WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Universal City Studios, Inc. v. Hit-Max Incorporated
Case No. D2001-0738
1. The Parties
1.1 The Complainant is Universal City Studios, Inc., a corporation organized under the laws of the State of Delaware, United States of America, having its principal place of business at 100 Universal City Plaza, Universal City, California, United States of America.
1.2 The Respondent is Hit-Max Incorporated, an entity having an address at 7205 International Drive, Orlando, Florida, United States of America.
2. The Domain Names and Registrar
The domain names at issue are and , which domain names are registered with Internet Domain Registrars Corporation d/b/a R, located in Vancouver, British Columbia, Canada ("R").
3. Procedural History
3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on June 2, 2001, and the signed original together with four copies was received on June 5, 2001. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated June 7, 2001.
3.2 On June 8, 2001, a Request for Registrar Verification was transmitted to the registrar, R requesting it to: (1) confirm that the domain names at in issue are registered with R; (2) confirm that the entity identified as the Respondent is the current registrant of the domain names; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail 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; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain names.
3.3 On June 8, 2001, R confirmed by reply e-mail that the domain names at issue are registered with R, are currently in active status, and that the Respondent is the current registrant of the names. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.
3.4 The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a sole Panelist were paid on time and in the required amount by the Complainant.
3.5 No formal deficiencies having been recorded, on June 11, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, R and ICANN), setting a deadline of June 30, 2001, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in R�s confirmation. In addition, the complaint was sent by express courier to the postal address given. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
3.6 On July 2, 2001, not having received any Response, the WIPO Center sent the parties a formal Notification of Respondent Default.
3.7 On July 9, 2001, in view of the Complainant's designation of a single Panelist, the WIPO Center appointed M. Scott Donahey to serve as sole Panelist.
3.8 Although Respondent never submitted a formal Response in compliance with Uniform Rules, Rule 5, Respondent did submit three emails to the WIPO Center. The first of these was dated June 2, 2001, and stated in pertinent part: "As far as the two domain names mentioned below, we do not, and have never intended to sell these names. They are available for development. We would be willing to discuss this with Universal Studios and would be happy to let them develop these domains."
3.9 Respondent's second email was dated June 8, 2001, and stated in pertinent part: "These names are going to be used as UNOFFICIAL INFO sites (such as: ). We are not trying to sell them and never have. There is NO bad intentions [sic] here. When we registered the names a year and a half ago (why didn't Universal know they were available) there were no rules as to registering domain names that would have applied here. I would be glad to let Universal develop these two domains if they [sic] wish."
3.10 Respondent's final email was dated July 2, 2001, and was sent in response to receipt of the Notice of Default. That email stated in pertinent part: "We wanted to use the names for 'unofficial info sites', why didn't they register them before us, if they wanted them? [sic] I did not have enough time to get the information together I needed to send you and called their attorney, he was NO help. [sic] I think it would be fair to give me a couple more weeks!"
4. Factual Background
4.1 Complainant has used the mark UNIVERSAL since 1912 and the mark UNIVERSAL STUDIOS since 1964. UNIVERSAL was registered as a service mark with the United States Patent and Trademark Office ("USPTO") in 1980 in connection with entertainment services. UNIVERSAL STUDIOS was registered with the USPTO as a service mark in 1985 in connection with education and entertainment services. The latter mark was subsequently registered as a trademark in connection with a variety of goods. Complaint, Annex 4.
4.2 Complainant has registered its UNIVERSAL and UNIVERSAL STUDIOS marks in numerous countries around the world, and in the European Union. All of the registrations with the exception of the European Union registration predate Respondent's registration of the domain names at issue. Complaint, Annex 5.
4.3 Complainant's UNIVERSAL and UNIVERSAL STUDIOS marks have been found to be well known by two prior Panel decisions. See, Universal City Studios, inc. v. Antonio Paez, WIPO Case No. D2000-0569; Universal City Studios, Inc. v. Meeting Point Co., WIPO Case No. D2000-1245.
4.4 Complainant has also registered the marks UNIVERSAL CITYWALK, CITYWALK, and UNVIERSAL STUDIOS CITYWALK ORLANDO. Complaint, Annex 6. Complainant has used the marks UNIVERSAL CITYWALK and CITYWALK in connection with a variety of services since 1993 and goods since 1994, and the mark UNIVERSAL STUDIOS CITYWALK ORLANDO in connection with a variety of services since 1998 and goods since 2000.
4.5 Complainant has used its CITYWALK mark in advertising and promotional materials that include references to Complainant's Universal Studios Florida and Universal Studios Hollywood theme parks. Complaint, Annex 7.
