WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Universal City Studios, Inc. v. Finlaw Agency
Case No. D2002-0378
1. The Parties
Complainant is Universal City Studios, Inc. ("Universal"), 100 Universal City Plaza, Universal City, California 91608, United States of America.
The Respondent is Finlaw Agency ("Finlaw"), 2202 Magnolia Drive, Panama City, Florida 32408, United States of America. (Registrant of ). The administrative contact for the Respondent is Arthur Finlaw, ResS, Inc., 4508 Magnolia Drive, Panama City, Florida 32408, United States of America; the technical contact is Domain Registrations, I-1 Internet Group, Inc., Box 151, Panama City, Florida 32402, United States of America.
2. The Domain Name and Registrar
The Domain Name in issue is: (the "Domain Name").
The registrar is BulkR, 10 East Baltimore Street, Suite 1500, Baltimore, Maryland 21202, United States of America. (the "Registrar").
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received Universal�s complaint via email on April 23, 2002, and in hard copy on April 26, 2002.
The Center contacted the Registrar on April 25, 2002, requesting verification of the Domain Name�s registration. On May 1, 2002, the Center received confirmation from the Registrar that:
1) Complainant had sent it a copy of the complaint, 2) the Domain Name was registered with the Registrar, 3) Respondent is the current registrant, 4) the Uniform Domain Name Dispute Resolution Policy ("Policy") applies to the Domain Name, and 5) the current status of the Domain Name is active. The Registrar additionally confirmed the contact names, addresses, email addresses, and phone number for the administrative and technical contacts for the Domain Name.
After verifying that the complaint (henceforth, the "Complaint") complied with the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), and Policy, the Center notified the Respondent�s administrative and technical contacts on May 2, 2002, of the commencement of the administrative proceeding. It notified Respondent that Complainant had submitted the Complaint as described above. Accordingly, the administrative proceeding commenced on May 2, 2002. The notification requested that Respondent reply by May 22, 2002, in accordance with Paragraph 5 of the Rules and the Supplemental Rules. Furthermore, the notification identified the consequences of default, namely that a panel would still decide the case and that, in accordance with Rules, Paragraph 14, the panel could draw any appropriate inferences from the default. The notification additionally notified Respondent that Complainant elected a single member panel who would be appointed within five days after the Response was due. In the event that Respondent preferred a three member panel, Respondent could so designate, with the required payment, and would have the option to nominate three panelists for possible inclusion on the panel. Finally, Respondent was notified of the identity and contact information of the Case Manager. A copy of the notification was e-mailed to Complainant.
Having received no response to the notification by the May 23, 2002 deadline, the Center issued a Notification of Respondent Default on May 24, 2002. The notice stated that the Center would appoint a single panelist to comprise the panel, the panel would be informed of Respondent�s default and it would be up to the panel�s discretion whether to consider any late-filed Response.
On May 27, 2002, Complainant requested that this matter be stayed so that the parties could pursue an amicable resolution of this matter. A copy of this request was sent to the Respondent by email and hard copy. On May 29, 2002, the Center suspended these proceedings until July 28, 2002. On July 30, 2002 Complainant requested a further thirty-day extension of the suspension so the parties could amicably resolve the matter; this request was sent by email and by hard copy to the Respondent. On July 31, 2002, a further extension was granted suspending these proceedings until August 27, 2002. On August 27, 2002, Complainant requested that these proceedings be reinstated; this request was sent to Respondent by email and hard copy. On August 27, 2002, this proceeding was reinstated.
On August 28, 2002, Complainant was advised of the identity of the undersigned sole Panelist. Additionally, the Center notified Complainant that the Panelist had complied with Paragraph 7 of the Rules by submitting a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
4. Factual Background; Parties� Contentions
a. The Trademarks
Universal�s Complaint alleges, and includes evidence showing, that its UNIVERSAL and UNIVERSAL STUDIOS marks are federally registered in connection with a wide variety of goods and services in the United States. Universal has also registered these marks in a number of countries throughout the world as shown in Exhibit 5 to the Complaint. Universal�s federal registration in the United States for its UNIVERSAL and UNIVERSAL STUDIOS trademarks predate the Respondent�s registration of the Domain Name at issue here.
b. Jurisdictional Basis
As stated, the Registrar verified that the Policy applies to the Domain Name. Therefore, as this proceeding is likewise governed by the Policy, the Rules, and the Supplemental Rules, the Panel has jurisdiction to decide this dispute.
c. The Complaint
Universal asserts as follows:
- Complainant has enjoyed long and continuous use of the UNIVERSAL and UNIVERSAL STUDIOS trademarks, since 1912 and 1964, respectively.
- The marks are well-known and entitled to protection under the Policy.
- The disputed Domain Name is identical or confusingly similar to the trademarks UNIVERSAL and UNIVERSAL STUDIOS.
