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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vivendi S.A., The Seagram Company Ltd., Joseph E. Seagram & Sons, Inc., Universal Studios, Inc., and Universal City Studios, Inc. v. Yu Fu Zhao (aka Tyou Star) ("Zhao")
Case No. D2000-0717
1. The Parties
The Complainants in this administrative proceeding are Vivendi S.A., a French corporation with a principal place of business in Paris; the Seagram Company Ltd., a Canadian corporation with a principal place of business in Montreal; Joseph E. Seagram & Sons, Inc., a corporation incorporated under the laws of the State of Indiana, with a principle place of business in New York; Universal Studios, Inc., a corporation incorporated under the laws of the State of Delaware, with a principal place of business in Universal City, California; and Universal City Studios, Inc., a corporation incorporated under the laws of the State of Delaware, with a principal place of business in Universal City, California.
The Complainants are represented by Mr. J. D. Neuberger of Brown, Raysman, Millstein, Felders & Steiner LL.P. of New York, NY, USA.
The Respondent named initially by the Complainants was Tyou Star aka Zu Fu Zhao ("Zhao") of Oomiya, Saitima, Japan. This Respondent is not represented in these proceedings. On July 25, 2000, the Complainants sought to add as an additional Respondent, Su Jichun, of 702 #500 Chengdu Road North, Shanghai, China, in respect of the domain name "vivendiuniversal.com." The Respondent Su Jichun is represented by Ling Jim of Shanghai, China. The World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") allowed the joinder of the added Respondent.
Pursuant to a settlement between the Complainants and the added Respondent Su Jichun, the Complainants have formally requested that Su Jichun be dismissed as a Respondent in this case, without prejudice, and that the Panel issue no decision with respect to the domain name "vivendiuniversal.com." The Panel therefore does not address below those factual circumstances pertaining to the added Respondent Su Jichun and the domain name concerned, "vivendiuniversal.com". Future references to the Respondent will be to Zhao.
2. The Domain Names and Registrar
The domain names in dispute are as follows:
These domain names were registered with Network Solutions Inc., of Herndon, Virginia, USA ("NSI").
3. Procedural History
A Complaint was submitted electronically on July 1, 2000 and by hard copy on July 3, 2000 by the Complainant to the WIPO Center.
On July 30, 2000 a request for Registrar verification was transmitted by the WIPO Center to NSI:
Confirm that a copy of the Complaint had been sent to it by the Complainant as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy, paragraph 4(a).
Confirm that the domain names at issue are registered with the Registrar.
Confirm that the person named as the Respondents is the current registrant of the domain names.
Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrar’s WHOIS database for the registrant of the disputed domain names, the technical contact, the administrative contact and the billing contact for the domain names.
Confirm that the Uniform Domain Name Dispute Resolution Policy is applicable to the domain names at issue.
Indicate the current status of the domain names.
By email dated August 9, 2000, NSI advised the WIPO Center as follows:
NSI had received a copy of the Complaint from the Complainant.
NSI is the Registrar of the disputed domain name registrations.
The Respondent is the current registrant with NSI of the disputed domain names. He is also the administrative and billing contact for the domain names.
NSI’s 5.0 Service Agreement is in effect.
The disputed domain name registrations are in "Active" status.
With effect from January 1, 2000, NSI adopted the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN"). As can be deduced from the advice of NSI that the domain names in question are still "active," the Respondent has not requested that any domain name at issue be deleted from the domain name database, nor has the Respondent sought to terminate his agreement with NSI. Accordingly, the Respondent is bound by the provisions of the Domain Name Dispute Resolution Policy, i.e., the ICANN policy.
Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, the WIPO Center on July 31, 2000 transmitted by courier, email and facsimile a notification of Complaint and Commencement of Administrative Proceedings to Respondent. A copy of the Complaint was also emailed to NSI and ICANN.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days (i.e., by August 20, 2000). He was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. The Respondent filed no Response.
On November 2, 2000, The WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand, to chair the Panel in this case. It invited Mr. Yong Li of the China International Economic and Trade Arbitration Commission, Beijing, People’s Republic of China, and Mr. James W. Dabney of Pennie & Edmonds L.LP., New York, NY, USA, to be Panelists. It transmitted to all Panelists a statement of acceptance and requested a declaration of impartiality and independence.
The Panelists advised their acceptance and forwarded to the WIPO Center their statements of impartiality and independence. On November 10, 2000, the Complainants and the Respondent was notified of the appointment of the Panel. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On November 10, 2000, WIPO Center forwarded to the Panelists by courier the relevant submissions and the record. These were duly received by them. The Panel is to forward its decision by November 30, 2000.
The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").
The language of the administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
As set forth in the Complaint, the Complainant Vivendi has used its "Vivendi" trademarks in France, China, Japan and elsewhere since May 1998, and has registered its marks in France, China, Japan, the U.S. and many other countries in connection with a variety of goods and services, including telephones and telecommunications services as detailed in the Complaint.
