Claim Number: FA0806001212864
Complainant is Universal City Studios LLLP (“Complainant”), represented by Lori
T. Milvain,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue, <universalstudioflorida.com>, is registered with Dotster.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically June 26, 2008; the National Arbitration Forum received a hard copy of the Complaint June 27, 2008.
On June 27, 2008, Dotster confirmed by e-mail to the National Arbitration Forum that the <universalstudioflorida.com> domain name is registered with Dotster and that Respondent is the current registrant of the name. Dotster verified that Respondent is bound by the Dotster registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 30, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 21, 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@universalstudioflorida.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 24, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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:
1. The domain name that Respondent registered, <universalstudioflorida.com>, is confusingly similar to Complainant’s UNIVERSAL STUDIOS FLORIDA mark.
2. Respondent has no rights to or legitimate interests in the <universalstudioflorida.com> domain name.
3. Respondent registered and used the <universalstudioflorida.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant registered the UNIVERSAL STUDIOS FLORIDIA mark in numerous jurisdictions worldwide, including with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,536,858 issued April 25, 1989) and the Swiss Federal Institute of Intellectual Property (“IGE”) (Reg. No. 381,344 issued April 15, 1991). The mark is registered for a variety of entertainment production, development, and distribution services, but namely for amusement park services.
The disputed domain name, <universalstudioflorida.com>, was registered July 23, 2006, and resolves to a website offering a variety of links to goods and services that compete with those offered under Complainant’s UNIVERSAL STUDIOS FLORIDA mark. Complainant argues that the services advertised include offering tickets to Complainant’s theme parks, third-party travel services, and an unauthorized link to Complainant’s own website.
Additionally, Respondent has been the respondent in prior UDRP proceedings in which the disputed domain names were transferred away from Respondent to the respective complainants in those cases. See Int’l Olympic Comm. v. Ferro, FA 604980 (Nat. Arb. Forum Jan. 20, 2006); see also Sidestep, Inc. v. Ferro, D2007-0212 (WIPO May 1, 2007); see also Macy’s Inc. v. Ferro, FA 1105729 (Nat. Arb. Forum Dec. 18, 2007).
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."
Given 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 will draw such inferences as the Panel 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 the 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 Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or 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 domain name has been registered and is being used in bad faith.
Complainant established rights in the UNIVERSAL STUDIOS
FLORIDA mark through its numerous registrations of the mark across the world,
including with the USPTO and the IGE pursuant to Policy ¶ 4(a)(i). See Honeywell Int’l Inc. v. r9.net,
FA 445594 (Nat. Arb. Forum May 23, 2005) (“Complainant’s numerous registrations
for its HONEYWELL mark throughout the world are sufficient to establish
Complainant’s rights in the HONEYWELL mark under the Policy ¶ 4(a)(i).”); see also ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat.
Arb. Forum Sept. 5, 2000) (concluding that the complainant demonstrated its
rights in the SPORTSCENTER mark through its valid trademark registrations with
the USPTO and similar offices around the world).
The <universalstudioflorida.com> domain name would be identical to UNIVERSAL STUDIOS FLORIDA mark but for the omission of the second “s” in the word “STUDIOS.” Omission or addition of one letter, such as an “s,” does not adequately distinguish a disputed domain name. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it). Moreover, the inclusion of the generic top-level domain (“gTLD”) domain is irrelevant to a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis). For these reasons, the Panel finds that the <universalstudioflorida.com> domain name is confusingly similar to Complainant’s UNIVERSAL STUDIOS FLORIDA mark pursuant to Policy ¶ 4(a)(i).
The Panel concludes that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii),
Complainant must first establish a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name. See SEMCO Prods.,
LLC v. dmg world media (
The Panel finds that Complainant met this threshold and that
the burden is accordingly shifted to Respondent to prove that it does have
rights or legitimate interests in the disputed domain name. See F. Hoffmann-La Roche AG v. Di Salvatore,
D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of
paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts
from the Complainant to the Respondent once the Complainant has made out a
prima facie case that the Respondent has no rights or interests in the domain
names.”).
Furthermore, the Panel presumes
that Respondent has no rights or legitimate interests, because Respondent
failed to submit a response to the Complaint.
