Universal City Studios LLC v. Maddisyn Fernandes / Fernandes Privacy Holdings
Claim Number: FA1802001770775
Complainant is Universal City Studios LLC ("Complainant"), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Maddisyn Fernandes / Fernandes Privacy Holdings ("Respondent"), Bolivia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <universalorlandovactions.com>, registered with TLD Registrar Solutions Ltd.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 7, 2018; the Forum received payment on February 12, 2018.
On Feb 9, 2018, TLD Registrar Solutions Ltd. confirmed by email to the Forum that the <universalorlandovactions.com> domain name is registered with TLD Registrar Solutions Ltd. and that Respondent is the current registrant of the name. TLD Registrar Solutions Ltd. has verified that Respondent is bound by the TLD Registrar Solutions Ltd. 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 13, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 5, 2018 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@universalorlandovactions.com. Also on February 13, 2018, the Written Notice of the Complaint, notifying Respondent of the email 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 6, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant operates Universal Orlando, a popular theme park and entertainment complex located in Orlando, Florida. Universal Orlando opened in 1990 and attracts visitors from around the world. Complainant also sells related products and services. Complainant uses UNIVERSAL and UNIVERSAL ORLANDO, among other marks, in connection with this business. The marks are the subject of trademark registrations in the United States, the European Community, and other jurisdictions; and Complainant asserts that they have become famous as a result of longstanding use and promotion. Complainant operates websites using the domain names <universalorlando.com> and <universalorlandovacations.com>.
Respondent is the registrant of the disputed domain name <universalorlandovactions.com>. The domain name was initially registered in 2012, and was held in the name of a privacy registration service immediately prior to the commencement of this proceeding, The domain name redirects visitors to a third-party website that offers new and used cars for sale. Complainant alleges that Respondent receives compensation for directing traffic to that site. Complainant states that Respondent is not commonly known by the disputed domain name, and suggests that Respondent's use of a privacy registration service is suggestive of bad faith and a lack of legitimate interests in the domain name. Complainant also notes that the domain name includes the misspelled word "vactions" and, but for that misspelling, is identical to Complainant's <universalorlandovacations.com> domain name. Finally, Complainant asserts that Respondent is a "well-known cybersquatter," listing many decisions that have been rendered against Respondent in prior proceedings under the Policy.
Complainant contends on the above grounds that the disputed domain name <universalorlandovactions.com> is confusingly similar to Complainant's marks, particularly UNIVERSAL ORLANDO; that Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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 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 (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 disputed domain name <universalorlandovactions.com> incorporates Complainant's registered mark UNIVERSAL ORLANDO (omitting the space), adding the generic term "vacations" (omitting a letter) and the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Universal City Studios LLLP v. Dr. Marco Ferro, FA 1212864 (Forum Aug. 6, 2008) (finding <universalstudioflorida.com> confusingly similar to UNIVERSAL STUDIOS FLORIDA); American Airlines, Inc. v. Portfolio Brains, LLC, FA 1247273 (Forum Mar. 31, 2009) (finding <aavaction.com> confusingly similar to AA). Accordingly, the Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name <universalorlandovactions.com> incorporates Complainant's registered mark and is a misspelled version of Complainant's <universalorlandovacations.com> domain name — an obvious instance of typosquatting, a practice designed to take advantage of Internet users' typographical errors. The sole apparent use of the disputed domain name has been to redirect Internet users to a third-party commercial website, presumably generating referral fees for Respondent. Such use does not give rise to rights or legitimate interests. See, e.g., Skechers U.S.A., Inc. & Skechers U.S.A., Inc. II v. Lin Yanxiao, FA 1674758 (Forum June 10, 2016); American Airlines, Inc. v. Portfolio Brains, LLC, supra; Universal City Studios LLLP v. Dr. Marco Ferro, supra.
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(ii) of the Policy, bad faith may be shown by evidence that the domain name was registered "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent] ha[s] engaged in a pattern of such conduct." Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent's registration of a domain name incorporating Complainant's mark and obviously intended to create confusion with Complainant, together with the use of that domain name to redirect Internet users to an unrelated commercial website, is indicative of bad faith under the Policy. See, e.g., Skechers U.S.A., Inc. & Skechers U.S.A., Inc. II v. Lin Yanxiao, supra; American Airlines, Inc. v. Portfolio Brains, LLC, supra; Universal City Studios LLLP v. Dr. Marco Ferro, supra. Further support for this conclusion may be found in prior panel decisions recounting Respondent's history of bad faith domain name registrations, e.g., ISISPHARMA France SAS, ISIS PHARMA GmbH v. Domain Admin / WhoIs Privacy Corp./ Maddisyn Fernandes, D2017-1905 (WIPO Nov. 21, 2017); Disney Enterprises, Inc. v. Maddisyn Fernandes / Fernandes Privacy Holdings, FA 1750672 (Forum Nov. 5, 2017), and in the use of a privacy registration service in an attempt to conceal Respondent's identity, e.g., Philip Morris USA Inc. v. Maddisyn Fernandes, Fernandes Privacy Holdings / Domain Admin / Whois Privacy Corp., D2017-0704 (WIPO June 7, 2017).
The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <universalorlandovactions.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: March 8, 2018
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