DECISION

 

Universal Music Group N.V. and Universal City Studios LLC v. JT U Animation / U Animation

Claim Number: FA2402002085375

 

PARTIES

Complainant is Universal Music Group N.V. and Universal City Studios LLC ("Complainant"), represented by Steven M. Levy of FairWinds Partners LLC, District of Columbia, USA. Respondent is JT U Animation / U Animation ("Respondent"), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <universalmusicgroup.com> ("Domain Name"), registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Sandra J. Franklin and Gerald M. Levine as Panelists and Nicholas J.T. Smith as Chair.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 24, 2024; Forum received payment on February 24, 2024.

 

On February 26, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the <universalmusicgroup.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 April 15, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 6, 2024 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@universalmusicgroup.com. Also on April 15, 2024, 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.

 

A timely Response was received and determined to be complete on May 6, 2024.

 

On May 14, 2024, pursuant to Complainant's request to have the dispute decided by a three-member Panel, Forum appointed Sandra J. Franklin and Gerald M. Levine as Panelists and Nicholas J.T. Smith as Chair.

 

On May 10, 2024 the Complainant filed an unsolicited Additional Submission with the Forum. On May 13, 2024, the Respondent also filed an Additional Submission with the Forum.  Each of these submissions was provided to the Panel when appointed.

 

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.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS

In the instant proceedings, there are two Complainants.  Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") provides that "[a]ny person or entity may initiate an administrative proceeding by submitting a complaint."  Forum's Supplemental Rule 1(e) defines "The Party Initiating a Complaint Concerning a Domain Name Registration" as a "single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint."

 

Previous panels have interpreted Forum's Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other.  For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int'l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:

 

It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.

 

In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names.  Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. 

 

The Panel has reviewed the Complaint and is satisfied that that Universal Music Group N.V. is the exclusive licensee of the UNIVERSAL MUSIC GROUP mark which it licenses from the registered owner Universal City Studios LLC.  This is sufficient to establish a sufficient nexus or link between the Complainants such that they should be treated as a single entity in this proceeding referred to at all appropriate times in the singular, as "Complainant".

 

PRELIMINARY ISSUE: ADDITIONAL SUBMISSIONS

The Panel must consider whether to accept the Additional Submissions filed by both parties.  While noting the existence of Supplemental Rule 7, the Panel retains the discretion to decide whether to accept additional submissions.  See generally Bar Products.com, Inc. v. RegisterFly.com, FA 829161 (Forum Jan. 9, 2007) (declining to consider Complainant's reply because it adds nothing of substance to the record, and does not address any arguments of Respondent that could not have been anticipated by the Complainant).  If an additional submission simply reargues the same points, there is no reason to accept it; on the other hand, if the additional submission addresses arguments in the Response that Complainant could not have anticipated or provides information unavailable at the time the Complaint was submitted, the Panel may allow the additional submission.

 

In the present case the Complainant's Additional Submissions do not add any significant material to what is already a detailed and conclusive Complaint. The Panel has exercised its discretion not to have regard to the Complainant's Additional Submissions and also the Respondent's Additional Submissions, which are in reply to the Complainant's Additional Submissions.

 

PARTIES' CONTENTIONS

A. Complainant

Universal City Studios LLC., is a film production and distribution company and Universal Music Group N.V. is a music company. Each of the entities that comprise the Complainant use a variety of marks featuring the word UNIVERSAL.  Complainant has rights in the UNIVERSAL MUSIC GROUP mark based on registration of the mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,903,751, registered January 11, 2011 with a date of first use of 1999). Respondent's <universalmusicgroup.com> domain name is identical to Complainant's UNIVERSAL MUSIC GROUP mark as it simply adds and the ".com" generic top level domain ("gTLD") to the wholly incorporated mark.

 

Respondent does not have rights or legitimate interests in the <universalmusicgroup.com> domain name and any evidence presented by the Respondent otherwise is an obvious forgery.  Respondent is not commonly known by the Domain Name. Additionally, Respondent does not use the Domain Name for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent has previously simply redirected the Domain Name to an affiliate of the Complainant. Respondent also uses an e-mail address connected to the Domain Name to promote his app on the Google Play store and offers the Domain Name for sale for a sum well in excess of any possible out of pocket costs.

 

Respondent registered and uses the <universalmusicgroup.com> domain name in bad faith. The Domain Name was previously owned by the Complainant but expired in 2016. Respondent acquired the Domain Name in 2017 and has since offered to sell it to Complainant for various sums including most recently USD 10.5 million, a sum vastly in excess in any out-of-pocket costs incurred in respect of the registration of the Domain Name. Furthermore, Respondent has engaged in other bad faith conduct, including engaging in a pattern of conduct in registering domain names corresponding to well-known marks.

