Complainants are Universal City Studios LLC (“Universal”) and Amblin’ Entertainment, Inc. (“Amblin’”) both of Universal City, California, United States of America (“United States”), represented by Manatt, Phelps & Phillips, LLP, United States.
Respondent is Vo Cong Danh aka Cong Danh Vo of Vinh, Viet Nam. 2. The Domain Names and Registrars
The disputed domain names , , , , , and are registered with BigRock Solutions Pvt Ltd., PDR Ltd. d/b/a PublicDomainR and GoD, LLC (the “Registrars”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2015. On November 20, 2015, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On November 20, 2015, the Registrars transmitted by email to the Center their verification responses confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 25, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2015. On December 15, 2015, Complainants filed a suspension request and the proceeding was suspended on December 16, 2015. At the request of Complainants, the proceeding was reinstituted on January 16, 2016. After reinstitution, the due date for Response was extended through January 19, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 20, 2016.
The Center appointed Richard Tan as the sole panelist in this matter on January 22, 2016. 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
Complainant, Universal, is a well-known, leading film studio in the business of producing, marketing, and distributing motion pictures, other entertainment-related goods and services, and a broad variety of related consumer products and services. Complainant, Amblin’, is a leading film and television production company. Together, Complainants are the producers of the Jurassic Park motion picture franchise encompassing “Jurassic Park”, “The Lost World: Jurassic Park”, “Jurassic Park III” and “Jurassic World” (collectively “the Jurassic Parkfilm series franchise”), and the owners of related trademarks covering an extensive range of collateral goods and services branded under a series of JURASSIC-formative marks, including but not limited to JURASSIC PARK, JURASSIC PARK & Design, JURASSIC WORLD and JURASSIC WORLD & Design (collectively, the “JURASSIC Family of Marks”).
Complainants own 395 registrations for the JURASSIC Family of Marks in over 60 countries around the world, including over 350 registrations specifically for the JURASSIC PARK word and design marks; more than 30 registrations for JURASSIC WORLD and other related JURASSIC-formative marks, 96 trademark registrations in Class 9 (many covering electronic and/or video games and software) and 102 trademark registrations in Class 28 (most of which include toys and games).
Respondent has registered and is using the disputed domain names. The disputed domain name was registered on July 23, 2015. The disputed domain names , , and were registered on July 11, 2015, August 13, 2015, July 25, 2015 and July 23, 2015, respectively. The disputed domain names and were registered on July 28, 2015 and July 11, 2015, respectively. 5. Parties’ Contentions A. Complainants
Complainants contend that through their highly successful blockbuster film series, launched in 1993 with “Jurassic Park” and including three sequels, “The Lost World: Jurassic Park” (released in 1997), “Jurassic Park III” (released in 2001) and “Jurassic World” (released on June 12, 2015), the last of which holding the record for the largest global premiere, having grossed an estimated USD 500 million worldwide, the Jurassic Park film franchise has become one of the most commercially successful film franchises of all time. This franchise has grossed at least USD 3.6 billion worldwide to-date and its success has resulted in the family of JURASSIC PARK marks being among the most famous and well-known media brands throughout the world.
Complainants further contend that in addition to other intellectual property rights, Complainants are the owners of extensive rights in the distinctive trademarks and trade dress associated with the Jurassic Park franchise, including an expansive portfolio of trademark registrations and applications throughout the world.
Complainants, through their related companies and licensees, have used the JURASSIC PARK word and logo marks since at least as early as 1993, and continuously to the present, in connection with a wide variety of collateral merchandise and services associated with the Jurassic Park film franchise including, but not limited to, clothing items, games and activities, media products, bags and accessories, and household items, and since at least as early as early as 1994 in connection with interactive multimedia computer game software. Since at least as early as 1994, Complainants’ JURASSIC PARK & Design mark has been used and/or registered in connection with computer and electronic games, video entertainment, software, books, stationery supplies, comics, magazines, clothing, toys, games, and more in various countries outside the United States, including but not limited to in Viet Nam.
