ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant is Universal City Studios, Inc, of Universal City, California. USA. The Respondent is Gareth Evans, an individual resident in Calgary, Alberta, Canada.
The Domain Name at issue is universalpictures.net, registered by the Respondent with Register.com, Inc.
The remedy sought is the transfer of Domain Name universalpictures.net from the Respondent to the Complainant.
2. Procedural History
The complaint was brought pursuant to the Uniform Domain Name Dispute Resolution Policy ("ICANN Policy") adopted by the Internet Corporation for Assigned Names and Numbers on October 24, 1999.
The electronic version of the Complaint form was filed on-line through eResolution's Website on April 28, 2000. The hardcopy of the Complaint Form was received on May 3, 2000. Payment was received on April 26, 2000.
Upon receiving all the required information, eResolution's Clerk proceeded to:
- confirm the identity of the Registrar for the contested Domain Name;
- verify the Registrar's Whois Database and confirm all the required contact information for the Respondent;
- verify whether the contested Domain Name resolved to an active Web page;
- verify whether the Complaint was administratively compliant.
The inquiry lead the Clerk of eResolution to the following conclusions: the Registrar is REGISTER.COM INC., the Whois database contains all the required contact information but the billing contact, the contested Domain Name resolves to an inactive Web page and the Complaint is administratively compliant.
An email was sent to the Registrar by eResolution Clerk's Office to confirm the name of the billing contact and to obtain a copy of the Registration Agreement on May 9, 2000. The requested information was received May 15, 2000.
The Clerk then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with Paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy.
The Clerk fulfilled all her responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on May 9, 2000. Such date being the starting date of the administrative proceedings. On the same day the Clerk's office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceedings.
On May 27, 2000, the Respondent submitted, via eResolution Internet site, his response. Accordingly the Clerk's Office awaited the signed version of the response. No such response was forthcoming.
On June 14, 2000, the Clerk's Office contacted Enzo Fogliani, and requested that he act as panelist in this case.
On June 15, 2000, Enzo Fogliani accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On June 16, 2000, the Clerk's Office forwarded a user name and a password to Enzo Fogliani, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On June 16, 2000, the parties were notified that Enzo Fogliani had been appointed and that a decision was to be, save exceptional circumstances, handed down on June 29, 2000.
On June 20, 2000, the Clerk's Office received a request from the Complainant to reply to the response (art. 12 ICANN rules). On the same day, Enzo Fogliani allowed 10 days for the complainant's additional arguments and a further 10 days for the Respondent's reply, notifying that the decision would be handed down 10 days after the last reply.
On June 20, 2000, the Complainant's additional argument were sent to the Clerk's Office and put online. On the same day, the respondent was advised he had 10 calendar days to reply.
3. Factual Background
Paragraph 3 (a) of eResolution Supplemental Rules provides that time limits established in the Rules are mandatory. Paragraph 7, (c) provides that the response shall not be considered during the administrative proceedings if not in conformity with the applicable administrative requirements stated in the Rules. To date, the Clerk's Office has not received a signed version of the Response form, and, accordingly, this Panel could not consider the Response form. But since the Complainant has requested and obtained leave to reply to the response, this Panel will consider it as permitted in these proceedings, since the additional arguments of the Complainant prove that Universal City Studios, Inc, have had the time and means to read it.
The Complainant presents the following evidence:
a) a certificate issued by the U.S. Patent and Trademark Office showing that the Complainant, Universal City Studios, Inc, is the present title owner of the trademark "Universal Pictures", registered with the U.S. Patent and Trademark Office on April 2, 1991 and used since May 16, 1924;
b) a certificate issued by the U.S. Patent and Trademark Office showing that the Complainant, Universal City Studios, Inc, is the present title owner of the trademark "Universal Pictures Debut Network", registered with the U.S. Patent and Trademark Office on May 20, 1986 and used since January 1, 1985;
c) a report dated April 6, 2000 from "Better-whois.com", showing that Universal City Studios, Inc, registered the Domain Name "universalpictures.com" on December 11, 1996;
d) a copy of home page of the Complainant's website at http://www.universalpictures.com;
e) copies of promotional materials featuring the Complainant's "Universal Pictures" trade marks, related to several cinema movies produced by the Complainants and distributed throughout the western world;
f) a copy of the letter from the Complainant to the Respondent dated March 9, 2000, requesting transfer of "universalpictures.net" Domain Name;
g) a copy of e-mail answer from the Respondent to Complainant dated march 11, 2000
No evidence was submitted by the respondent.
4. Complainant's Contentions
The Complaint relies on the Complainant's pre-existing United States Trade Mark Registrations for the marks UNIVERSAL PICTURES & Design (Registration no. 1639638), which issued April 1991, for "motion picture films"; and UNIVERSAL PICTURES DEBUT NETWORK & Design (Registration no. 1394409), issued May 1986, for "entertainment services" namely distribution of a variety of motion pictures for presentation on television.
The complaint also relies on the Complainant's pre-existing trade mark rights arising from its use of the common law trade mark UNIVERSAL PICTURES in the United States and Canada for several decades in association with motion picture films, related sales and advertising materials.
The Complainant has also used and registered the domain name "universalpictures.com" since December 1996 and operates a website at the address http://www.universalpictures.com which promotes its current and up and coming motion picture films.
