Universal City Studios, Inc. v. Hit-Max Incorporated

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 <universalstudioscitywalk.com>

and <universalstudiosthemeparks.com>, which domain names are registered

with Internet Domain Registrars Corporation d/b/a Registrars.com, located in Vancouver,

British Columbia, Canada ("Registrars.com").

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, Registrars.com requesting

it to: (1) confirm that the domain names at in issue are registered with Registrars.com;

(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,

Registrars.com confirmed by reply e-mail that the domain names at issue are registered

with Registrars.com, 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, Registrars.com 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

Registrar.com’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: http://www.usinfo.com/).

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 <universalstudioscitywalk> 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 <universalstudiosthemeparks.com>

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 <osakauniversalstudios.com> and <universalstudiososaka.com>

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. eResolution.com,

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; InfoSpace.com, 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 <universalstudioscitywalk.com> and <universalstudiosthemeparks.com>

be transferred to the Complainant.

M.

Scott Donahey

Panelist

Dated: July 12, 2001

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