Complainants have continued to expand the family of JURASSIC PARK marks for a wide variety of collateral merchandise and services including, but not limited to games and activities, entertainment products, bags, clothing, household items, entertainment services, amusement parks, toys, playthings and action figures.
By virtue of Complainants’ longstanding, prominent and continuous use, as well as extensive advertising of the JURASSIC Family of Marks, the name “Jurassic” has come to be recognized by the relevant public as identifying the Jurassic Park film series franchise as well as a broad range of collaterally related goods and services associated with Complainants and Complainants have developed valuable goodwill in the JURASSIC Family of Marks.
Complainant Universal also owns domain names associated with the Jurassic Park franchise, including , , , , and . Complainants’ domain name redirects to where Complainants operate an official Jurassic World website, featuring a virtual Jurassic World theme park that showcases various protected elements from the film, licensed merchandise, online and/or downloadable games and activities for children, and more. Complainants also operate the website at with trailers and information about Jurassic World, and links to social media sites controlled and/or operated by Complainants. Further, redirects to the official Facebook Page for the Jurassic Park film franchise.
Respondent has registered and is using the seven disputed domain names, which Complainants contend are identical or confusingly similar to Complainants’ family of JURASSIC PARK marks. Complainants contend the use of these disputed domain names exploits, without authorization, the JURASSIC Family of Marks and the goodwill associated therewith.
In Viet Nam – where Respondent is believed to be a resident and/or operate its principal place of business, and operates the websites under the disputed domain names (“Respondent’s Sites”) – Complainants are the owners of Vietnamese Registration No. 16617 for the JURASSIC PARK & Design logo in international classes 9, 16, 25 and 28, for various goods and services including computer and electronic games, video entertainment, software, books, stationery supplies, comics, magazines, clothing, toys, games, and other consumer products, which was registered in Viet Nam beginning in 1994.
The disputed domain name incorporates Complainants’ JURASSIC PARK mark in its entirety. The five disputed domain names , , , and incorporate Complainants’ JURASSIC WORLD mark in its entirety. The dominant portion of the disputed domain name , i.e., “Jurassic” is identical or confusingly similar to Complainants’ JURASSIC Family of Marks.
Respondent has no rights or legitimate interests with respect to the disputed domain names which were registered between July 11, 2015 and August 13, 2015.
Complainants contend that Respondent has not been authorized or licensed by Complainants to use any of the JURASSIC Family of Marks. Respondent is not making any legitimate noncommercial or fair use of the disputed domain names. Respondent is using the disputed domain names to capitalize upon the reputation and goodwill of the JURASSIC Family of Marks to divert the attention of web users who are interested in Complainants, and drive traffic to Respondent’s Sites. Respondent uses Respondent’s Sites to generate revenue by promoting and distributing its own dinosaur-themed video games and/or video games created by third-party developers. Further, Respondent uses the trademarks JURASSIC PARK and JURASSIC WORLD, as well as other protected elements of the Jurassic Park franchise throughout Respondent’s Sites, in connection with the promotion and sale of certain Respondent’s goods. Respondent has not used, or made demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services.
Further, Respondent’s gaming websites, including but not limited to Respondent’s dinosaur-themed video games and other related products and services, are the same or similar to, and directly compete with, the products and services of Complainants, using the JURASSIC marks that are identical or confusingly similar to Complainants’ JURASSIC Family of Marks. Such unauthorized registration and/or use of the active domain names incorporating JURASSIC PARK, JURASSIC WORLD and/or other similar JURASSIC marks misleads Internet users into thinking that Respondent’s websites, products and services are associated with or sanctioned by Complainants, when they are not, and dilutes Complainants’ famous JURASSIC Family of Marks. This is not a legitimate use of the disputed domain names.
Respondent’s intentional exploitation of Complainants’ famous JURASSIC Family of Marks to divert consumer attention away from sites owned or authorized by Complainants and to generate revenue by driving deceived and misled customers to Respondent’s Sites where they can view, download and/or use Respondent’s goods, demonstrates that Respondent has not made any use of, or any demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services.