However, the Panel examines the record before determining whether or not
the proof before the Panel suggests that Respondent has such rights pursuant to
the factors listed under Policy ¶ 4(c). See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June
20, 2000) (“By not submitting a response, Respondent has failed to invoke any
circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any
rights or legitimate interests in the domain name”); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc.,
AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests
where no such right or interest was immediately apparent to the panel and the
respondent did not come forward to suggest any right or interest it may have
possessed); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30,
2002) (“[B]ased on Respondent's failure to respond, it is presumed that
Respondent lacks all rights and legitimate interests in the disputed domain name.”).
Complainant argues that it has no
relationship with Respondent and that Respondent is in no way authorized or
permitted to use the UNIVERSAL STUDIOS FLORIDIA mark. Additionally, nothing in the record supports
an inference that Respondent is or ever was commonly known by the disputed
domain name. Without any additional
evidence, the Panel finds that Respondent is not commonly known by the <universalstudioflorida.com> domain
name under Policy ¶ 4(c)(ii). See
The <universalstudioflorida.com>
domain name does not resolve to a website that offers any of its own goods or
services. It contains nothing but a
search engine for, advertisements of, and links to various third-parties who
offer products and services in direct competition with those offered under
Complainant’s mark. The Panel considers
this to constitute neither a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i)
nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA
888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention
of rights and legitimate interests in the <bravoclub.com> domain name
because the respondent was merely using the domain name to operate a website
containing links to various competing commercial websites, which the panel did
not find to be a use in connection with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii)); see also Meyerson v. Speedy Web, FA
960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has
failed to offer any goods or services on its website other than links to a
variety of third-party websites, it was not using a domain name in connection
with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii)).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent
has lost multiple disputed domain names in prior UDRP proceedings. See
Int’l Olympic Comm. v. Ferro, FA 604980 (Nat. Arb. Forum Jan. 20, 2006); see also Sidestep, Inc. v. Ferro,
D2007-0212 (WIPO May 1, 2007); see also
Macy’s Inc. v. Ferro, FA 1105729 (Nat. Arb. Forum Dec. 18, 2007). The Panel finds that this establishes a pattern of
registering infringing domain names and constitutes as such evidence of
Respondent’s bad faith registration and use of the <universalstudioflorida.com>
domain name pursuant to Policy ¶ 4(b)(ii).
See Westcoast Contempo Fashions Ltd. v.
The disputed domain name is essentially a collection of
links to third-parties, most of whom directly compete
with Complainant. This use, absent any
additional information or explanation, is evidence of Respondent’s intent to
disrupt the business of Complainant.
Consequently, the Panel finds that Respondent registered and is using
the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See
Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding
that the respondent registered and used the <classicmetalroofing.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet
users to the respondent’s competing website); see also Red Hat, Inc. v.
Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the
respondent engaged in bad faith registration and use pursuant to Policy ¶
4(b)(iii) by using the disputed domain names to operate a commercial search
engine with links to the products of the complainant and to complainant’s
competitors, as well as by diverting Internet users to several other domain
names).
Additionally,
Complainant contends that Respondent is only using the <universalstudioflorida.com>
domain name to redirect Internet users seeking Complainant’s products and
services to third-party websites where competing goods and services related to
travel, amusements parks, and entertainment are provided or advertised. Complainant argues that it can be assumed
that Respondent is commercially benefiting from click-through fees through such
use. The Panel agrees and likewise
presumes that Respondent is commercially benefiting from the disputed domain
name through some version of a referral scheme.
As a consequence, the Panel finds this to be further evidence that Respondent
registered and is using the disputed domain in bad faith pursuant to Policy ¶
4(b)(iv) in an attempt to commercially benefit from the confusingly similarity
between the services and goods advertised through the disputed domain name and
those legitimately offered under Complainant’s mark. See Yahoo! Inc. v. Web Master,
FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com>
to operate its search engine, a name that infringes upon Complainant’s mark,
Respondent is found to have created circumstances indicating that Respondent,
by using the domain name, has intentionally attempted to attract, for
commercial gain, Internet users to Respondent’s website by creating a
likelihood of confusion with Complainant’s mark as to the source, sponsorship,
affiliation, or endorsement of the website or of a product or service on the
website as proscribed in Policy ¶ 4(b)(iv).”); see also Dell Inc. v.
Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23,
2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the
respondent was using the <dellcomputerssuck.com> domain name to divert
Internet users to respondent’s website offering competing computer products and
services).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <universalstudioflorida.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 6, 2008.
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