4.6 Respondent registered the domain names at issue on December 29, 1999. Complaint, Annex 1.
4.7 Both names at issue resolve to a website that indicates the domain name is available for development. Complaint, Annex 11.
4.8 On February 25, 2000, Complainant sent Respondent a cease and desist letter. Complaint, Annex 9. On April 7, 2000, Complainant sent another copy of the February 25, 2001, cease and desist letter to Respondent. Complaint, Annex 10.
4.9 Complainant received no response to its letters to Respondent.
5. Parties� Contentions
5.1 Complainant contends that Respondent has registered domain names which are identical or confusingly similar to the service marks and trademarks registered and used by Complainant, that Respondent has no rights or legitimate interests in respect to the domain names at issue, and that Respondent has registered and is using the domain names at issue in bad faith.
5.2 Respondent has not contested the allegations of the Complaint.
6. Discussion and Findings
6.1 Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."
6.2 Since both the Complainant and Respondent are domiciled in the United States, and since United States� courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
6.3 Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2) that the Respondent has no rights or legitimate interests in respect of the domain names; and,
3) that the domain names at issue have been registered and are being used in bad faith.
6.4 The panel finds that the domain name is identical to the service marks and trademarks UNIVERSAL, UNIVERSAL STUDIOS AND CITYWALK registered and used by Complainant. The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113 (identity found where domain name constructed out of two marks owned by complainant).
6.5 The Panel finds that the domain name is confusingly similar to the service marks and trademarks UNIVERSAL and UNIVERSAL STUDIOS registered and used by Complainant. Universal City Studios, Inc. v. Meeting Point Co., WIPO Case No. D2000-1245 (confusing similarity found with and and complainant's marks).
6.6 Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the domain names at issue. Alcoholics Anonymous World Services, Inc. v. Raymond, WIPO Case No. D2000-0007; Bronson Plc v. Unimetal Sanayai ve Tic. A.S., WIPO Case No. D2000-0011. The Panel is thus entitled to find that Respondent has no rights or legitimate interests in respect of the domain names at issue. Bartercard Ltd & Bartercard International Pty Ltd. v. Ashton-Hall Computer Services, WIPO Case No. D2000-0177.
6.7 Respondent's registration of domain names identical to or confusingly similar to Complainant's well-known marks had to have been done in bad faith, as Complainant's use and registration of the marks long predated Respondent's registration. Zwack Unicum Rt. V. Erica J. Duna, WIPO Case No. D2000-0037.
6.8 It is true that Respondent's conduct cannot be said to come squarely within any of the examples of bad faith registration and use set out in paragraph 4(b) of the Policy. However, the examples in Paragraph 4(b) are intended to be illustrative, rather than exclusive. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
6.9 In Telstra it was established that "inaction" can constitute bad faith use, and the Telstra decision has since been cited for that proposition and followed by many subsequent Panels. See, e.g., Ingersoll-Rand v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; Guerlain, S.A. v. Peikang, WIPO Case No. D2000-0055; Compaq Computer Corp. v. Boris Beric, WIPO Case No. D2000-0042; Association of British Travel Agents Ltd. v. Sterling Hotel Group Ltd., WIPO Case No. D2000-0086; Sanrio Co. Ltd. and Sanrio, Inc. v. Lau, WIPO Case No. D2000-0172; 3636275 Canada, dba eResolution v. eR, WIPO Case No. D2000-0110; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090; Stralfors AB v. P D S AB, WIPO Case No. D2000-0112; InfoS, Inc. v. Ofer, WIPO Case No. D2000-0075.
6.10 Telstra established that whether "inaction" could constitute bad faith registration and use could only be determined by analyzing the facts in a given case.
6.11 In this case, the Panel finds that where (1) the mark is one that is widely known in the United States, where Respondent purportedly resides, and was widely known at the time Respondent registered the domain names at issue; (2) Respondent failed to file a formal response to complainant's allegations, despite having acknowledged receiving such allegations; (3) Respondent failed to respond to a letter from Complainant; and (4) there is conceivably no use to which Respondent could put the domain names in issue that would not be a bad faith use, Respondent's inaction constitutes bad faith registration and use of the domain names at issue.
7. Decision
For all of the foregoing reasons, the Panel decides that the domain names registered by Respondent are identical or confusingly similar to the service marks and trademarks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain names at issue, and that the Respondent's domain names have been registered and are being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain names and be transferred to the Complainant.
M. Scott Donahey
Panelist
Dated: July 12, 2001
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