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WIPO Arbitration and
Universal City Studios LLLP v. Dan Onischuk
Case No. D2003-1038
1. The Parties
The Complainant is Universal City Studios LLLP, Universal City, California, United States of America, represented by Bereskin & Parr, Canada.
The Respondent is Dan Onischuk, Edmonton, Alberta, of Canada.
2. The Domain Names and Registrar
The following disputed domain names are registered with Go Daddy Software:
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 24, 2003. On December 30, 2003, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On December 30, 2003, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint together with the amendment to 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").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 19, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 8, 2004. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on February 11, 2004.
On December 30, 2003, Respondent submitted to the Center several documents.
These were submitted before the term established for the Response and will be
considered by the Panel.
The Center appointed Daniel Peña as the sole panelist in this matter on March 2, 2004. The Panel finds that it was properly constituted. 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.
4. Factual Background
The Complainant owns a family of UNIVERSAL and UNIVERSAL STUDIOS trade marks and service marks in the United States of America, Canada, and worldwide. The Complainant filed requests in the Canadian Intellectual Property Office to record the name changes and conversion of Universal City Studios, Inc. to Universal City Studios LLLP, however, these changes have not yet been recorded against all registrations.
Complainant has numerous pre-existing U.S. and Canadian registrations for UNIVERSAL, UNIVERSAL STUDIOS and related marks, and in particular the following registered and pending marks:
a. UNIVERSAL (U.S. Registration No. 419248), for "motion picture photoplays, motion picture and sound films", issued February 6, 1946, first used in the U.S.A. and anywhere in the world, since at least as early as May 20, 1912;
b. UNIVERSAL (U.S. Registration No. 2285891), for "entertainment services, namely, the production and distribution of motion pictures and television programs; amusement park servcies", issued October 12, 1999, first used in the U.S.A. and anywhere in the world, since at least as early as October 9, 1997;
c. UNIVERSAL (Canadian Registration No. TMA110275), for "motion pictures", issued May 23, 1958, first used in Canada since at least as early as 1914;
d. UNIVERSAL (Canadian Registration No. TMA203179), for ""motion picture film; film television film, sound film; video and sound recordings; film production, distribution and exhibition; television film production; entertaiment namely the rental and distribution of motion picture film", issued November 15, 1974, first used in Canada between 1914 and 1969, on associated services as set out in the registration;
e. UNIVERSAL STUDIOS (U.S. Registration No. 2565904), for "amusement park services", issued April 30, 2002, first used in the U.S.A. and anywhere in the world, since at least as early as January 30, 2000;
f. UNIVERSAL STUDIOS VACATIONS (U.S. Registration No. 2468120), for "travel agency services, namely, making reservations and bookings for temporary lodging", issued July 10, 2001, first used in the U.S.A. and anywhere in the world, since at least as early as September 1, 1998;
g. UNIVERSAL STUDIOS VACATIONS (U.S. Registration No. 2473923), for "travel agency services, namely, making reservations and bookings for temporary lodging", issued July 31, 2001, first used in the U.S.A. and anywhere in the world, since at least as early as September 1, 1998;
h. UNIVERSAL PARKS & RESORTS VACATIONS (U.S. Application Serial No. 76451992), for "travel agency services, namely, making reservations and bookings for transportation", filed September 23, 2002, published for opposition May 6, 2003;
i. UNIVERSAL PARKS & RESORTS VACATIONS (Canadian Application No. 1153367), for "travel agency services namely making reservations and bookings for transportation and making reservations and bookings for temporary lodging", filed September 20, 2002, and advertised for opposition on September 24, 2003.
j. UNIVERSAL STUDIOS (U.S. Registration No. 1355894), for "education and entertainment services, namely, narrated sightseeing tour of motion picture and television production facilities including exhibitions and demonstrations", issued August 20, 1985, first used in the U.S.A. and anywhere in the world, since at least as early as August 1, 1967;
k. UNIVERSAL'S FIRST. ORLANDO'S FINEST (U.S. Registration No. 2415320), for "destination resort hotel services, namely, hotel, guest and amenity services, concierge services, room service, hospitality, beauty services, health spa services, restaurant services, cocktail lounge and bar services; catering services, providing convention, banquet, social function and event facilities; hotel conference and meeting services; resort hotel services", issued December 26, 2000, first used in the U.S.A. and anywhere in the world, since at least as early as March 15, 1999.
The Complainant, through its licensees, uses the UNIVERSAL and UNIVERSAL STUDIOS marks in association with the operation of off-site hotels in the vicinity of its theme parks, such as the Hilton Universal City and Towers hotel, and Sheraton Universal HOTEL, in California; and the Hampton Inn Universal hotel in Orlando, Florida. The Complainant has been licensing its marks for hotel services since at least as early as 1985, and has generated millions of dollars in revenues from such licensing.
The Complainant has registered and uses numerous domain names containing the marks UNIVERSAL and UNIVERSAL STUDIOS. This Complaint also relies on the trade mark rights in the UNIVERSAL and UNIVERSAL STUDIOS marks, in association with travel, hotel and reservations services, arising from the Complainant's use and registration of the domain names <universalstudios.com> and <universalstudiosvacations.com> since November 1996 and December 1999, respectively.
5. Parties’ Contentions
The contested domain names are confusingly similar to the Complainant's UNIVERSAL and UNIVERSAL STUDIOS marks.
1. The contested universal-hotel(s) domain names incorporate the Complainant's entire UNIVERSAL mark. The word "hotel" is clearly descriptive of the services with which the Respondent proposes to use these domain names, namely, to offer information about hotel services. Therefore, the addition of the word "hotel" to the word UNIVERSAL does not distinguish the term UNIVERSAL HOTEL(S) from the Complainant's UNIVERSAL marks.
