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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Universal City Studios, Inc. v Meeting Point Co.
Case No. D2000-1245
1. The Parties
1.1 The Complainant is Universal City Studios, Inc., a corporation organised and existing under the laws of the State of Delaware, United States of America, having its principal place of business at Universal City, California, U.S.A.
1.2 The Respondent is Meeting Point Co. The administrative and billing contact provided for the domain names registered by the Respondent is Hideaki Sato, of Tokyo, Japan.
2. The Domain Names and Registrar
2.1 Three domain names are at issue. They are as follows:
2.2 The Registrar of the domain names is Network Solutions, Inc. ("NSI"), of Herndon, Virginia, U.S.A.
3. Procedural History
Issuance of Complaint
3.1 On September 21, 2000, a complaint was submitted electronically to the World Intellectual Property Organisation Arbitration and Mediation Center ("WIPO Center") pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), both of which were approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999.
3.2 The following day, September 22, 2000, the complaint was also received by the WIPO Center in signed hardcopy.
3.3 An Acknowledgment of Receipt of Complaint was sent to the Complainant via e-mail on September 25, 2000.
3.4 On September 28, 2000, a Request For Registrar Verification was transmitted to the Registrar of NSI, requesting it to:
a) confirm that a copy of the Complaint had been received by the Registrar;
b) confirm that the specified domain names had been registered with NSI;
c) confirm that the Respondent was the current registrant of the domain names;
d) provide the full contact details available in the Registrar’s WHOIS database for the domain name registrant, technical contact, administrative contact and billing contact;
e) confirm that the Uniform Domain Name Dispute Resolution Policy applied to the domain names;
f) indicate the current status of the domain names.
3.5 On September 28, 2000, the Registrar confirmed by return e-mail that the complaint had been received, that the three domain names at issue were registered with NSI and that the current registrant was Meeting Point Co. The postal and electronic addresses and telephone and facsimile numbers were provided for the administrative, billing, technical and zone contacts. The Registrar confirmed that NSI’s Service Agreement was in effect, with the consequence that the ICANN Uniform Domain Name Dispute Resolution Policy, incorporated into this agreement, was binding upon the Respondent.
Complaint Deficiency Notification
3.6 On September 29, 2000, the WIPO Center issued a Complaint Deficiency Notification pursuant to Paragraph 4(b) of the Rules. The deficiency related to the fact that under the Registration Agreement the Respondent did not submit to court jurisdiction at the location of the principal office of the Registrar for disputes concerning use of the domain name. Therefore, pursuant to Paragraph 3(b)(xiii) of the Rules, the Complainant was required to amend the complaint to include a provision stating that it would submit to the jurisdiction of the courts at the location of the Respondent’s address, in the event of a challenge to a decision by the Panel. The Complainant had five days from receipt of this notification to correct their complaint pursuant to Paragraph 4 (b) of the Rules.
3.7 On October 3, 2000, the Complainant replied to the notification, and after discussion with the Registrar, the WIPO Center sent another message concerning the deficiency to the Complainant on October 16, 2000.
3.8 On October 17, 2000, the Complainant agreed to submit to a mutual jurisdiction at the location of the Respondent’s address, only in the event that the Respondent challenged a decision by the Panel to transfer the domain names at issue. This remedied the deficiency in the complaint.
Notification of Complaint and Commencement of Proceeding
3.9 On October 18, 2000, the complaint was deemed to fully comply with the formal requirements of the Policy and Rules, and a Notification of Complaint and Commencement of Administrative Proceeding was issued on the same day. The Notification, inter alia, required the Respondent to submit a response within twenty days of receipt of notification, or else be considered in default.
Notification of Respondent Default
3.10 The Respondent failed to submit a response within the stipulated twenty day period, and on November 9, 2000, the WIPO Center issued to the Respondent a Notification of Respondent Default.
Appointment of Administrative Panel
3.11 On November 16, 2000, the WIPO Center received the Statement of Acceptance and Declaration of Impartiality and Independence of David A.R. Williams Q.C. and on November 17, 2000, a Notification of Appointment of Administrative Panel was issued, formally appointing David A.R. Williams Q.C. as Sole Panelist.