The Complainant Seagram is a diversified company that operates in four global business segments: music, filmed entertainment, recreation and spirits and wines. The "Seagram" mark has been used by Seagram and its affiliates since 1857. The "Seagram" or "Seagram"-formative marks have been registered in more than 150 countries as detailed in the Complaint.
Universal Studios, Inc. and its Universal City Studios, Inc. subsidiary are leading entertainment companies. Universal City Studios, Inc. owns a number of U.S. trademark registrations for the mark "Universal", as used in connection with entertainment services and motion picture films as detailed in the Complaint. Universal’s motion pictures generate many millions in ticket sales. Pictures include "Jaws", "Jurassic Park" and "ET".
Complainants Vivendi and The Seagram Company Ltd. have announced a planned merger, which is expected to result in a business to be named "Vivendi Universal ". On or about June 13, 2000, an article about the planned merger was published in several electronic news services. Within 2 days, Respondent registered the disputed domain names.
On June 22, 2000, an agent for Vivendi wrote to the Respondent notifying him that his registration of the 4 "vivendiuniversal" domains infringed Vivendi’s trademark and trade name rights and demanded that the Respondent transfer the domain name registrations to Vivendi.
On June 23, 2000, the Respondent replied to the effect that he was contemplating the building of a web site, if he could raise venture capital, concerning the life of Latin-speaking people in Japan. He claimed that he thought of the name "Vivendi" as a "Latin word meaning life-style" and "Universal" means global-universal. He registered "Seagram-Vivendi" on the same day as his Reply.
The facts further establish that the Respondent, as at July 5, 2000, has registered more than 234 domain names, many of which are variations of, or combinations of, names of well-known companies. Many contain third party trademarks: "America West-TWA.com", "ASAIDAIWABANK.com"; "KLM-BritishAirways.com", "PhilipMorrisNabisco.com", "UnitedAirlines-USAir.com" to name but a few.
5. Parties’ Contentions
The Complainants contend that there is no doubt that each of the disputed domain names is confusingly similar to the Complainants’ marks, that the Respondent cannot prove any legitimate interest or rights in any of the domain names in issue, and that the facts establish that the Respondent registered and used the domain names in bad faith.
The Complainants complain that the Respondent is a cybersquatter whose modus operandi is to watch for press releases of upcoming business plans or mergers and then register domain names that might be useful to combined organizations. In support, they refer to the more than fifty domain name registrations of the Respondent, as indicated from records of the Whois look-up database, many of which are variations of, or combinations of well-known companies. They contend that the timing of the registrations by Respondent of the disputed domain names in this case, which began immediately after the first announcement of the planned Vivendi-Seagram merger, demonstrates his bad faith intention to obtain the registrations in order to re-sell them. They also refer to the words "contact us" in the registrant name for the domain name "seagram-vivendi.com", as a further indication of the Respondent's intent to sell the disputed names.
The Respondent has made no submissions.
6. Discussion and Findings
The Panel has carefully weighed the evidence presented and determines on the balance of probabilities that the Complainants have established all of the elements required under paragraph 4(a) of the Policy against the Respondent.
Each of the disputed domain names incorporates in full the "Vivendi" mark, in combination with either the "Universal" or "Seagram" marks and, thus, are confusingly similar to the Complainants’ marks. Any minor differences are legally insignificant. Further, the Complainants clearly have rights to the "Vivendi", "Universal" and "Seagram" marks, as evidenced by their existing registrations and widespread use. Opportunistic combinations of two famous marks, registered as domain names shortly after a merger announcement, have been discouraged by WIPO Panelists in Pharmacia & Upjohn AB v. Monsantopharmacia.com Inc. (D2000-0446) and in respect of other marks owned by the present Complainants in Vivendi S.A. v. CIPC Net (D2000-0685).
It is also clear that the Respondent has no rights or legitimate interests in respect of the domain names. None of the circumstances set forth in paragraph 4(c) of the Policy is applicable.
With respect to the issue of "bad faith" registration and use, the Panel determines that the Respondent registered and has used the domain names in order to prevent the Complainants from reflecting the marks in corresponding domain names and has engaged in a "pattern" of such conduct, within the meaning of paragraph 4(b)(ii) of the Policy. The evidence further establishes the Respondent registered the disputed domain names primarily for the purpose of transferring the registrations to the Complainants for consideration in excess of out-of-pocket expenses, within the meaning of paragraph 4(b)(i) of the Policy.
For the foregoing reasons, the Panel decides:
- the five domain names currently registered by the Respondent are confusingly similar to the trademarks to which the Complainants have rights;
- the Respondent has no rights or legitimate interests in respect of those domain names;
- the Respondent’s domain names have been registered and are being used in bad faith;
- the added Respondent Su Jichun is dismissed from this case, without prejudice; and
- no decision is given in respect of the domain name "vivendiuniversal.com" at the request of the Complainants.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the five disputed domain names registered in the name of the Respondent be transferred to the Complainants.
Hon. Sir Ian Barker QC
Mr. Yong Li
Mr. James W. Dabney
Date: December 4, 2000