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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Universal City Studios, Inc. v. HarperStephens
Case No. D2000-0716
1. The Parties
Complainant is Universal City Studios, Inc., a corporation organized and existing under the laws of the State of Delaware, with its principal place of business at 100 Universal City Plaza, Universal City, California 91608 USA.
Respondent is HarperStephens. Respondent’s mailing address is P.O. Box 1022, Agoura Hills, California 91301 USA.
2. The Domain Name(s) and Registrar(s)
Six domain names are at issue. They are "universalstudiosstore.com", "universalstudiosstore.net", "universalstudiosstore.org", "universalstudiostore.com", "universalstudiostore.net", and "universalstudiostore.org".
The Registrar is Network Solutions, Inc. ("NSI"), 505 Huntmar Park Drive Herndon, Virginia 20170-5139 USA.
3. Procedural History
The Complaint and the required fee were received by the WIPO Arbitration and Mediation Center (the "Center") on July 3, 2000.
On July 6, 2000, the Center requested the Registrar to verify data concerning the contested domain name registrations. A July 13, 2000 response from NSA verified that it is the Registrar of these domain names and confirmed the name and contact data given for the Registrant. The response also stated that "Network Solutions’ 5.0 Service Agreement is in effect."
The Center made a check for compliance with the formal requirements of ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). On July 19, 2000, a Formal Requirements Compliance Checklist showing compliance was completed by the Center.
A Notification of Complaint and Commencement of Administrative Proceeding was sent by the Center on July 19, 2000, to the Respondent along with a copy of the Complaint. This action was carried out as required by section 2(a) of the Rules. The Notification stated that the "last day for sending your Response to the Complainant and to us is August 7, 2000.
The formal commencement date of this administrative proceeding is July 19, 2000.
No response from the Respondent has been received by the Center.
On August 10, 2000, the Center sent to Respondent a Notification of Respondent Default.
On August 16, 2000, the Center invited William L. Mathis to serve as panelist for this case. He accepted on August 18, 2000, and provided the Center with his Declaration of Impartiality and Independence.
On August 21, 2000, the Center notified the parties of the appointment in this case of an Administrative Panel consisting of a single member, William L. Mathis.
4. Factual Background
Complainant is a famous motion picture studio that has been producing and distributing motion pictures under the mark UNIVERSAL since 1912. In the 1960’s, it began using the mark UNIVERSAL STUDIOS in connection with various goods and services, the general nature of which is indicated by the descriptions is some of Complainant’s United States trademark and service mark registrations which are attached to the Complaint as exhibits. Registration No. 1,355,894, relates to UNIVERSAL STUDIOS for education and entertainment services: namely, narrated sightseeing tour of motion picture and television production facilities including exhibitions and demonstrations. Registration No. 1,515,541, relates to UNIVERSAL STUDIOS for clothing and footwear; namely, hats; caps; sweatshirts; sweatsuits; t-shirts; tank tops; robes; belts; underwear; raincoats; jackets; ponchos; pant suits; socks; sweaters; bibs; and slippers. The Panel believes this description is applicable to types of items promoted in connection with entertainment enterprises and/or sold in gift shops connected with entertainment facilities. Similar observations would apply to others of the UNIVERSAL STUDIOS registrations, such as Reg. No. 1,528,253; Reg. No. 1,531,018; and Reg. No. 1,531,965.
Complainant also owns United States Registration 1,646,420, issued by the United States Patent and Trademark Office on May 28, 1991, on the service mark UNIVERSAL STUDIOS STORE. It describes the services as "retail gift store services." The Complaint (para. 15) explains that Complainant began using the UNIVERSAL STUDIOS STORE mark in connection with its retail gift store services in 1990 and that it operated three such stores in the United States at the time of the Complaint.
