fogo
Sole Panelist

Dated: November 8, 2005