Similarly, the contested universal-studios-hotel(s) domain names incorporate the Complainant's entire UNIVERSAL STUDIOS mark, and the word hotel is clearly descriptive of the associated services, and has no distinctive value. The Respondent's universal-studios-hotel(s) domain names are also identical to the Complainant's prior domain name registrations for <universalstudioshotel.com>, <universalstudioshotel.net>, <universalstudioshotels.com> and <universalstudioshotels.net>.
The Respondent has admitted that he intends to use the domain names in association with providing "hotel information, website hosting and/or Internet reservation services for hotels in the areas of [the Complainant's] UNIVERSAL STUDIOS facilities. This will assist tourist to readily find & book hotels near UNIVERSAL STUDIOS."
There is no evidence that the Respondent has become commonly known as UNIVERSAL, UNIVERSAL STUDIOS, UNIVERSAL STUDIOS HOTEL(S), or UNIVERSAL HOTEL(S). There is no evidence that the Respondent is making, or intends to make, a legitimate non-commercial or fair use of the domain names.
The Respondent has also failed to demonstrate that he is using, or has made demonstrable preparations to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services, except to misleadingly divert consumers to his websites with intent for commercial gain, by trading on the reputation and goodwill of the Complainant's UNIVERSAL and UNIVERSAL STUDIOS trade marks. By his own admission, he intends to use the Domain Names to attract consumers to his websites who seek online hotel reservation services relating to attendance at the Complainant's theme parks – a service already offered by the Complainant under its UNIVERSAL and UNIVERSAL STUDIOS trade marks, and a number of its domain names including <universalstudios.com>, <universalstudiosvacations.com>, <universalstudioshotel(s).com> and <universalstudioshotel(s).net>.
2. The Complainant's UNIVERSAL and UNIVERSAL STUDIOS trade marks were known to the Respondent prior to his registration of the contested Domain Names on December 9, 2003. These marks were famous in North America by that date (as described above), and the Complainant had made continuous commercial use of the UNIVERSAL and UNIVERSAL STUDIOS trade mark for decades, all well in advance of the Respondent’s registration of the contested Domain Names. The Respondent's initial letter to the Complainant of December 9, 2003, (Annex 16) demonstrates that he was already aware of the Complainant's UNIVERSAL and UNIVERSAL STUDIOS trademarks prior to contacting the Complainant. In fact, the Respondent claims in this letter that he intends to use the Domain Names in association with services relating to travel to or near the Complainant's UNIVERSAL STUDIOS properties.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
This Panel has examined individually each one of the domain names registered by the Respondent in relation to the rights over the trademarks registered by the Complainant that were evidenced in the proceedings. Consequently, the Panel considers that all the domain names subject to these proceedings are confusingly similar to the Complainant’s trademarks as established in the first requirement of the Policy. (Paragraph 4(a) (i)
The Panel considers that the inclusion of the words "hotel" and "studio" next to the expression Universal reinforces the possibilities of confusion with the distinctive signs of the Complainant.
After examining the statements of the Respondent contained in the e-mails sent before the term established by the Center to respond, such statements do not prove the contrary as to the possibility of confusion between the domain names and the trademarks nor the Complainant’s legitimate interest in filing the Complaint.
B. Rights or Legitimate Interests
Respondent has not presented any evidence with respect to his legitimate interest to keep the ownership of the domain names. The fact of not replying to the Complaint within the term established by the Center and not presenting any relevant evidence leads the Panel to consider that Respondent has no legitimate interest or right to register and use the contested domain names. (Paragraph 4(c) (i) of the Policy)
On the contrary, Complainant has stated and proved that it holds intellectual property rights that have been affected by the existence of the Respondent’s domain names. Such rights lead the Panel to believe that there is a legitimate interest and intellectual property rights acquired previously by Complainant thus complying with the second requirement of the UDRP (Paragraph 4(c) of the Policy). The Complainant has also alleged, without response, that Respondent has not been licensed or authorized to use the Complainant’s marks, nor has he become commonly known by those marks.
C. Registered and Used in Bad Faith
The Panel considers that evidence presented in this case by Complainant, in particular that referring to the correspondence sent by Complainant to Respondent proves bad faith in the registration and use of the domain names. In particular such correspondence leads the Panel to assert the Respondent’s intention to take advantage of the reputation and knowledge of the public of the Complainant’s distinctive signs.
The Panel considers that there is enough evidence filed by the Complainant
about the fact that the Respondent acquired the domain name for the purpose
of selling it to the Complainant for valuable consideration in excess of the
documented out of pocket costs directly related to the domain name (Paragraph
4(b)(i) of the Policy) It has also been proved in this procedure that the Respondent
registered several domain names in order to prevent Complainant from reflecting
these marks in a corresponding domain name (Paragraph 4(b) (ii) of the Policy).
The Panel does not accept as valid the arguments presented by the Respondent
in the various communications of December 11, 12, 13, 2003. On the contrary,
such communications show the intention of obtaining an economic profit over
the registration costs as well as profiting from the privileged situation of
having obtained the registration of a domain name that corresponds to the widely
known trademarks of the Complainant. To the Panel, bad faith in the use is shown
mainly due to the fact that there is not an active web page showing a serious
intention of using the domain name.
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 names <universal-hotel.biz>; <universal-hotel.net>; <universal-hotels.biz>; <universal-hotels.net>; <universal-studios-hotel.biz>; <universal-studios-hotel.com>; <universal-studios-hotel.net>; <universal-studios-hotels.biz>; <universal-studios-hotels.com>; <universal-studios-hotels.net> be transferred to the Complainant.
Dated: March 16, 2004