UniversalStudiosFlorida.com is a domain name registered in 1999. It took 24 years for Universal City Studios to file a UDRP as the domain contains its world-famous trademark.
In fact, the UNIVERSAL mark dates back to 1912.
It comes as no surprise that the UDRP decision ordered the domain name UniversalStudiosFlorida.com to be transferred to the Complainant; the PPC earned in those 24 years must have been massive, but all “good” things must come to an end. 🙂
Universal City Studios LLC v. Moniker Privacy Services
Claim Number: FA2306002051532
PARTIES
Complainant is Universal City Studios LLC (“Complainant”), represented by Steven M. Levy of FairWinds Partners LLC, District of Columbia, USA. Respondent is Moniker Privacy Services (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is universalstudiosflorida.com, registered with GoDaddy.com, LLC.
PANEL
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.
The Honorable Neil Anthony Brown KC as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on June 30, 2023; Forum received payment on June 30, 2023.
On July 3, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the universalstudiosflorida.com domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 July 5, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 25, 2023 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@universalstudiosflorida.com. Also on July 5, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On July 27, 2023, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that 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, Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant made the following contentions.
Complainant’s brand has expanded to a global media empire including motion pictures, television shows, and some of the most iconic theme parks in the world. Complainant asserts rights in the UNIVERSAL and UNIVERSAL STUDIOS FLORIDA marks (collectively Complainant’s “UNIVERSAL Marks”) based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,144,545, registered December 23, 1980 (for UNIVERSAL)); (e.g. Reg. No. 5,374,356, registered on January 9, 2018 (for UNIVERSAL STUDIOS FLORIDA)). See Compl. Exs. E and E-1.
Complainant also submits that it has common law rights in the UNIVERSAL Marks and that in that regard it has been using the UNIVERSAL name in the motion picture industry since the year 1912.
The universalstudiosflorida.com domain name is identical or confusingly similar to Complainant’s Marks because the disputed domain name includes the entirety of the UNIVERSAL Mark and adds the generic and geographic words “studios” and “florida” as well as the generic top level domain (“gTLD”) “.com”.
Respondent has no legitimate interests in the universalstudiosflorida.com domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the UNIVERSAL Marks. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent is seeking to impersonate Complainant’s own legitimate website address to host monetized pay-per-click links. Also, Respondent’s use of the disputed domain name has tarnished and diluted Complainant’s Marks.
Respondent registered and uses the universalstudiosflorida.com domain name in bad faith. Respondent is taking advantage of the reputation of Complainant’s UNIVERSAL Marks to draw users to its pay-per-click website, for commercial gain. Respondent is creating a likelihood of confusion with Complainant’s Marks, thus disrupting Complainant’s business. Respondent has made use of privacy shields. Lastly, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the UNIVERSAL Marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
1. Complainant is a United States company that provides a global media empire including motion pictures, television shows, and some of the most iconic theme parks in the world.
2. Complainant has established its rights in the UNIVERSAL mark based upon its registration of the mark with the USPTO (e.g. Reg. No. 1,144,545, registered December 23, 1980 (for UNIVERSAL)) and its rights in the UNIVERSAL STUDIOS FLORIDA mark based upon its registration of the mark with the USPTO; (e.g. Reg. No. 5,374,356, registered on January 9, 2018 (for UNIVERSAL STUDIOS FLORIDA) (jointly “the Universal marks”).
3. Complainant has also established that it has common law trademark rights in the UNIVERSAL Marks and that it has had those rights provably since the year 1912.
4. Respondent registered the universalstudiosflorida.com domain name on December 10, 1999.
5. Respondent has caused the disputed domain name to be used to impersonate Complainant’s own legitimate website address so as to host monetized pay-per-click links to activities which are the same as and in competition with those of Complainant. Also, Respondent’s use of the disputed domain name has tarnished and diluted Complainant’s UNIVERSAL Marks and disrupted its business.