Respondent is also not commonly known by any of the disputed domain names.
Complainants further contend that the disputed domain names were registered and are being used in bad faith. Respondent had actual or constructive notice of Complainants’ JURASSIC Family of Marks when it registered and used the disputed domain names. Respondent could not have chosen the disputed domain names innocently or fortuitously. Complainants own a registration for the JURASSIC PARK logo in Viet Nam, Reg. No. 16617 for various goods and services including computer and electronic games, video entertainment, software, comics, magazines, clothing, toys, games, and other consumer products which dates back to 1994, over two decades before Respondent registered the disputed domain names. Likewise, Respondent at least had constructive knowledge of Complainants’ goods and/or services offered in connection with the JURASSIC WORLD and/or JURASSIC Family of Marks given the tremendous success Jurassic World has enjoyed worldwide, including but not limited to in Viet Nam. Jurassic World earned over USD 1.2 million in Viet Nam during its first weekend and has grossed over USD 4.4 million in Viet Nam in less than six months. Respondent was blatantly attempting to capitalize on the unprecedented worldwide success of the Jurassic World film at the time of registration. Respondent had notice that the disputed domain names are identical or confusingly similar to Complainants’ JURASSIC Family of Marks and accordingly were registered and are being used in bad faith.
Further, Respondent’s registration of seven domain names incorporating various combinations of Complainants’ well-known and famous marks is evidence of a pattern of conduct of registering domain names to prevent Complainants from reflecting their JURASSIC Family of Marks in corresponding domain names. Such misconduct demonstrates that Respondent registered the disputed domain names in bad faith.
Complainants contend that Respondent has intentionally used the active disputed domain names in an attempt to attract, for commercial gain, Internet users to its websites or other on-line locations, by creating a likelihood of confusion with Complainants’ marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or locations or of a product or service on its websites or locations. In registering the disputed domain names, Respondent intended to profit from and exploit Complainants’ JURASSIC Family of Marks. Respondent’s improper holding of the passive disputed domain names amounts to use in bad faith. B. Respondent
Respondent did not reply to Complainants’ contentions. 6. Discussion and Findings
The Panel will first consider Complainants’ request for consolidation, that is, to allow a single complaint to be brought by the two Complainants against Respondent. Complainants rely on the following grounds to support their request, namely: (i) as joint owners of the trademark rights on which the Complaint is based, Complainants share a common legal interest and grievance with respect to the disputed domain names; and (ii) consolidation would be fair and equitable to all parties. Complainants rely on previous UDRP panel decisions considering the consolidation of complainants, including MLB Advanced Media, The Phillies, Padres LP v. OreNet, Inc.,WIPO Case No. D2009-0985.
Neither the Policy nor the Rules (including the Rules as recently amended on July 31, 2015) expressly contemplate the consolidation of multiple complainants (or respondents) in a single administrative proceeding, and generally speak in singular terms of a “complainant” when referring to proceedings under the Policy. Previous Panels have nonetheless concluded that the use of the singular “complainant” in the Policy and Rules was not meant to preclude multiple legal persons in appropriate circumstances from jointly seeking relief in a single administrative proceeding: see MLB Advanced Media, The Phillies, Padres LP v. OreNet, Inc., supra (“consolidation of multiple complainants in a single complaint should be permitted if the complainants have a truly common grievance against the respondent, subject to the general condition that is equitable and procedurally efficient do so”), Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc./ Official Tickets Ltd,WIPO Case No. D2009-0331; ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments, Inc.,WIPO Case No. D2008-0936 and National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd,WIPO Case No. DAU2008-0021.
As noted in paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), UDRP panels have articulated principles governing the question of whether a complaint filed by multiple complainants may be brought against (one or more) respondents. These criteria encompass situations in which (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants’ individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation; or in the case of complaints brought (whether or not filed by multiple complainants) against more than one respondent, where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.