- The addition of the ".com" top level domain (TLD) and the generic term "reservations" does not differentiate the Domain Name from the marks.
- Complainant has made substantial worldwide commercial use of the UNIVERSAL and UNIVERSAL STUDIOS marks prior to Respondent�s registration of the Domain Name.
- Respondent is a travel agency in Florida that books trips to various locations in Florida including the Universal Studios theme park.
- Respondent is not a licensee of the UNIVERSAL or UNIVERSAL STUDIOS marks and therefore has no legitimate interest in the Domain Name.
- Respondent has not set forth any legitimate right to use the Domain Name.
- Respondent has registered and used the Domain Name in bad faith.
d. Response
As noted above, Respondent has provided no response, although the deadline for doing so expired on May 23, 2002. Accordingly, the Respondent is in default. Given Respondent�s default, the Panel can infer that Complainant�s allegations are true where appropriate to do so. Talk City Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (February 29, 2000). Nonetheless, Complainant retains the burden of proving the three requisite elements of Paragraph 4(a) of the Policy.
5. Discussion and Findings
Accordingly, the Panel now proceeds to consider this matter on the merits in light of the Complaint, uncontested as no response was filed, the Policy, the Rules, and other applicable authority.
Paragraph 4(a) of the Policy provides that Complainant must prove, with respect to each Domain Name, each of the following:
(i) The Domain Name in issue is identical or confusingly similar to Universal�s trademark(s) at issue here; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
a. Effect of the Default
In this case, the Panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions made and supported by evidence submitted by Complainant. The Panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented to the Panel by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence.
In particular, by defaulting and failing to respond, Respondent has failed to offer the Panel any of the types of evidence set forth in Paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interest in the Domain Name, such as use or preparation to use the Domain Name prior to notice of the dispute, being commonly known by the Domain Name, or making legitimate noncommercial or fair use of the Domain Name.
b. Complainant�s Proof
(i) Domain Name Confusingly Similar to Trademarks
The Domain Name is, but for the addition of the ".com" top-level domain (TLD) and insertion of the word "reservations," identical to the registered trademark UNIVERSAL and UNIVERSAL STUDIOS belonging to Complainant Universal. Because web users typically add a TLD such as ".com" or ".net" to a mark when attempting to locate the mark�s owner on the Internet, and because the TLD is a functional necessity rather than an arbitrary trademark choice, the TLD is properly ignored when considering similarity. See College Summit, Inc. v. Yarmouth Educational Consultants, Inc., WIPO Case No. D2000-1575 (January 17, 2001).
Likewise, the addition of the generic word "reservations" does not alter the fact that the Domain Name incorporates Complainant�s UNIVERSAL and UNIVERSAL STUDIOS marks in their entirety. It is well established that the addition of a single, generic term to an otherwise strong trademark does not necessarily eliminate or even reduce the risk of confusion between a trademark and a domain name. See MasterCard International Incorporated v. John Henry Enterprises, WIPO Case No. D2001-0632 (June 28, 2001) (adding word "international" to the trademark "MasterCard" does not eliminate confusion"); AT&T Corp. v. Fred Rice, WIPO Case No. D2000-1276 (November 25, 2000) (adding word "global" to an AT&T trademark was insufficient to distinguish the domain name from the trademark). If anything, the addition of the word "reservations" may be likely to confuse Internet users into believing that the Domain Name is the official or approved location on the Internet where reservations may be made for Universal Studios� services.
For the above reasons, the Panel concludes that the Domain Name is confusingly similar to Universal�s trademarks. Complainant has met the requirement of Paragraph 4(a)(i) of the Policy.
(ii) Whether Respondent Has Rights Or Legitimate Interest In the Domain Name
There is no evidence in the record that Respondent has any legitimate interest in the Domain Name. The fame, distinctiveness, strength, and priority of use of Complainant�s marks, coupled with the Domain Name being confusingly similar to Complainant�s marks and Respondent�s failure to advance any of the defenses provided in Paragraph 4(c) of the Policy, lead this Panel to conclude that Respondent has no rights or legitimate interest in the Domain Name.
(iii) Registration and Use in Bad Faith
In Exhibits 12, 13, and 14 of the Complaint, Universal submits copies of three letters which were sent to Mr. Arthur Finlaw, the administrative contact for the Respondent. These letters were dated November 27, 2001, January 15, 2002, and March 12, 2002. The letters put Respondent on constructive notice that the UNIVERSAL and UNIVERSAL STUDIOS marks are owned by Universal and requested that Respondent discontinue use of the Domain Name. These facts alone, however, do not establish Respondent�s knowledge of the marks prior to its registration, so they provide little support to Complainant.
