WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Universal City Studios Inc. v. A.D.V. s.r.l.

Case No. D2001-0158

 

1. The Parties

The Complainant is Universal City Studios Inc., a United States corporation with headquarters in Universal City, California, U.S.A. The Complainant is represented by Mr Dabio Angelini and Ms Angelica Lodigiani, Avvocati of Rome, Italy.

The Respondent is ADVs.r.l, an Italian corporation with headquarters in Turin, Italy. The Respondent is represented by Piera Enrica Bianco.

 

2. The Domain Name and Registrar

The domain name at issue is <studiouniversal.com>. The domain name is registered with Network Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, U.S.A.

 

3. Procedural History

A Complaint was submitted by the Complainant to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on January 29, 2001, (electronically) and February 2, 2001, (hard copy).

On February 2, 2001, a request for Registrar verification was transmitted by WIPO Center to NSI, asking it to:

- confirm that a copy of the Complaint had been sent to it by the Complainant as requested by WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).

- confirm that the domain name at issue is registered with NSI.

- confirm that the person identified as the Respondent is the current registrant of the domain name.

- provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrarís WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the building contact for the domain name.

- confirm that the Uniform Domain Dispute Resolution Policy ("UDRP") was in effect.

- indicate the current status of the domain name.

By email dated February 8, 2001, NSI advised WIPO Center as follows:

- NSI had received a copy of the Complaint from the Complainant.

- NSI is the Registrar of the domain name.

- the Respondent is the current registrant of the said domain name. The technical contact is Giorgio Lardone and the administrative contact is Piera Enrica Bianco, both of Turin.

- NSIís 5.0 Agreement applies to this domain name.

With effect from January 1, 2001, NSI adopted the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN"). The Respondent has never requested that the domain name be deleted from the relevant domain name database. The Respondent has not sought to terminate its agreement with NSI. Accordingly, the Respondent is bound by the provisions of NSIís Domain Name Dispute Resolution Policy. Further email communications to WIPO Center were sent by the Complainant and the Respondent on February 8, 2001. The Panel has decided to consider both of these emails.

Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, the WIPO Center on February 16, 2001, transmitted by post-courier and by email a Notification of Complaint and Commencement of Administrative Proceedings to the Respondent to the address provided by NSI. A copy of the Complaint was also emailed to ICANN and NSI.

The Respondent was advised that a Response to the Complaint was required within 20 calendar days. He was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. On March 2, 2001 (email) and March 6, 2001 (hard copy), the Respondent filed a Response.

On March 15, 2001, the WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Sole Panelist in this case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence. The Complainant has paid the required amount to the WIPO Center.

Sir Ian Barker duly advised his acceptance and forwarded to the WIPO Center his statement of impartiality and independence. On March 19, 2001 the Complainant and the Respondent were notified of the appointment of the Panel. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplementary Rules.

On March 19, 2001, WIPO Center forwarded the record to the Panelist by courier. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel was required to forward its decision by April 1, 2001.

The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").

The language of the administrative proceeding is English, being the language of the registration agreement.

 

4. Factual Background

- The Complainant, Universal City Studios, Inc., is a major worldwide entertainment company, active in the movie, television and music industry and also operating theme parks in the U.S.A. and elsewhere. Universal has been in the entertainment business for more than 80 years. Movies produced over recent years include "E.T.", "Jurassic Park", "Schindlerís List" and, more recently, "U571" and "Cast Away". It produces popular television shows such as "Magnum P.I.", "Colombo" and "Law and Order" (all popular in Italy).

- The Complainant owns trademarks for the term UNIVERSAL in several countries around the world. In Italy it holds rights in the trademark STUDIO UNIVERSAL filed under RM98C001706 and RM98C002379, respectively on April 1, 1998 and May 12, 1998, to cover services of TV-broadcasting in class 38 and all goods in classes 9 and 25. Subsequently on October 23, 2000 another application was filed in class 16.

- STUDIO UNIVERSAL was launched in Italy from May 21, 1998, through Stream, the second largest Italian digital satellite pay-TV operator, it now accounts for more than 1,000,000 subscriptions with a daily reach of more than 680,000 families (In Germany, broadcasting started in September 1998, in Spain in early 2000; STUDIO UNIVERSAL is soon to be released in the U.K.). Streamís main competitor in the Italian market is: Telepiù.