 

B. Respondent

The Domain Name is registered in the name of JT U Animation / U Animation however Respondent indicates that he is an individual known as John Torres, with the JT U Animation / U Animation details being a pseudonym. Respondent states that Complainant's allegations against him are unfounded and that he has legitimate interests in the Domain Name for the following reasons:

 

1)       Respondent participated in a music video at Universal Studios at the age of 13.

2)       Respondent was an intern at Universal Records at the age of 17.

3)       Respondent acquired the Domain Name for $250,000 from Universal Studios in 2003, an action Respondent characterizes as visionary.

4)       Respondent holds or held registered trademark rights in THE UNIVERSAL MUSIC GROUP with the USPTO.

5)       Respondent is the holder of a 2% equity stake in Universal Records, as granted by Doug Morris, the former CEO of Universal Records which grants Respondent unequivocal permission to use the name "Universal Music Group".

 

The Complainant has engaged in demonstrable bad faith and a lack of transparency in bringing the Complaint by selectively presenting facts, and making false accusations, including that Respondent has falsified its USPTO trademark certificate and the contract Respondent holds with Doug Morris.

 

Complainant has presented insufficient evidence of its use of the UNIVERSAL MUSIC GROUP mark and has provided no explanation of its delay in filing this proceeding. It has engaged in a reckless effort to hijack the Domain Name, one that is of considerable value to the Respondent.

 

FINDINGS

Complainant holds trademark rights for the UNIVERSAL MUSIC GROUP mark.  The domain name <universalmusicgroup.com> is identical to Complainant's UNIVERSAL MUSIC GROUP mark.  Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.

 

Identical and/or Confusingly Similar

Complainant has rights in the UNIVERSAL MUSIC GROUP mark based on registration with the USPTO (e.g Reg. No. 3,903,751, registered January 11, 2011).  Registration of a mark with the USPTO sufficiently confers a complainant's rights in a mark for the purposes of Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office ("USPTO").").

 

The Panel finds that the <universalmusicgroup.com> domain name is identical to Complainant's UNIVERSAL MUSIC GROUP mark as it wholly incorporates the UNIVERSAL MUSIC GROUP mark and adds the ".com" gTLD.  Adding a gTLD to a wholly incorporated trademark does not negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i).  See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) ("A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs."); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (finding top-level domains are irrelevant for purposes of Policy ¶ 4(a)(i) analysis).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name.  In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then 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 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (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."). 

  

The Panel notes that Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the UNIVERSAL MUSIC GROUP mark. 

 

The Domain Name has variously resolved to a website offering itself for sale or to a website operated by an affiliate of the Complainant. Neither of these uses is sufficient by itself to establish rights or legitimate interests. See AOL Inc. v. YourJungle Privacy Protection Service aka Whois Agent, FA 1533324 (Forum Jan. 17, 2014) ("Respondent has offered the <aoljobsweek.com> domain name for sale to the general public, which demonstrates that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii)."); see also Google LLC v. Tim Sales, FA 1363660 (Forum Jan. 31, 2018) ("[T]he Panel finds that Respondent is using the <googlesalessupport.com> domain name to redirect Internet users to Complainant's website and finds that Respondent lacks rights and legitimate interests in the domain name.").

 

In addition, Respondent has offered the Domain Name for sale to the Complainant for a sum considerably greater than any likely out of pocket costs incurred in registering the Domain Name.  Absent any legitimate explanation, the use of a Domain Name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).  See AOL Inc. v. YourJungle Privacy Protection Service aka Whois Agent, FA 1533324 (Forum Jan. 17, 2014) ("Respondent has offered the <aoljobsweek.com> domain name for sale to the general public, which demonstrates that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii)."). 

 

The Panel having considered the above cited evidence, holds that Complainant has made out a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name. The burden now shifts to Respondent to show he does have rights or legitimate interests. As noted in the summary of the Response and repeated below, Respondent has made five claims that he states provide a basis for him to establish rights or legitimate interests in the Domain Name. They are: 

 

1)       Respondent participated in a music video at Universal Studios at the age of 13.

2)       Respondent was an intern at Universal Records at the age of 17.

3)       Respondent acquired the Domain Name for $250,000 from Universal Studios in 2003, an action Respondent characterizes as visionary.

4)       Respondent holds or held registered trademark rights in THE UNIVERSAL MUSIC GROUP with the USPTO.

