Claim Number: FA0802001152980
Complainant is Universal City Studios LLLP (“Complainant”), represented by Lori
T. Milvain,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <universal-citywalk.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 21, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 22, 2008.
On February 21, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <universal-citywalk.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 25, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 17, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@universal-citywalk.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 20, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant offers tourism and travel products and services to customers.
As part of this business, Complainant uses its UNIVERSAL CITYWALK mark to promote its entertainment and amusement park goods and services.
Complainant registered its UNIVERSAL CITYWALK service mark with the United States Patent and Trademark Office (“USPTO”) on July 4, 1995 (Reg. No. 1,903,781).
Complainant has never authorized Respondent to use its UNIVERSAL CITYWALK service mark.
Respondent’s <universal-citywalk.com> domain name initially resolved to a parked web page which offered links to goods and services, some of which competed with Complainant’s business, but also offered the domain name for sale.
After Complainant contacted Respondent, the disputed domain name was redirected to Respondent’s website <hollywoodcallboard.com> which also offered links to entertainment goods and services which competed with Complainant’s business.
More recently, the disputed domain name was once again changed to direct Internet users to a website which offered a list of domain names for sale.
Respondent’s <universal-citywalk.com> domain name is confusingly similar to Complainant’s UNIVERSAL CITYWALK mark.
Respondent does not have any rights to or legitimate interests in the <universal-citywalk.com> domain name.
Respondent registered and uses the disputed <universal-citywalk.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has provided evidence of the registration of its
UNIVERSAL CITYWALK service mark with the USPTO.
This evidence is sufficient to support Complainant’s assertion of rights
in its UNIVERSAL CITYWALK mark pursuant to Policy ¶ 4(a)(i). See Innomed
Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004): “Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.” See also Vivendi Universal Games v. XBNetVentures Inc., FA
198803 (Nat. Arb. Forum Nov. 11, 2003): “Complainant's federal trademark
registrations establish Complainant's rights in the BLIZZARD mark.”
On the point of confusing similarity, Respondent’s <universal-citywalk.com> domain name
merely adds a hyphen and the generic top-level domain (“gTLD”) “.com” to
Complainant’s UNIVERSAL CITYWALK mark. Other
panels have found the addition of a hyphen fails to distinguish a disputed
domain name from a mark. Also, the
addition of a gTLD is a requirement of every domain name and is thus irrelevant
under Policy ¶ 4(a)(i). Therefore, Respondent’s <universal-citywalk.com> domain name
is confusingly similar to Complainant’s UNIVERSAL CITYWALK mark pursuant to
Policy ¶ 4(a)(i).
See Health Devices Corp. v.
[T]he
addition of punctuation marks such as hyphens is irrelevant in the
determination of confusing similarity pursuant to Policy ¶ 4(a)(i).
See also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); further see, for example, Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000):
[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance
since use of a gTLD is required of domain name registrants . . . ..
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have rights to or legitimate interests in the disputed domain name. Once Complainant presents a prima facie case supporting these allegations, the burden shifts to Respondent to establish that it does have rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights to or legitimate interests with respect to a domain, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Complainant has presented a sufficient prima facie case to support its allegations, and Respondent has failed
to submit a response in these proceedings.
Therefore, we may presume that Respondent does not have rights to or
legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that a complainant’s allegations are true unless clearly
contradicted by the evidence). We will nonetheless inspect the record to
determine whether there is any basis for concluding that Respondent has rights to
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c).
We begin by observing that there is no dispute that Respondent’s
<universal-citywalk.com>
domain name previously resolved to a parked website which offered goods and
services some of which competed with Complainant’s business. Additionally, there is no dispute that at one
point Respondent’s domain name redirected Internet users to Respondent’s
website which offered entertainment goods and services that competed with Complainant’s
business. Thus Respondent’s previous
uses of the disputed domain name to divert Internet users looking for
Complainant’s business to Complainant’s competitors are not uses which can be
said to have been in connection with a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or legitimate noncommercial or fair uses pursuant to
Policy ¶ 4(c)(iii). See
Lockheed
Martin Corp. v. Extraordinary Things LLC, FA 1117826 (Nat. Arb. Forum
Jan. 23, 2008):
Respondent’s…domain names
all resolve to parked websites featuring links to third-party venture capital
and financial websites that offer services in competition with Complainant, and
Respondent accrues click-through fees from these links. The Panel finds that such use does not
constitute either a bona fide offering of goods or services under Policy ¶
4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
See also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb.
Forum Sept. 30, 2003):
Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's
benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii).
Additionally, there is no dispute that Respondent currently uses the <universal-citywalk.com> domain name to offer it for sale. This use also does not evidence in Respondent rights to or legitimate interests in the disputed domain name to pursuant to Policy ¶ 4(a)(ii). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where a respondent registered a domain name with the intention of selling its rights).
Moreover, Respondent does not appear to be commonly known by
the <universal-citywalk.com>
domain name. Indeed, the pertinent WHOIS
record suggests that Respondent is known as “Hollywood Callboard.” In addition, the record indicates that Complainant
has never authorized Respondent to use its UNIVERSAL CITYWALK mark. Therefore, we conclude that Respondent is not
commonly known by the <universal-citywalk.com>
domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb.
Forum Jan. 23, 2001) (finding that a respondent does not have rights in a
domain name when that respondent is not known by the mark); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
There is undisputed evidence that Respondent previously
offered the disputed domain name for sale, and that it is currently offering
the disputed domain name and other domain names for sale on the website
resolving from the domain. These uses
were and are evidence of bad faith registration and use pursuant to Policy ¶
4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003):
Respondent's general offer of the disputed domain name
registration for sale establishes that the domain name was registered in bad
faith under Policy ¶ 4(b)(i).
See also Am. Online, Inc. v. Avrasya Yayincilik
Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad
faith use where a respondent offered domain names for sale).
We may safely presume that Respondent received payment in
the form of click-through fees for displaying links to Complainant’s
competitors on the parked website which resolved from the contested domain name. And Respondent presumably profited in similar
fashion when the domain name redirected Internet users to Respondent’s current <hollywoodcallboard.com>
domain name. Thus, we conclude that
Respondent is attempting to profit from the goodwill associated with
Complainant’s mark, which is further evidence of bad faith registration and use
of the domain pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat.
Arb. Forum Nov. 22, 2002) (finding that if a respondent profits from its
diversionary use of a complainant's mark when the domain name resolves to
commercial websites and that respondent fails to contest a complaint, it may be
concluded that that respondent is using the domain name in bad faith pursuant
to Policy ¶ 4(b)(iv)); see also Associated Newspapers Ltd.
v. Domain Manager, FA 201976 (Nat. Arb.
Forum Nov. 19, 2003): “Respondent's prior use of the <mailonsunday.com>
domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the
domain name provided links to Complainant's competitors and Respondent
presumably commercially benefited from the misleading domain name by receiving
‘click-through-fees.’”
For these reasons, the
Panel finds that Policy ¶ 4(a)(iii) has been
satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <universal-citywalk.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 1, 2008
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