The Complainant claims that domain name "universalpictures.net" is essentially identical to the Complainant's prior United States trade mark registrations no. 1639638 and no. 1394409, to the Complainant's common law trade mark for Universal Pictures, and to its domain name "universalpictures.com".
The Complainant affirms that the Respondent has no legitimate interest in the domain name at issue, because he has not used the Universal Pictures trade mark with any products or services in the United States or Canada, nor has acquired any reputation in association with that mark, and does not operate a website under the "universalpictures.net" domain name
Finally, the Complainant asserts that Respondent has registered the "universalpictures.net" domain name in bad faith, within the meaning of Paragraph 4(b)(i) of the Uniform Dispute Resolution Policy, because he has offered to sell the domain name registration to the Complainant for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name.
5. Respondent's contentions
The Respondent contests that
- domain name universalpictures.net is similar in name only to the Complainant's trade marks, which are only for motion picture films and the distribution of motion pictures for presentation on television;
- the Complainant has no Canadian trademarks;
- the Complainant's trademarks have no bearing on Internet or related websites unless used with motion pictures.
The Respondent affirms that "universalpictures.net" is in no way related to the Complainant's web site, and that he plans to use it for photographs of all international clients of MVP's Sports Bar & Grill (of which he is general manager) who have had business dealings with him.
6. Discussion and Findings
Under Paragraph 4 (a) of the ICANN Rules, the Complainant is required to prove, with respect to the Domain Name at issue, (a) that the Domain Name is identical or confusingly similar to the Complainant's trademark; (b) that the Respondent has no rights or legitimate interests in the Domain Name; and (c) that the Domain Name has been registered and is being used in bad faith.
These are the three matters at issue in this case.
(a) Identity or Confusing Similarity
As to the matter of similarity, it is clear to this Panel that the mark "Universal Pictures" is nearly identical to the Domain Name "universalpictures.net", the only difference being the suffix ".net" and the lack of a blank space between the two words "universal" and "pictures" (which does not alter the substance of these two words).
The domain name at issue is also identical to the domain name "universalpictures.com", registered by the Complainant, since it is commonly known that a domain name cannot contain a blank space, and that the generic ".net" and ".com" domain indicators have no distinctive value in this matter.
The fact that the trade mark registrations no. 1639638 and no. 1394409 were made in the United States and not in Canada is irrelevant, because:
I) ICANN Policy does not specify that the Complainant's trademark to which the contested domain name is similar must be registered in the Respondent's country;
II) The Complaint relies also on the similiarity of the contested domain name with the domain name "universalpictures.com" and with the Complainant's common law trade mark for Universal Pictures, which has been used for decades in the United States and Canada.
This Panel believes that the domain name "universalpictures.net" is identical or confusingly similar to all the trade marks or service marks in which the complainant has a right.
(b) Rights or legitimate interests
The Complainant has proved his title on the trademark "Universal Pictures" and on the domain name "universalpictures.com". EResolution's Clerk verified that the contested Domain Name resolves to an inactive Web page; and the Respondent himself, answering the first letter sent to him by the Complainant, said: "I have no plans to operate a web site with that name" (e-mail March 11, 2000).
In his response, Mr. Gareth Evans affirms that the web site is in preparation, but not yet operational. This fact, even if true (although no evidence has been given) is irrelevant, because it is subsequent to the beginning of this procedure.
In any case, the Respondent has not proved any right or legitimate interest in domain name "universalpictures.net", nor any fact which, under Paragraph 4, (c) of ICANN Policy, could be considered demonstration of them.
(c) Registration and Use in Bad Faith
The Respondent's e-mail dated March 11, 2000 clearly shows that Mr. Gareth Evans has registered "universalpictures.net" with the purpose of selling it to the owner of the trademark Universal Pictures, for a valuable consideration in excess of the documented out of pocket costs directly related to the domain name ("I have the name up for sale so name a price!"). This request can be considered evidence of registration and use of the domain name in bad faith under Paragraph 4, (b), I of ICANN Policy.
Moreover, the Respondent could not reasonably claim to have been unaware that Universal Pictures is a trademark, since the Complainant's movies are well known all over the world. The circumstance that he knew that the Complainant's Canadian trademark had been expunged in 1973 clearly shows that he was aware of its existence.
Finally, Mr. Gareth Evans admitted in his response that he also registered the domain name "famousplayer.net", which suggests an association with the "Famous Player" registered trade mark and chain of motion pictures theatres in Canada. This pattern of behaviour can be considered evidence of registration and use of the domain name in bad faith under Paragraph 4, (b), II of ICANN Policy.
The Panel concludes that (a) the domain name registered by Mr. Gareth Evans and at issue herein is confusingly similar to the registered trademarks "Universal Pictures" owned by Universal City Studios, Inc.; that (b) Mr. Gareth Evans has no rights or legitimate interests in respect of the"universalpictures.net"; and that (c) the Domain Name at issue was registered and is being used in bad faith by Mr. Gareth Evans.
Accordingly, the Complainant's request is granted and, pursuant Paragraph 3 (c), the Panel orders that the registration of the Domain Name at issue, universalpictures.net, be transferred from Mr. Gareth Evans to Universal City Studios, Inc,.
Rome, July 5, 2000
(s) Enzo Fogliani