4. Factual Background
4.1 The Complainant is an internationally recognised motion picture studio which has produced and distributed films under the trademark "Universal" since 1912. The Complainant has been marketing goods and services under the trademark "Universal Studios" since the 1960’s. In 1964 the Complainant opened its first theme park in California under the trademarks "Universal Studios" and "Universal Studios Hollywood". The Complainant intends to open another theme park in Osaka, Japan in 2001. Construction of the park began in October 1998, and publicity and advertising have attended the project since that date.
4.2 The Complainant has provided evidence of extensive registration of its trade and service marks in many countries around the world, including Japan and the U.S.A. These registrations relate to the marks "Universal Studios" (and variations thereof), "Universal" and "Universal Studios Japan". The registration of these marks in Japan was completed before the Respondent registered the domain names at issue.
4.3 In June 1999, the Respondent registered the domain names:
4.4 On January 17, 2000, the Complainant’s counsel in Japan wrote to the Respondent requesting that the domain name "universalstudiosjapan.com" be transferred to the Complainant. (The Complainant was not aware of the Respondent’s registration of the domain names "universalstudiososaka.com" and "osakauniversalstudios.com" until August 2000). In reply, the Respondent requested compensation for the transfer, and asked the Complainant to contact the Respondent’s U.S. attorney.
4.5 By letter dated February 11, 2000, the Complainant asked that the names be transferred or alternatively, cancelled. In a subsequent telephone conversation the Respondent’s counsel repeated their request for compensation. The Complainant then offered to reimburse the Respondent for the cost of registering the domain names. Counsel for the Respondent said he would consult his client, and respond to this offer. On July 5, 2000, this offer was repeated to the Respondent’s counsel.
4.6 On August 16, 2000, the Complainant learned that the Respondent had registered the domain name "universalstudiososaka.com". The Complainant wrote to the Respondent’s counsel the same day to determine the Respondent’s intentions with regard to the domain names. By telephone, the Respondent’s counsel repeated the request for compensation. Shortly thereafter, the Complainant learned that the Respondent had registered the domain name "osakauniversalstudios.com".
4.7 The Complainant proceeded to lodge a complaint with the WIPO Center on September 21, 2000.
5. The Parties’ Contentions
5.1 The Complainant contends that the domain names at issue are identical or confusingly similar to the Complainant’s trademarks and service marks, that the Respondent has no rights or legitimate interests in respect of the domain names, and that the domain names have been registered and are being used in bad faith. Furthermore, the Complainant contends that the defences provided under the Policy by which a Respondent may demonstrate a legitimate interest do not apply to the Respondent in this proceeding.
5.2 The Respondent has not contested the allegations of the Complainant, nor submitted evidence to the Panel.
6. Discussion and Findings
6.1 The principles to be applied in deciding the outcome of this proceeding are contained in paragraph 15(a) of the Uniform Dispute Resolution Policy Rules:
"A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".
6.2 It should be noted that the Panel has not received any statements or documents from the Respondent since the formal commencement of proceeding on October 18, 2000. The Respondent is therefore in default pursuant to Paragraph 5(a) of the Rules, and the power of the Panel to decide the dispute notwithstanding the Respondent’s default is given by Paragraph 5(e):
"If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint".
No exceptional circumstances have been brought to the attention of the Panel.
6.3 The Policy sets out the terms and conditions which bind the registrant upon registration of a domain name. Paragraph 4(a) provides that the registrant must submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) The registrant’s domain name is identical or confusingly similar to a trademark in which the complainant has rights; and
(ii) The registrant has no rights or legitimate interests in respect of the domain name; and
(iii) The registrant’s domain name has been registered and is being used in bad faith.
In the event of a proceeding, the Complainant must prove each element is present.
Identical or Confusingly Similar
6.4 It is clear that the domain names
incorporate the entirety of the Complainant’s "Universal" and "Universal Studios" trademarks.
6.5 It is also clear that but for the word ".com", the domain name
is identical to the Complainant’s "Universal Studios Japan" trademark, and incorporates the entirety of the Complainant’s "Universal" and "Universal Studios" trademarks.
6.6 Taking into account the factors referred to in 6.4 and 6.5 and assessing the matter overall, it is the opinion of the Panel that in all three cases, the domain names are confusingly similar to the Complainant’s trademarks. The Complainant has therefore proved this element to the satisfaction of the Panel.
Rights or Legitimate Interests
6.7 The Complainant has demonstrated a well-established and extensive use of the "Universal" and "Universal Studios" trademarks, which have acquired a truly international flavour through the Complainant’s film production, merchandising and theme park operations.