The Complaint alleges that Respondent has registered thousands of domain names, including "derivatives of marks owned by third parties." Complaint, para. 20-21, p. 8. A few pages from a 272 page WHOIS Search Report from the registrar NSI are attached to the Complaint as Exhibit 6. According to Complainant, the report contains a list of 14,666 domain names registered by Registrant, including "approximately 50 derivatives of the mark ‘AMGEN’ (see, e.g., United States Trademark Registration No. 2,170,735), approximately 20 derivatives of the mark "AOL" (see, e.g., United States Trademark Registration No. 1,977,731), 3 domain names based on the mark "AVIS" (e.g., United States Trademark Registration No. 703,700), 8 domain names based on the mark "BLOCKBUSTER" (e.g., United States Trademark Registration No. 1,771,243), 3 based on "BMW" (e.g., United States Trademark Registration No.661,710), 3 based on "COKE" (e.g., United States Trademark Registration No.415,755), 20 based on "FEDEX" (e.g., United States Trademark Registration No.1,311,503), 7 based on "HOLIDAY INN" (e.g., United States Trademark Registration No.592,539), 3 based on "MICROSOFT" (e.g., United States Trademark Registration No.1,200,236), 9 based on "UCLA" (e.g., United States Trademark Registration No.1,882,552), 5 based on "UPS" (e.g., United States Trademark Registration No.735,064), and 9 based on "YAHOO!" (e.g., United States Trademark Registration No.2,040,222)."
Paragraph 31 of the Complaint indicates that Respondent is not making any active use of the domain names at issue.
5. Parties’ Contentions
Respondent has not offered any contentions in this case. Respondent failed to respond to the Complaint. The record contains no communications from Respondent.
Complainant contends that its UNIVERSAL, UNIVERSAL STUDIOS, and UNIVERSAL STUDIOS STORE marks have become well know in the United States and elsewhere and that the disputed domain names are identical or confusingly similar to such marks.
Complainant contends that Respondent has no rights or legitimate interests in respect of the domain names at issue.
Complainant contends that the disputed domain names have been registered and are being used in bad faith.
Complainant seeks a transfer of each of the disputed domain names to Complainant.
6. Discussion and Findings
Identity or Confusing Similarity
Each of Respondent’s domain names involved in this proceeding is substantially the same as Complainant’s registered service mark UNIVERSAL STUDIOS STORE. Three of these domain names differ from Complainant’s mark only by the addition of ".com" or ".net" or ".org" and the elimination of the spaces between the three words of the mark. Respondent’s remaining three domain names additionally use a single "s" both to end the word "studios" and to begin the next word "store". Such differences are commonplace in instances where trademarks are reflected in domain names. They do not change the overall impression engendered.
Respondent has not contended that there is a lack of identity or confusing similarity between any of the contested domain names and Complainant’s UNIVERSAL STUDIOS STORE mark. Hence, the Panel finds that each of the domain names in issue is identical or confusingly similar to Complainant’s UNIVERSAL STUDIOS STORE mark, thereby establishing element 4(a)(i) of the Policy.
Also, the record shows that Complainant’s UNIVERSAL STUDIOS mark has been registered for many years and used in connection with such a high profile entertainment enterprise as to promote its notoriety. This mark should be regarded as well known. Given that Complainant’s UNIVERSAL STUDIOS mark has been associated both with sightseeing tours of motion picture production facilities (Reg. No. 1,355,895) and with a variety of product types (Reg. No. 1,515,447; 1,515,541; 1,528,253; 1,530,900; 1,531,018; and 1,531,965) that are often sold in gift shops, the Panel finds that Respondent’s domain names in dispute would be likely to be understood as connoting a sales outlet for Complainant’s "UNIVERSAL STUDIOS" gift items. Therefore, the Panel finds that each of Respondent’s disputed domain names is confusingly similar to Complainant’s UNIVERSAL STUDIOS mark.
The present record does not justify a finding that the disputed domain names are confusingly similar to Complainant’s UNIVERSAL mark or variant thereof.
Respondent’s Rights or Legitimate Interests
Complainant has not licensed or otherwise granted permission to the Respondent to use its UNIVERSAL STUDIOS or UNIVERSAL STUDIOS STORES marks or to register or use any domain name incorporating such marks or variants thereof.
Although "universal" and "studios" and "stores", taken individually, are ordinary everyday words, the composite "universalstudiosstore" is not. It is too long and too awkward to be accepted simply as a word or expression. Rather, the observer is driven to rationalize a meaning for it by associating it with something else. Respondent must have known when it selected "universalstudiosstore" and "universalstudiostore" for the distinctive element of its disputed domain names that they would incorrectly be associated by the public with Complainant and its marks. Respondent had no legitimate interest in doing so.
Complainant’s January 5, 2000 letter to Respondent explained clearly and politely the basis of Complainant’s concern about Respondent’s domain names in dispute. However, there was no response to this letter or to two follow-up letters. That is, Respondent did not assert possession by him of rights or legitimate interests in respect of the domain names at times when it clearly would have been appropriate to do so if he actually possessed such rights or interests. Further, the Panel believes it is appropriate to draw from Respondent’s default in this proceeding an inference that Respondent does not have rights or legitimate interests in the disputed domain names.