In this case, a complaint has been filed by two complainants against a single respondent relating to the registration and use of several domain names by Respondent which are alleged to be confusingly similar to a family of marks in which Complainants assert rights. Complainants accordingly have common grievances arising from, amongst other things, Respondent’s alleged pattern of conduct of registering domain names which involve the same family of marks owned by Complainants. Common questions of fact and law will be involved in the determination of these grievances and complaints. Having regard to the fact that the Policy and Rules were designed to provide a quick and efficient means of resolving disputes, there is no compelling reason in the Panel’s view why a single Complaint should not be allowed to be pursued by Complainants in this case in order to determine these common and related questions of fact and law, which might otherwise have to be resolved by the filing of separate complaints. The determination in a single administrative proceeding will avoid the need for multiple complaints before possibly different panels and with the potential for inconsistent findings, and will accordingly be procedurally efficient. The Panel further considers that the consolidation will not cause prejudice to Respondent (and Respondent has not contended otherwise) and will be fair and equitable to all the parties.
The Panel having considered the request for consolidation and the grounds in support, finds that there are good grounds for allowing Complainants in this case to consolidate their requests for relief against Respondent in a single Complaint and accordingly allows the request.
Turning to the merits of the Complaint, Complainants have the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain names:
(i) that the disputed domain names are identical or confusingly similar to a trade mark or service mark in which Complainants have rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
Based on the evidence adduced by Complainants as noted above, this Panel has no hesitation in finding that Complainants have rights in the JURASSIC Family of Marks which marks have been registered in over 60 countries around the world, including in Viet Nam where Respondent appears to reside or is based. These marks include JURASSIC PARK, JURASSIC PARK & Design, JURASSIC WORLD and JURASSIC WORLD & Design, which have been registered for a wide variety of goods and services including games and activities, entertainment products, bags, clothing, household items, entertainment services, amusement parks, toys, playthings and action figures.
This Panel is further satisfied that Complainants have common law rights in JURASSIC and the JURASSIC Family of Marks as a result of the Complainants’ long and extensive use of the marks, as evident from the evidence submitted by Complainants, including the success of the Jurassic Park film series and the fact that the “jurassic” name in particular has become recognized by the public as identifying the Jurassic Park film series franchise as well as a broad range of collaterally related goods and services associated with Complainants and that Complainants have accordingly acquired valuable goodwill in JURASSIC and the JURASSIC Family of Marks.
The threshold test for confusing similarity under the Policy involves a comparison between the relevant marks belonging to Complainants and the disputed domain names to determine the likelihood of Internet user confusion. In order to satisfy this test, the relevant marks would generally need to be recognizable as such within the disputed domain names, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion.
In relation to the disputed domain name , this disputed domain name incorporates Complainants’ JURASSIC PARK mark in its entirety as well as the “Jurassic” name.
In relation to the five disputed domain names , , , and , these disputed domain names incorporate Complainants’ JURASSIC WORLD mark in its entirety as well as the “Jurassic” name.
The mere inclusion of generic, descriptive or common words like “games”, “the game” and “wallpaper” in the above domain names is not sufficient to prevent a finding of confusing similarity where the disputed domain names incorporate well-known marks, as in this case. See, for example, Wal-Mart Stores, Inc. v. Horoshiy, Inc.,WIPO Case No. D2004-0620.
In relation to the disputed domain name , the dominant portion of the disputed domain name is “jurassic”, which is identical to Complainants’ “Jurassic” name and is confusingly similar to Complainants’ JURASSIC Family of Marks which has the “jurassic” name as its dominant portion: see for example Public Service Electric & Gas Company v. Vanguard Resolutions LLC,WIPO Case No. D2012-0618.
In this Panel’s view, the test of confusingly similarity is clearly satisfied. This Panel finds that all the disputed domain names are confusingly similar to marks in which Complainants have rights, for the purpose of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
As several UDRP panels have found, a complainant is only required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name and once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In this case, Complainants contend that Respondent has not been authorized or licensed by Complainants to use any of the JURASSIC Family of Marks. Respondent is also not commonly known by any of the disputed domain names or any similar names. Respondent is also not making any legitimate noncommercial or fair use of the disputed domain names.