6.8 The Complainant has confirmed that it has not permitted the Respondent to use the "Universal", "Universal Studios" or "Universal Studios Japan" trademarks, or to apply for or use any domain name incorporating any of those trademarks. Accordingly the Respondent cannot demonstrate a right or legitimate interest in the domain names at issue.
6.9 Paragraph 4(c) of the Policy sets out three circumstances in which a registrant may prove to the satisfaction of the Panel a right or legitimate interest in the domain names at issue. These are as follows:
(i) before any notice to the registrant of the dispute, the registrant’s 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) the registrant (as an individual, business or other organisation) has been commonly known by the domain name, even if the registrant has acquired no trademark or service mark rights; or
(iii) the registrant is 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.
6.10 Evidence available to the Panel eliminates the possibility that the Respondent has acquired a right or legitimate interest in the domain names at issue under any of the three specified circumstances. The Panel received no evidence on this point from the Respondents.
6.11 The Complainant has therefore proved this element to the satisfaction of the Panel.
Registering and Using a Domain Name in Bad Faith
6.12 Paragraph 4(b) of the Policy sets out four circumstances which, if present, will support a finding of registration and use of a domain name in bad faith. The Complainant need prove only one. In this proceeding the Complainant relied primarily upon Paragraph 4(b)(i) which provides that bad faith will be found in:
"circumstances indicating that [the registrant has] registered or…acquired the domain name primarily for the purpose of selling…or otherwise transferring the domain name registration to the complainant who is the owner of the trademark…for valuable consideration in excess of [the registrant’s] documented out-of-pocket costs directly related to the domain name".
6.13 The Panel notes that the Complainant must prove that both the registration of the names and their subsequent use have been attended by bad faith.
6.14 In relation to the first element, the following factors lead the Panel to conclude that the registration was undertaken in bad faith:
(i) at the very least, the Respondent had constructive knowledge of the extent and longevity of the Complainant’s use of its "Universal" and "Universal Studios" trademarks at the time it registered the domain names in 1999.
(ii) the fact that the Respondent registered the domain names "universalstudiososaka.com" and "osakauniversalstudios.com" during construction of the Complainant’s new theme park in Osaka strongly suggests that the Respondent anticipated a heightened public interest in the Complainant’s operations which would make the Complainant particularly keen to acquire the domain names.
6.15 The only inference to be drawn is that the Respondent registered the names with the aim of transferring them in exchange for payment.
6.16 In relation to the second element, the Panel notes that the word "use" in this context does not require a positive act on the part of the Respondent; passively holding a domain name can constitute use in bad faith (see Telstra Corporation Limited v Nuclear Mushrooms, WIPO Arbitration and Mediation Center, Case D2000-0003, paragraph 7.10).
6.17 The following factors lead the Panel to conclude that the domain names are being used in bad faith:
(i) On three separate occasions, the Respondent and/or the Respondent’s counsel indicated that a transfer of the names to the Complainant would be possible if compensation was paid to the Respondent.
(ii) The Respondent was aware of the Complainant’s offer to reimburse the Respondent’s registration fees, and this offer was rejected.
(iii) The Respondent has not developed websites for any of the domain names.
6.18 These factors in combination lead the Panel to conclude that the Respondent was seeking valuable consideration in excess of its expenditure on registration fees. Thus the Respondent was using the domain names in bad faith pursuant to Paragraph 4(b)(i) of the Policy. The Complainant has proved this element to the satisfaction of the Panel. It is therefore not necessary to discuss the Complainant’s alternative claim of bad faith pursuant to Paragraph 4(b)(ii).
7.1 The evidence presented by the Complainant, which has been uncontested by the Respondent throughout this proceeding, leads the Panel to decide and declare that the Complainant has proven, pursuant to Paragraph 4(a) of the Policy:
(i) That the domain names are confusingly similar to the trademarks of the Complainant;
(ii) That the Respondent has no rights or legitimate interests in respect of the domain names;
(iii) That the domain names have been registered and are being used in bad faith.
7.2 Therefore the Panel orders and directs that the registration of the domain names "universalstudiosjapan.com", "universalstudiososaka.com"and "osakauniversalstudios.com" be transferred to the Complainant.
David A.R. Williams, Q.C.
Dated: 7 December 2000