Section 4(c) of the Policy describes three circumstances which, if proven by the evidence, will demonstrate a respondent’s rights or legitimate interests. The Panel finds that the evidence here does not prove any of them. Nothing in the record indicates (1) that Respondent has ever used or prepared to use any of the disputed domain names or names corresponding to them in connection with a bona fide offering of goods or services, or (2) that Respondent has ever been commonly known by any of those domain names, or (3) that Respondent is making a legitimate noncommerical or fair use of any of the domain names.
Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of any of the disputed domain names.
Registration and Use in Bad Faith
Section 4(b) of the Policy describes in the alternative four circumstances which "shall be evidence of the registration and use of domain name in bad faith."
We consider first 4(b)(i): "circumstances indicating that you have registered or … acquired the domain name primarily for the purpose of selling … or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor … for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name."
From the present record the most probable explanation of Respondent’s acquisition of over 14,000 domain name registrations is that Respondent is in the business of selling or renting domain names for more than Respondent’s costs. Paragraph 25 of the Complaint alleges that it "is plain from the fact that Respondent has registered over 14,000 domain names that Respondent is engaging in a pattern of conduct involving the speculative registration of domain names." Respondent’s failure to deny this charge provides an inference that it is true. Further, in obtaining six domain name registrations substantially identical to Complainant’s registered UNIVERSAL STUDIOS STORE service mark, Respondent targeted Complainant (or a competitor wishing to interfere with Complainant) as a hoped for buyer by blanketing the realistic possibilities for reflecting Complainant’s mark in a corresponding domain name. Further, the commercial nature of Respondent’s activities is evident from the fact that he must have spent hundreds of thousands of dollars in acquiring over 14,000 domain name registrations. The intended return must have exceeded costs. Therefore, the Panel finds the circumstances of section 4(b)(i) to be present in this case.
Section 4(b)(ii) of the Policy describes another circumstance which, if found to be present, "shall be evidence of the registration and use of a domain name in bad faith." It is that the Respondent "registered the domain name in order to prevent the owner of the … service mark from reflecting the mark in a corresponding domain name, provided that … [Respondent has] engaged in a pattern of such conduct." By obtaining the six domain name registrations in dispute, Registrant preempted the reasonable possibilities for directly reflecting Complainant’s UNIVERSAL STUDIOS STORE mark in a satisfactory domain name. Respondent has not denied that allegations in paragraph 26 of the Complaint that "Respondent’s registration of the domain names at issue prevents Complainant from having a domain name that corresponds to its registered mark." Hence, the Panel adopts this allegation as its finding.
The Panel also finds that the evidence shows similar conduct by Respondent in relation to other registered marks. Paragraph 21 of the Complaint alleges that a number of the domain names registered by Respondent "are derivatives of marks owned by third parties." As examples, this paragraph refers to AMGEN, AOL, BLOCKBUSTER, and other. In each instances, Respondent’s domain name registrations foreclosed a trademark or service mark registrant from the opportunity to register and use some domain name reflecting, in the sense of being readily recognizable as related to, the registered mark.
Thus, the record establishes a pattern of conduct on the part of Respondent by which Respondent sought to prevent trademark and service mark owners from reflecting their marks in corresponding domain names.
Therefore, the Panel finds that the circumstances of each of sections 4(b)(i) and 4(b)(ii) of the Policy are present in this case. These provide evidence of bad faith registration and use. There being no evidence to the contrary, the Panel finds that the disputed domain names have been registered and are being used in bad faith.
The Panel concludes (1) that each of the disputed domain names, "universalstudiosstore.com", "universalstudiosstore.net", "universalstudiosstore.org", "universalstudiostore.com", "universalstudiostore.net", and "universalstudiostore.org", is identical or confusingly similar to Complainant’s marks UNIVERSAL STUDIOS and UNIVERSAL STUDIOS STORE, (2) that Respondent has no rights or legitimate interests in any of these domain names, and (3) that Respondent registered and is using each of these domain names in bad faith.
Therefore, the Panel orders that each of the following domain names be transferred to Complainant Universal City Studios, Inc.:
William L. Mathis
Dated: September 5, 2000