The Complaint also provides evidence that Respondent had actual notice of Complainant�s ownership of the marks by virtue of Respondent�s use of the marks. Respondent, in addition to owning the Domain Name at issue, also owns . A copy of the web site located at that domain name is attached to the Complaint. That web site appears to be a system for making reservations at popular tourist attractions in Florida, including Universal Studios, which is owned by Complainant. Exhibit 8 of the Complaint shows a page on where users can select certain destinations, one of which is entitled "." The Complaint alleges that the link at one time led users to a page where reservations could be made for the resort. (As of the date of this decision, this web site was inoperative.)
Of further significance to the issue of whether Respondent acted in bad faith is the fame of the marks, their federal registration, and the Respondent�s further use of the marks on its related website.
Marks that have a "high degree of inherent or acquired distinctiveness" are entitled to a greater scope of protection than others. See Digital City Inc. v. Smalldomain, WIPO Case No. D2000-1283 (November 6, 2000). This Panel finds that Complainant has demonstrated that its longstanding use of the UNIVERSAL and UNIVERSAL STUDIOS marks, its very high volume of business transacted under or in connection with the marks, as well as the worldwide use and recognition of the marks, places its marks in the category of trademarks with a "high degree of � acquired distinctiveness" and that the marks, as a result of their fame, enjoy a wide scope of protection. See also Universal City Studios, Inc. v. Meeting Point Co., WIPO Case No. D2000-1245 (December 7, 2000). This fame makes it likely that Respondent was aware of the existence of the Complainant and of its trademark rights as of the time it registered the Domain Name.
The federal registration of the UNIVERSAL and UNIVERSAL STUDIOS marks prior to Respondent�s registration of the Domain Name provides further support for this conclusion. Under Section 22 of the United States Trademark Act, "[r]egistration of a mark on the principal register . . . shall be constructive notice of the registrant�s claim of ownership thereof." As a matter of United States trademark law, therefore, it may be presumed that Respondent was on notice of Complainant�s rights in the UNIVERSAL and UNIVERSAL STUDIOS marks prior to registering the Domain Name. See, e.g., Barney�s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059 (April 2, 2000).
More telling still is the fact that Respondent uses the "Universal Globe" (which incorporates the UNIVERSAL STUDIOS mark) in its website. Furthermore, the home page at specifically states that the "UniversalStudiosR" is not affiliated with Universal Studios® (as shown in Exhibit 11 attached to the Complaint). These uses demonstrate that Respondent knew of the marks and of their ownership by Universal. Despite the disclaimer, the Panel finds that Respondent�s registration and use of the Domain Name is an attempt to attract users to its website by improperly associating itself with Complainant�s marks and Complainant for commercial gain, in violation of Paragraph 4(b)(iv) of the Policy.
A reasonable argument could perhaps have been made by Respondent that it has used the marks merely to truthfully designate the identity of the theme park (Universal Studios) to which it books vacations for its customers. Accordingly, such usage might, in appropriate circumstances, be deemed "nominative fair use." Several panels have held that the truthful, nominative use of a trademark in connection with the sale of the goods or services that are properly identified by that trademark does not constitute bad faith under the Policy. See Adaptive Molecular Technologies, Inc. v. Woodward, WIPO Case No. D2000-0006 (February 28, 2000); Giddings & Lewis LLC v. McKean, WIPO Case No. D2000-1150 (March 14, 2001); Nicholas v. Magidson Fine Art, Inc., WIPO Case No. D2000-0673 (September 27, 2000); Kendall v. Mayer, WIPO Case No. D2000-0868 (October 26, 2000); The Kittinger Company, Inc. v. Kittinger Collector, AF-0107a,b (eRes May 8, 2000). Nominative fair use is a well-established doctrine under U.S. trademark law as well. See, e.g., The New Kids On The Block v. News America Publishing Inc., 971 F.2d 302 (9th Cir. 1991).
Respondent, however, has not advanced any such argument � or indeed any argument at all � in this case. While a default does not automatically result in a judgment for the complainant, who at all times bears the burden of proving its case, it does leave the Panel without any factual basis to conclude that a defense of nominative fair use or legitimate ownership of rights in the domain name should succeed.
Taking into account the longstanding use of the UNIVERSAL and UNIVERSAL STUDIOS trademarks by Complainant, combined with the worldwide registrations, the fame of the marks, the incorporation of the marks � and other marks of Complainant�s, such as the Universal Globe � into Respondent�s websites, as well as Respondent�s failure to respond to the Complaint, either in the manner required by this proceeding or otherwise, the Panel concludes that Complainant has established that Respondent engaged in bad faith registration and use as defined in the Policy.
6. Decision
In light of the above findings and analysis, the Panel decides that Universal has met its burden of proving that: (1) the Domain Name is confusingly similar to the marks belonging to the Complainant; (2) Respondent has no rights or legitimate interests in the Domain Name; and (3) the Domain Name has been registered and is being used by Respondent in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel requires that registration of the Domain Name be transferred to Complainant Universal City Studios, Inc.
Michael Albert
Sole Panelist
Dated: September 10, 2002
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