5)       Respondent is the holder of a 2% equity stake in Universal Records, as granted by Doug Morris, the former CEO of Universal Records which grants Respondent unequivocal permission to use the name "Universal Music Group".

 

The Panel does not accept the Respondent's claim that Respondent has presently or ever held trademark rights in the THE UNIVERSAL MUSIC GROUP. For the reasons set out in the Complaint the Panel finds that the evidence submitted by the Respondent in support of this contention to be a series of clumsy and obvious forgeries. Specifically Respondent claims to hold USPTO registered trademark number 4,160,201, a number that, in the publicly available USPTO database, is associated with a mark that was registered with the USPTO more than a decade after the Respondent's supposed trademark was registered. Furthermore, there is no record of the Respondent having ever registered a trademark with the USPTO and the evidence submitted by the Respondent in support of his claim is replete with falsities including the suggestion that the USPTO uses e-mails with a @gmail.com domain rather than the official @uspto.gov domain.

 

The Panel also does not accept the Respondent's extraordinary claim to be an owner of 2% of the shares of "Universal Records Online/Universal Music Group Online" based upon a 6-page "Website Development and Equity Agreement" exhibited in the Response which was supposedly provided (as stated in the supposed agreement) "John Torres' invaluable contribution as an intern web developer". Such an agreement is utterly fantastical and an obvious forgery. It includes a supposed signature of Complainant's former CEO copied from a publicly available location and language that would never have been expected to be included in a legal document (for example at paragraph 2.3 "This is like a special deal for him."). Were Respondent the actual owner of 2% of the shares it would be possible to provide independent verification of ownership rather than a 6-page "Website Development and Equity Agreement" with an obviously forged signature.

 

The Panel is satisfied from the independent third party Whois records provided by the Complainant that it was the owner of the Domain Name as of June 16, 2016 and that by June 8, 2018 ownership of the Domain Name had passed to the Respondent (in fact the Domain Name had likely passed to Respondent before November 11, 2017, when Respondent wrote to the Complainant seeking to leverage his recent acquisition of the Domain Name into a commercial partnership). There is simply no independent, verified or trustworthy evidence to support the contention that Respondent acquired the Domain Name for $250,000 from Universal Studios in 2003 and there is a weight of evidence casting doubt on this claim.

 

Finally, whether or not Respondent was an intern at Universal Records, participated in a music video at Universal Studios or had any relationship whatsoever with the various CEOs and music figures outlined in the Response, has no relevance in establishing rights or legitimate interests.

 

The Panel finds that Respondent has failed to establish that it has rights or legitimate interests in the Domain Name. Therefore, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

The Panel finds that, at the time Respondent acquired the Domain Name, in either 2016 or 2017, Respondent had actual knowledge of Complainant's UNIVERSAL MUSIC GROUP mark as this is asserted by both parties.

 

The Panel does not accept the Respondent's various explanations behind its ownership of the Domain Name and finds that Respondent acquired the Domain Name for the clear purpose of selling (or otherwise leveraging) the Domain Name to the Complainant or a third party for a for valuable consideration in excess of any out-of-pocket costs. Respondent has never used the Domain Name for any active purpose other than to redirect to websites related to the Complainant or a page offering the Domain Name for sale for sums far in excess of any possible out-of-pocket costs incurred by Respondent. At the same time, commencing from 2017 Respondent has engaged in long-running series of communications with Complainant seeking to sell the Domain Name for a significant price (suggesting that it could be worth up to USD 75 million) or leverage his ownership for some sort of other commercial benefit. An offer to sell a disputed domain name may be evidence of bad faith per Policy ¶ 4(b)(i).  See Campmor, Inc. v. GearPro.com, FA 197972 (Forum Nov. 5, 2003) ("Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i)."); see also loanDepot.com, LLC v. sm goo, FA 1786848 (Forum June 12, 2018) (finding that where a respondent's only employment of a substantially identical domain name is to attempt to sell the name, there exist sufficient grounds to find the respondent registered and used the name in bad faith per Policy ¶ 4(b)(i)).  In the present case, given the nature of the Domain Name, the content of the communications between the Complainant and Respondent and the lack of a plausible and supported alternative explanation provided by Respondent, the Panel finds that the Respondent registered and used the Domain Name in bad faith pursuant to Policy ¶ 4(b)(i).

 

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 <universalmusicgroup.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Sandra J. Franklin and Gerald M. Levine as Panelists and Nicholas J.T. Smith as Chair Panelist

Dated: May 20, 2024