DISCUSSION
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical and/or Confusingly Similar
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the UNIVERSAL Marks based upon registration with the USPTO (e.g. Reg. No. 1,144,545, registered December 23, 1980 (for UNIVERSAL)); and Reg. No. 5,374,356, registered on January 9, 2018 (for UNIVERSAL STUDIOS FLORIDA) (“the Universal marks”). See Compl. Exs. E and E-1. Registration of a mark with the USPTO is a valid showing of rights in a mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration of the UNIVERSAL marks with the USPTO, the Panel finds that the Complainant has rights in those marks under Policy 4(a)(i).
Complainant also submits that it has common law rights in the UNIVERSAL marks. The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate common law rights in the mark. See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”). Common law rights can be established through a showing of secondary meaning within the mark. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Here, Complainant submits that it has become globally famous as a result of Complainant’s long and extensive use of, and efforts to promote the UNIVERSAL Marks. See Compl. Ex. D. As the Panel agrees with Complainant, it finds that Complainant has common law rights in the UNIVERSAL marks per Policy 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s UNIVERSAL marks. Complainant submits that Respondent’s universalstudiosflorida.com domain name is identical or confusingly similar to Complainant’s Marks. Here, the disputed domain name includes the entirety of the UNIVERSAL STUDIOS FLORIDA Mark and the “.com” gTLD, so the domain name is identical to that trademark. The domain name is also confusingly similar to the UNIVERSAL mark as it adds the generic and geographic words “Studios” and “Florida” as well as the “.com” gTLD. The addition of descriptive words and a gTLD fails to distinguish a disputed domain name sufficiently from a mark per Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). So, the Panel finds that the disputed domain name is identical to the UNIVERSAL STUDIOS FLORIDA Mark and confusingly similar to the UNIVERSAL mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
Rights or Legitimate Interests
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
a) Respondent has chosen to take Complainant’s UNIVERSAL marks and to use them in its domain name;
b) Respondent registered the universalstudiosflorida.com domain name on December 10, 1999;
c) Respondent has caused the disputed domain name to be used to impersonate Complainant’s own legitimate website address so as to host monetized pay-per-click links. Also, Respondent’s use of the disputed domain name has tarnished and diluted Complainant’s UNIVERSAL Marks;
d) Respondent has engaged in these activities without the consent or approval of Complainant;
e) Complainant contends that Respondent lacks rights or legitimate interests in the universalstudiosflorida.com domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the UNIVERSAL Marks. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name does not list the registrant, and there is no other evidence to suggest that Respondent was authorized to use the UNIVERSAL Marks. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
f) Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the universalstudiosflorida.com domain name resolves to a classic pay-per-click page displaying monetized advertising links which divert visitors – likely Complainant’s customers and potential customers – to other websites that are not associated with Complainant and, in many instances, promote the services of Complainant’s competitors in the theme park industry. Prior Panels have held that using a well-known mark to lead consumers who are searching for a particular business to a site that lists other services provided by third parties, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of edcorlando.xyz also does not qualify as a bona fide offering… the edcorlando.xyz domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”); see also Yahoo! Inc. v. Web Master, FA 127717 (Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services). Here, Complainant provides evidence of the resolving website, which contains the pay-per-click links. See Compl. Ex. F. Accordingly, the Panel finds that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii);
g) Complainant submits that Respondent fails to use the universalstudiosflorida.com domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use since Respondent’s use of the disputed domain name has tarnished and diluted Complainant’s Marks. Specifically, Respondent has diminished the public’s capacity to associate the famous UNIVERSAL Marks with the quality products and services offered by Complainant. Doing so does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the respondent’s use of the thechipmerchant.net, chipmerchant.com, and chipmerchant.net domain names was illegitimate because the domain names were “virtually identical” to the complainant’s mark, did not constitute a bona fide offering of goods or services, and implied that the respondent intended to trade off of the complainant’s “goodwill and reputation” to sell competing goods). Here, Complainant provides evidence of the resolving website. See Compl. Ex. F. As such, as the Panel agrees, it finds that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
Registration and Use in Bad Faith
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent seeks to leverage the reputation of Complainant’s UNIVERSAL Marks to draw users to its pay-per-click website, all for monetary gain. It is clear that this is what Respondent has been doing and that it is in bad faith. Specifically, the links at the universalstudiosflorida.com pay-per-click site lead to third-party commercial websites offering goods and services which are the same as those being offered legitimately by Complainant and in competition with them. It is more probable than not that Respondent would receive a fee for referring internet traffic to those sites. Such use is evidence of bad faith under Policy ¶ 4(b)(iii) and ¶ 4(b)(iv) and there is no other way it could be described. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the metropolitanlife.us domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”). Here, Complainant provides extensive evidence of the resolving website containing the pay-per-click links which clearly prove its case and which have been helpful to the Panel to examine, which it has done. See Compl. Ex. F. The Panel therefore finds that the Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii) and ¶ 4(b)(iv).
