Universal City Studios LLLP v. “MF” aka Mike Flynn; This domain is not active

WIPO Arbitration and

Mediation Center

ADMINISTRATIVE PANEL

DECISION

Universal City Studios LLLP v. MF (aka Mike Flynn) and “this domain

is not active”

Case No. D2004-0371

1. The Parties

Complainant is Universal City Studios LLLP (“Complainant” or “Universal”), a limited liability partnership organized and existing under the laws of the State of Delaware, with a place of business in, Universal City, California, United States of America.

Respondent is MF (aka Mike Flynn) (“Respondent” or “MF”)

located in, New York, New York United States of America and “this domain

is not active”

2. The Domain Name and Registrar

The domain name at issue is <thefastandthefurious3.com> (the “Domain

Name”). The registrar is InterCosmos Media Group, Inc. d.b.a. directNIC.com

(the “Registrar”) located at 650 Pydras Street, Suite 1150, New

Orleans, Louisiana 70130 USA.

3. Procedural History

On May 20, 2004, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint of Complainant via email. On May 21, 2004, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. On May 24, 2004, the Center received hardcopy of the Complaint. The Complainant paid the required fee.

On May 24, 2004, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Names and that the Domain Names are registered in the Respondent’s name.

On May 25, 2004, the Center requested amendment of the Complaint. On June 4, 2004, the Center received an Amendment to the Complaint from Complainant.

The Center verified that the Complaint with Amendment satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

On June 8, 2004, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint with Amendment, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On June 30, 2004, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.

On July 12, 2004, after the Center received a completed and signed Statement

of Acceptance and Declaration of Impartiality and Independence from Richard

W. Page (the “Sole Panelist”), the Center notified the parties of

the appointment of a single-arbitrator panel consisting of the Sole Panelist.

4. Factual Background

Complainant is the owner of the trademark and service mark THE FAST AND THE FURIOUS (the “Mark”). In the fall of 2000, Complainant announced the release in mid-2001 of a feature film entitled “The Fast and The Furious.” On November 15, 2000, Complainant registered the domain name <thefastandthefurious.com> and in December 2000, Complainant began use of the Complainant’s Mark in connection with on-line services providing information about films and other subjects at the website accessed at the URL <www.thefast andthefurios.com>.

On June 22, 2001, Complainant released the feature film entitled “The Fast and The Furious,” which portrayed gangs in the San Fernando Valley near Los Angeles, California. The street racing of automobiles specially adapted for that purpose was a prominent feature of the film. The film was instantly extremely successful, grossing in excess of US$140,000,000 in the Untied States, and received significant media coverage, Complainant began distribution of videocassettes and digital video discs of the film on January 2, 2002, and distribution of those goods continues to the present day.

Beginning in July 2001, Complainant licensed the Complainant’s Mark in the United States for use on and in connection with a wide variety of merchandise, including hats and caps, t-shirts, sweatshirts, posters, artwork, model cars and other goods.

The commercial success of the film “The Fast And The Furious” led Complainant to produce and release a sequel to the film, entitled “2 Fast 2 Furious,” on June 6, 2003. The second film was as successful as the first, grossing over US$127,000,000 in the United States and over US$213,000,000 worldwide. Complainant spent over US$50,000,000 promoting both “The Fast And The Furious” films.

Based on the success of the first two films, Complainant has announced that

it intends to produce and release the third film in the series. While the release

title of the film has not yet been confirmed, a natural name for the film would

the “The Fast And The Furious 3.”

5. Parties’ Contentions

A. Complainant’s contentions

i. Complainant contends that in addition to common law rights in the Mark, Complainant owns a United States service mark registration for the Mark and several allowed intent-to-use applications for the Mark. Complainant asserts that its service mark registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the Mark. 15 U.S.C. § 1115.

ii. Complainant argues that the Domain Name is confusingly similar to the Mark, pursuant to Paragraph 4(a)(i) of the Policy, because it wholly incorporates the Mark, with the addition of generic terms.

iii. Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to Paragraph 4(a)(ii). Respondent is neither licensed nor otherwise permitted to use the Mark or to register the Domain Name. Complainant further contends that that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name. The Domain Name has never resolved to an active website. Respondent has never been known by the Domain Name. With actual and/or constructive knowledge of Complainant’s pre-existing Mark, Respondent cannot make any bona fide use of the Domain Name.

iv. Complainant contends that Respondent registered and is using the Domain

Name in bad faith in violation of Paragraph 4(a)(iii). The Domain Name was registered

on May 22, 2003, just two weeks before the release of the second film. Inactivity

in the Domain Name does not justify its registration. See Telstra Corp. v.

Nuclear Marshmellows, WIPO Case No. D2000-0003;

Lancôme Parfums el Beauté & Cie. v. SL, Blancel Web, WIPO

Case No. D2001-0028.

In addition, Complainant alleges that Mark had been used for a long period

prior to the registration of the Mark and that “[i]t would be difficult,

if not impossible, for Respondent to use the Domain Name as the name of any

business, product or service for which it would be commercially useful without

violating Complainant’s rights.” Cellular One Group v. Paul Brien,

WIPO Case No. D2000-0028.

B. Respondent’s contentions

i. Respondent does not dispute Complainant’s allegations that it has common law rights and registrations of the Mark.

ii. Respondent does not dispute Complainant’s allegations that the Domain Name is identical with or confusingly similar to the Mark.

iii. Respondent does not dispute Complainant’s allegations that Respondent has no rights to or legitimate interests in the Domain Name.

iv. Respondent does not dispute Complainant’s allegation that Respondent

registered or used the Domain Name in bad faith.

