Universal City Studios LLC v Anton Laptev / Private Person
Claim Number: FA1302001485693
Complainant is Universal City Studios LLC (“Complainant”), represented by Lori T. Milvain, Florida, USA. Respondent is Anton Laptev / Private Person (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <universalstudio43.biz>, registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 18, 2013; the National Arbitration Forum received payment on February 19, 2013.
On February 19, 2013, PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <universalstudio43.biz> domain name is registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 26, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 18, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@universalstudio43.biz. Also on February 26, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 28, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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. Respondent’s <universalstudio43.biz> domain name is confusingly similar to Complainant’s UNIVERSAL STUDIOS mark.
2. Respondent does not have any rights or legitimate interests in the <universalstudio43.biz> domain name.
3. Respondent registered and used the <universalstudio43.biz> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns the well-known UNIVERSAL STUDIOS mark, in use since 1967, and holds trademark registrations for the mark with the U.S. Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1, 355,894) and with authorities in Russia, where Respondent resides.
Respondent uses the <universalstudio43.biz> domain name to offer website development services.
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."
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:
(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.
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 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.”).
The Panel finds that Complainant has rights in its UNIVERSAL STUDIOS mark pursuant to Policy ¶ 4(a)(i), based on its registration with the USPTO. Previous panels have consistently found that registration of a mark with a federal trademark authority is sufficient to establish rights in a mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Respondent’s <universalstudio43.biz> domain name is confusingly similar to the UNIVERSAL STUDIOS mark, as it simply adds the generic number “43” to Complainant’s mark. Respondent also adds a gTLD, and omits the “s” and the space in the mark. These changes are insufficient to distinguish the disputed domain name from Complainant’s mark. The panel in Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), held that spaces and gTLDs are irrelevant to a Policy ¶ 4(a)(i) analysis. See Google Inc. v. Haydar Bas, FA 1009001349314 (Nat. Arb. Forum Nov. 18, 2010) (finding google43.com confusingly similar to GOOGLE mark).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges that Respondent is not commonly known by the <universalstudio43.biz> domain name, and has not been authorized to use Complainant’s UNIVERSAL STUDIOS mark. The WHOIS information indicates that Respondent is identified as “Anton Laptev / Private Person,” which does not show that Respondent is commonly known by the <universalstudio43.biz> domain name. Therefore, the Panel finds that Respondent has no rights or legitimate interests under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant asserts that Respondent uses the <universalstudio43.biz> domain name to advertise Respondent’s website development services. The use of someone else’s trademark to promote one’s own goods and services is not a bona fide offering of goods and services. The Panel finds that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (finding respondent’s intent to divert internet users seeking complainant’s website to a website of respondent and for respondent’s benefit not to be a bona fide offering of goods or services under the policy, nor a legitimate noncommercial or fair use).
Complainant argues that any use of the disputed domain name would be an infringement of Complainant’s trademark rights. The Panel agrees and finds that Respondent has no rights or legitimate interests in the disputed domain name. See Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (finding that use of someone else’s well-known name undermines any claim to a legitimate interest).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent uses the <universalstudio43.biz> domain name to divert Internet users to Respondent’s website to generate revenue for Respondent, evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Respondent’s diversion of potential customers away from Complainant to its website disrupts Complainant’s business, and also demonstrates bad faith pursuant to Policy ¶ 4(b)(iii). See Proto Labs, Inc. v. Hostmonster.com, FA 423723 (Nat. Arb. Forum Feb. 20, 2012) (finding that respondent’s use of the disputed domain name to resolve to the commercial website of another business disrupts complainant’s business, demonstrating bad faith registration and use under Policy ¶ 4(b)(iii).).
Complainant argues that Respondent was aware of Complainant’s rights in the UNIVERSAL STUDIOS mark when it registered the disputed domain name, based on Complainant’s long use of the mark and on the recent announcement in Russia that Complainant would open a UNIVERSAL STUDIOS theme park in Russia. The Panel finds that this is additional evidence of Respondent’s bad faith. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).
The Panel finds that Complainant has satisfied 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 <universalstudio43.biz> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 6, 2013
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