- The Complainant alleges that market surveys show that among consumers in the segment aged 30-45 years STUDIO UNIVERSAL is the favorite.

- STUDIO UNIVERSAL is the only channel which continuously broadcasts different movies, both recent and oldies, drawn from the Universal archives. The launch of STUDIO UNIVERSAL Ė and all its subsequent activity Ė received extensive media coverage.

- To promote the launch of STUDIOUNIVERSAL, a massive advertising campaign, was conducted between May 1998 and June 2000. It was planned and executed by means of advertisements in daily newspapers, periodicals, radio and with trailers shown before feature presentations in movie theaters across the nation and with billboards.

- When the Complainant sought to register STUDIOUNIVERSAL.COM, it discovered that such domain name had been registered on November 20, 1998 (i.e. seven months after the first trademark application had been filed, six months after STUDIO UNIVERSAL had begun its programming) by F1WC of Piazza Vittorio Emanuele III, n. 12, Montegrosso díAsti. In the Registry of Companies held by the Asti Chamber of Commerce, there is no record of such a company.

- In light of the importance of immediately securing the national domain, the Complainant then registered <studiouniversal.it>. When the UDRP became available, the Complainant, wishing to have recourse to such procedure to recover the domain name against F1WC, discovered that <studiouniversal.com> was no longer in the name of F1WC but had been registered, on May 9, 2000, by the Respondent.

- The Respondent, A.D.V., a company established on September 19, 1999, as reported in both the records of the Chamber of Commerce of Turin Ė and in its own website Ė is in the field of "servizi di ricerca e fornitura data pubblicitari dei media tramite Internet e relative consulenze" i.e. Ė research and supply of data concerning advertising in the media, by means of Internet, and relating consulting activities.

- A search of domain names registered in the name of A.D.V., showed A.D.V. to be the owner, in the gTLD "COM", beside <studiouniversal.com>, of <f1wc.com> (the common abbreviation of Formula 1 World Championship) and of <voguetv.com>.

- The Complainant instructed its intellectual property counsel to contact the Respondent to arrange the transfer of the domain names, offering to repay the reasonable costs incurred into the registration. In addition Complainant authorized its Counsel to state the Complainantís willingness to waive any cause of action that it might have had against the Respondent, if the transfer took place with undue delay.

The Respondent replied on September 20, 2001. The translation of its reply reads as follows:

"Dear Sirs, following your letter and your subsequent reminder along with the details of registration of STUDIO UNIVERSAL we remark the following:

- ADV S.r.l. is developing the domain name for a web site dedicated to the universities of the entire world with the aim to favor the diffusion of the spreading out of useful information for students looking for particular subjects or courses. Such project, such denomination, was conceived back in 1998 from a collaborator of ours (he indeed regularly registered such name by Network Solution) and was considered interesting and worth of further development.

- We believe that such an initiative for its finalities and the actual use of the domain "Studiouniversal.com" (with the publication on the Web of the only domain name on a white background) cannot be in any way harmful of the interest and reputation of your client and least of all may induce consumers in confusion.

- Furthermore, it is to be excluded any lawful scope or use in violation of the law in the past or in the future.

We therefore hope that from such explanations you can understand our absolute good faith in the undertaking of the project with the name of the domain at issue. We would be displeased to have to abandon a project upon which we have commit ourselves and upon which we have invested time and money. However, given your arguments in regard of the interests of your clients that operates in the television field we are available to find a solution.".

 

5. Partiesí Submissions

A. Complainant

The disputed domain name is identical to the Complainantís marks.

The Respondent has no rights to the domain name. It has not demonstrated preparations to use the domain name in connection with a "bona fide offering of goods or services" prior to any notice of dispute (i.e. the "cease and desist" letter of the Complainant).

The Respondent is not making any legitimate, non-commercial or fair use of the name but is preventing the Complainant from using it.

The Respondent registered the domain name in bad faith, intentionally using the Complainantís mark to capitalize on the fame of the mark and the Complainantís business. There is no longer a web page corresponding to the domain name.