6. Discussion and Findings

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.”

Because both the Complainant and Respondent are domiciled in the United States

and 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. Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie,

WIPO Case No. D2000-1772, n. 3.

A respondent is not obliged to participate in a domain name dispute proceeding,

but if it were to fail to do so, asserted facts that are not unreasonable would

be taken as true and the respondent would be subject to the inferences that

flow naturally from the information provided by the complainant: Reuters

Limited v. Global Net 2000, Inc., WIPO

Case No. D2000-0441. See also Hewlett-Packard Company v. Full System,

NAF Case No. FA 0094637; David G. Cook v. This Domain is For Sale,

NAF Case No. FA0094957 and Gorstew Jamaica and Unique Vacations, Inc. v.

Travel Concierge, NAF Case No. FA0094925.

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Sole Panelist will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,

ii) that the Respondent has no legitimate interests in respect of the domain name; and,

iii) that the domain name has been registered and is being used in bad faith.

Enforceable Trademark Rights

Complainant contends that in addition to common law rights in the Complainant’s Mark, Complainant owns a United States service mark registration for Complainant’s Mark and several allowed intent-to-use applications for the Mark. Complainant asserts that its service mark registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the Mark. 15 U.S.C. § 1115.

Panel decisions have held that registration of a mark is prima facie evidence

of validity, which creates a rebuttable presumption that the mark is inherently

distinctive. Respondent has the burden of refuting this assumption. See,

e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,

WIPO Case No. D2000-0047.

In addition to any registrations, Complainant asserts common law rights in the Mark. The revenues associated with the two films already released and the amount spent on promotion are sufficient to establish secondary association of “The Fast And The Furious” with Complainant. Respondent has not contested Complainant’s allegations. Therefore, the Sole Panelist finds that Complainant has shown that, for purposes of this proceeding, it has enforceable rights in the Mark.

Identity or Confusing Similarity

Complainant further contends that the Domain Name is confusingly similar to the Mark, pursuant to Paragraph 4(a)(i) of the Policy, because it wholly incorporates the Mark, with the addition of generic terms. Respondent has not contested the assertions by Complaint that the Domain Name is confusingly similar to the Mark.

Therefore, the Sole Panelist finds that the Domain Name is confusingly similar to the Mark pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interest

Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Paragraph 4(a)(ii) requires the Complainant to prove

that the Respondent has no rights to or legitimate interests in the Domain Name.

Once a Complainant establishes a prima facie showing that none of the

three circumstances establishing legitimate interests or rights apply, the burden

of production on this factor shifts to the Respondent to rebut the showing.

The burden of proof, however, remains with Complainant to prove each of the

three elements of Paragraph 4(a). See Document Technologies, Inc. v. International

Electronic Communications, Inc., WIPO

Case No. D2000-0270 (June 6, 2000).

Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, because Respondent is neither licensed nor otherwise permitted to use the Mark or to register the Domain Name. Complainant further contends that that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name. The Domain Name has never resolved to an active website. Respondent has never been known by the Domain Name. With actual and/or constructive knowledge of Complainant’s pre-existing Mark, Respondent cannot make any bona fide use of the Domain Name.

The Policy paragraph 4(c) allows three nonexclusive methods for the Sole Panelist to conclude that Respondent has rights or a legitimate interest in the Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant has sustained its burden of offering proof that the Respondent lacks rights to or legitimate interests in the Domain Name. Respondent has not contested Complainant’s allegations. Therefore, the Sole Panelist finds that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Bad Faith

Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii). The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of

the trademark or service mark from reflecting the mark in a corresponding

domain name, provided that you have engaged in a pattern of such conduct;

or

(iii) you have registered the domain name primarily for the purpose of disrupting

the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract,

for commercial gain, Internet users to your web site or other on-line location,

by creating a likelihood of confusion with the complainant’s mark as

to the source, sponsorship, affiliation, or endorsement of your web site or

location or of a product

Complainant contends that Respondent registered and is using the Domain Name in bad faith because the Domain Name was registered on May 22, 2003, just two weeks before the release of the second film. Inactivity in the Domain Name does not justify its registration. See citations, supra.

In addition, Complainant alleges that Mark had been

used for a long period prior to the registration of the Mark and that “[i]t

would be difficult, if not impossible, for Respondent to use the Domain Name

as the name of any business, product or service for which it would be commercially

useful without violating Complainant’s rights.” Cellular One

Group v. Paul Brien, WIPO Case No. D2000-0028.

The four criteria set forth in the Policy paragraph

4(b) are nonexclusive. Telstra Corporation Limited v. Nuclear Marshmellows,

WIPO Case No. D2000-0003. In addition

to these criteria, other factors alone or in combination can support a finding

of bad faith. The Sole Panelist finds that the Mark was in use before the Domain

Name was registered and infers that Respondent had actual and/or constructive

knowledge of the Mark. Respondent has not given any legitimate reason for registering

the Mark and the Sole Panelist has no basis upon which to infer bona fide

registration and use.

Based upon this evidence, the Sole Panelist finds that Complainant has shown

sufficient facts to support a finding that the Domain Name was registered and

used in bad faith pursuant to the Policy paragraph 4(a)(iii).

7. Decision

The Sole Panelist concludes (a) that the Domain Name <thefastandthefurious3.com>

is confusingly similar to Complainant’s Mark, (b) that Respondent has

no rights or legitimate interest in the Domain Name and (c) that Respondent

registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs

4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain

Name be transferred to Complainant.

Richard W. Page

Sole Panelist

Dated: July 25, 2004

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