This Panel finds on the undisputed evidence that Respondent has not been authorized or licensed by Complainants to use any of the JURASSIC Family of Marks nor has Respondent been commonly known by any of the disputed domain names or any similar names.
In respect of Respondent’s five disputed domain names,, , , and , that resolve to active websites offering dinosaur-themed video games by Respondent and/or third party developers, this Panel finds that Respondent’s websites give the false and misleading appearance that they are authorized by, sponsored by or affiliated with Complainants, when they are not. This Panel finds that Respondent is using the disputed domain names for these active websites to capitalize upon the reputation and goodwill of the JURASSIC Family of Marks to divert traffic to Respondent’s websites to generate revenue by promoting and distributing its own dinosaur themed video games and/or video games created by third-party developers. Respondent’s websites are similar to and directly compete with the products and services of Complainants, using JURASSIC marks that are identical or confusingly similar to Complainants’ JURASSIC Family of Marks. Such unauthorized registration and use of the disputed domain names does not constitute a legitimate noncommercial use of the disputed domain names but on the contrary demonstrates that Respondent used the disputed domain names to misleadingly divert consumers to Respondent’s websites for commercial gain.
In respect of Respondent’s use of the disputed domain names and that do not resolve to any active websites, a mere passive holding of a domain name is insufficient to constitute a legitimate noncommercial or fair use of a domain name: see, for example, Netcentives Inc. v. B W Brody Co.,WIPO Case No. D2000-0672.
This Panel further finds in evaluating the evidence that Respondent has not used or made demonstrable preparations to use any of the disputed domain names in connection with a bona fide offering of goods or services.
In all the circumstances, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names and that accordingly paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that a complainant must, in addition to the matters set out above, demonstrate that the relevant disputed domain name has been registered and is being used in bad faith.
The undisputed evidence establishes that Respondent is not affiliated with Complainants and has no license or other authorization to use Complainants’ marks.
The disputed domain names were also registered well after Complainants’ marks were registered and in use. This Panel finds that Respondent must have had actual or constructive notice of Complainants’ marks when registering the disputed domain names, as asserted by Complainants. In particular, Complainants have owned a registration for the JURASSIC PARK logo in Viet Nam (where Respondent appears to be based or resides) since 1994. Given the success of Complainants’ highly successful JURASSIC film franchise worldwide and as further evidenced by the success of Jurassic World in Viet Nam, which earned over USD 1.2 million during its first weekend and grossed over USD 4.4 million in Viet Nam in less than six months, Respondent was clearly intending by the use of the disputed domain names to ride on the success of Complainants’ marks and goodwill and reputation.
This Panel finds that Respondent’s incorporation of Complainants’ well-known and famous marks in their entirety as part of the disputed domain names and/or in combination with other generic or descriptive terms must have been deliberate, and, as Complainants submit, constitutes a pattern of conduct of registering domain names to prevent Complainants from reflecting their JURASSIC Family of Marks in corresponding domain names. Such conduct demonstrates that Respondent registered the disputed domain names in bad faith.
Furthermore, this Panel finds that Respondent must have intentionally used the disputed domain names for Respondents’ active websites to attract, for commercial gain, Internet users to its websites or other on-line locations, by creating a likelihood of confusion with Complainants’ marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or locations or of a product or service on its websites or locations. Respondent intended on the evidence to profit from and exploit Complainants’ JURASSIC Family of Marks. Such conduct is also evidence of bad faith.
This Panel further finds that Respondent’s improper holding of the disputed domain names for its passive websites amounts to use in bad faith. As established in a number of cases, for example, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, an apparent lack of active use of a domain name (i.e. passive holding) does not such prevent a finding of bad faith.
Taking all these matters and circumstances into consideration, this Panel concludes and finds that the disputed domain names were registered and are being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names , , , , , and be transferred to Complainant Universal City Studios LLC.
Richard Tan
Sole Panelist
Date: February 9, 2016
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