It should also be pointed out here that Complainant had its trademark rights well and truly established before Respondent registered its domain name and set about its improper activities. Complainant probably had common law trademark rights in UNIVERSAL from the year 1912 and it has clearly built on and strengthened them continuously since then. Its registered trademark for UNIVERSAL was registered on December 23, 1980 and the domain name was registered well after that date, namely on December 10, 1999. Therefore, when Respondent registered the domain name, it must have known that it was copying Complainant’s famous UNIVERSAL trademark and brand name that was a household name in the United States and internationally. When it added to the UNIVERSAL mark the words “studios” and “florida” to make up the domain name, it must have known that it was putting beyond doubt that what it was referring to were to were the well-known activities of Complainant, because that was its clear intention. When it then started to use the domain name to advertise goods and services competing with those of Complainant, it must have known that doing so would damage Complainant’s business. All of this conduct amounts to bad faith in both the registration and use of the domain name and it all occurred after Complainant’s trademark rights had been established, had become world famous and must have been known to Respondent.
Secondly, Complainant argues that Respondent registered and uses the universalstudiosflorida.com domain name in bad faith due to the fact that Respondent is seeking to disrupt Complainant’s business and seek commercial gain from its registration and use of the confusingly similar disputed domain name. Creating a likelihood of confusion with a complainant’s mark to disrupt that complainant’s business indicates bad faith under Policy ¶ 4(b)(iii) and ¶ 4(b)(iv). See Nestlé Waters North America, Inc. v. Domain Administrator / Fundacion Privacy Services LTD, FA 1792308 (Forum July 22, 2018) (Finding Respondent uses the domain names to point to a site which offers links relating to Complainant’s business. “Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant.”). So, the Panel finds that the Respondent registered and uses the universalstudiosflorida.com domain name in bad faith per Policy ¶ 4(b)(iii) and ¶ 4(b)(iv).
Thirdly, Complainant submits that Respondent is hiding behind multiple layers of Whois privacy shields. Use of a privacy shield is further evidence of bad faith registration under Policy ¶ 4(a)(iii). See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent’s use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”). Here, the WHOIS information for the universalstudiosflorida.com domain name displays Respondent’s use of privacy shields. See Amend. Compl. Ex. B. Thus, the Panel agrees and finds that the Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Fourthly, Complainant submits that Respondent had knowledge of Complainant’s rights in the UNIVERSAL Marks at the time of registering the universalstudiosflorida.com domain name. The Panel will therefore determine whether Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name, as actual knowledge, rather than constructive knowledge, can demonstrate bad faith registration under Policy ¶ 4(a)(iii); see AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). To support this submission, Complainant points to its longstanding and extensive use of the UNIVERSAL Marks. Accordingly, the Panel finds that Respondent had actual knowledge of Complainant’s right in its UNIVERSAL Marks, which supports a finding of bad faith registration under Policy ¶ 4(a)(iii).
Fifthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the UNIVERSAL marks and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the universalstudiosflorida.com domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC, Panelist
Dated: July 31, 2023