The Respondentís continuing bad faith is shown by:

(a) Its refusal to transfer the name in return for out-of-pocket expenses;

(b) It endeavoring to create confusion and attract visitors to its website with a suggestion of sponsorship of the endorsement of the Complainant;

(c) The Respondent set up a web page for pay-TV which can be directed to the advertisements for the Complainantís competitors Ė including Telepiù, after Notice of Commencement of the Proceeding had been given.

B. Respondent

The domain name is not identical to or confusingly similar to the Complainantís mark.

The Respondent has legitimate rights and interests in the domain name for the following reasons:

(a) The domain name was registered in order to realize a service site totally dedicated to "the University world". The name is a translation of the Italian words "studio" and "universale".

(b) The project is addressed to international users and will be created in English and not Italian.

(c) Respondent and Complainant are not competitors.

(d) Although the domain is not yet in use, when it is used, it will offer completely different services, unable to be confused with the Complainantís marks or services.

(e) The domain name was not registered for the purpose of selling or renting to the Complainant for valuable consideration in excess of out-of-pocket expenses. When the name was registered by a collaborator of Respondent in 1998, nobody knew of the Complainantís Studio Universal channel or its registered mark.

(f) Before the Respondent received notice of the dispute, it had made preparations to use the name in connection with the offering of a bona fide of services. This can be seen from its web page online with its original logo and from the creation of a file of 5,000 Universities throughout the world.

(g) With regard to the new web page (referred to in Complainantís (c) above), this was the fault of a technician and the offending web page has been removed.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the 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".

The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

- That the Respondent has no legitimate interests in respect of the domain name; and

- That the domain name has been registered and used in bad faith.

The domain name <studiouniversal.com> in the judgment of the Panel is identical to the Complainantís marks. The addition of the ".com" has been held immaterial in many WIPO decisions.

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy that:

(a) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;

(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or

(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Panel considers that the Complainant has discharged the onus of proof under the second criterion in paragraph 4(a) of the Policy. The Respondent has not satisfied the Panel in respect of matters in paragraph 4(c) of the Policy. The Panelís reasons are summarized.

(a) The Complainant has granted the Respondent no rights in respect of its mark.

(b) The evidence of preparations by the Respondent to use the domain name in connection with the provision bona fide provision of goods and services prior to the dispute is sparse. The production of a list of names of Universities is not a difficult assignment. There is no evidence, supported by sworn declarations, of any other aspect of preparation.

(c) The conjunction of the words "studio" and "universal" does not immediately conjure up the concept of universities worldwide. Rather,the words are a reference to a movie-making business known throughout the world. Reversing the order of the words merely makes the words more understandable in the context of a Romance language where an adjective frequently follows a noun Ė the opposite of normal English usage.

(d) The inference that such a domain name has a connection with the Complainant is strong. Visitors to the website (when established) would tend to assume a connection with the Complainant.

Paragraph 4(b) of the ICANN Policy states:

"For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

It should be noted that the circumstances of bad faith are not limited to the above.

The Panel considers that the domain name was registered and is used in bad faith for the following reasons:

(a) It can be inferred that the predecessor in title of the Respondent who registered the domain name and the Respondent who accepted a transfer, knew of Universal Studios Ė because of its worldwide fame. Enquiry would have revealed registered marks for Studio Universal or else pending applications for registered marks.

(b) The Complainantís programming commenced in May 1998, before the name was registered in November 1998.

(c) The fact that the website has yet to be developed after over two years has been frequently held to be an indication of bad faith use of the name.

(d) The recent flowering of the website described above, although now withdrawn, raises suspicions. Why blame the service provider or a technician? They must have had some reason for doing what they did.

(e) It is difficult to see why a project for a website dedicated to universities needs the name of a well-known Italian television company or the name of an internationally-known movie-production house. Another suitable name could be found.

(f) Many visitors to the Respondentís website (if and when developed) must be likely to be presumed to expect some connection between the website and the Complainant, which has <studiouniversal.it>.

 

7. Decision

For the foregoing reasons, the Panel decides:

(a) That the domain name registered by the Respondent is identical to the trademark to which the Complainant has rights;

(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and

(c) That the Respondentís domain name has been registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <studiouniversal.com> be transferred to the Complainant.

 


 

Hon. Sir Ian Barker QC
Sole Panelist

Dated: March 27, 2001