WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Universal City Studios LLLP v. M
Case No. D2005-1124
1. The Parties
The Complainant is Universal City Studios LLLP, United States of America, represented by Seyfarth Shaw, United States of America.
The Respondent is M, United States of America.
2. The Domain Names and Registrar
The disputed domain names and are registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) on October�25,�2005. On October�26,�2005, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain names at issue. On October�26,�2005, Wild West Domains, Inc. 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 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 November�1,�2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November�21,�2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November�22,�2005.
The Center appointed Mr. Steven Fox as the sole panelist in this matter on December�2,�2005. 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 uncontested facts are that
a. Complainant owns the trademark and service mark rights in UNIVERSAL ORLANDO, UNIVERSAL and UNIVERSAL STUDIOS. Complainant owns numerous, incontestable United States registrations of those rights. The Certificates of Registration date from 1980 to 1991.
b. Complainant has been producing and distributing motion pictures under the mark UNIVERSAL since 1912.
c. Complainant has been using UNIVERSAL STUDIOS as a mark in connection with numerous goods and services including paper products, bags, wallets, candy, towels, toys, games, clothes, glasses and amusement parks since the 1960s.
d. In 1990, Complainant opened a theme park in Orlando, Florida, which it has operated under the mark UNIVERSAL STUDIOS FLORIDA. Since January�2000, Complainant has also used the mark UNIVERSAL ORLANDO.
e. Since August,�1999, Complainant has used the domain name to advertise its services under the UNIVERSAL ORLANDO mark throughout the world.
f. Complainant received a United States registration of its UNIVERSAL ORLANDO mark on January�2,�2001.
g. Complainant has also spent substantial sums advertising and promoting their goods and services.
h. Respondent obtained the domain names at issue on or about July�8,�2004 . The domain names have been parked at various web servers since then, and do not appear to have ever pointed to any other type of website.
5. Parties’ Contentions
A. Complainant
i. Complainant argues that its almost ninety years of exclusive and continuous use of the UNIVERSAL mark, its almost thirty-five years of continuous and exclusive use of the UNIVERSAL STUDIOS mark and five years of exclusive and continuous use of the UNIVERSAL ORLANDO mark give it exceptionally strong rights in the UNIVERSAL set of marks.
ii. Complainant argues that the addition of the generic term “visit” to its UNIVERSAL ORLANDO mark leaves the resulting VISIT UNIVERSAL ORLANDO likely to be confused with UNIVERSAL, UNIVERSAL STUDIOS and UNIVERSAL ORLANDO.
iii. Complainant also argues that it has found no evidence that the Respondent has any rights in UNIVERSAL, UNIVERSAL STUDIOS or UNIVERSAL ORLANDO; nor in the domain names at issue.
iv. Complainant argues finally that Respondent’s parking of the domain names, and offering to sell them, is registration and use in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant is correct that the addition of generic or descriptive words is not sufficient to distinguish a mark from its subsequent adopter. Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 “the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark.” Respondent added “visit” to Complainant’s UNIVERSAL ORLANDO mark. Visit Universal Orlando is confusingly similar to UNIVERSAL ORLANDO. Which top level domain name is used is irrelevant.
B. Rights or Legitimate Interests
Respondent did not reply; thus, the record has no evidence to support a finding that Respondent has rights or legitimate interests in the domain names. Indeed, the timing of the Respondent’s registration of the domain names – being so many, many years after Complainant’s first, and wide-spread, use of its UNIVERSAL family of marks – leaves one hard-pressed to imagine what rights or legitimate interests in the domain names Respondent could have. The facts that the domain names resolve to ads for services of registering domain names, and/or to offers to sell the domain names, leaves the Panel with the conclusion that the Respondent has no rights or legitimate interests in the domain names.
C. Registered and Used in Bad Faith
Those same facts – that the domain names resolve to ads for services of registering domain names, and/or to offers to sell the domain names – supports the finding that the Respondent registered and used the domain names in bad faith. Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (doing nothing with a domain name, “passive holding”, may amount to bad faith registration and use). This Respondent is not just passively holding the domain names; it is offering them for sale. It’s comment to counsel for Complainant – that “our company has decided to keep our domain names until years 2014, or other wise [sic.] we can make an agreement to benefif [sic.] both company [sic.]” – is exactly the hostage-holding which the Policy is aimed at rectifying.
7. Decision
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 and be transferred to the Complainant.
Steven Fox
Sole Panelist
Date: December�7,�2005
Full & Egal Universal Law Academy