Domain name - U.S. Trademark - International trademarks - Confusingly similar - Bad faith registration - Bad faith use - Respondent registering trademarks incorporating marks of Complainants following announcement of merger - Respondent offering to sell for a fee - Pattern of bad faith - Respondent having been ordered to transfer domain names in the past - Respondent registering 50 other domain names similar to famous marks.

Complainant Vivendi offers a variety of goods and services including those connected with telephones and telecommunications.  Vivendi owns marks registered since 1998, in both France and the U.S.  Complainant Seagram has been using that name since 1857 and operates in four distinct units:  music, filmed entertainment, recreation, and spirits and wines.  Seagram owns marks in over 150 countries.  Complainant Universal operates in the entertainment and motion pictures industries.  Universal owns serveral U.S. trademarks.  Complainants Vivendi and The Seagram Company Ltd. announced a planned merger, which is expected to result in a business to be named “Vivendi Universal”: Universal being a subsidiary of Seagram.  Respondent registered fifteen domain names incorporating "Vivendi" and either "Seagram" or "Universal", some with another word such as "tv", "studio" or "inc".

Held, Name Transferred to Complainant.

The domain names are confusingly similar to the marks of Complainant.  All the domain names include the entire mark of Vivendi and the marks of either Seagram or Universal.  The addition of the other terms, such as tv or studio, are legally insignificant. 

Respondent has no rights or legitimate interests in the domain name.  Respondent did not file a Response.

Respondent registered and used the domain name in bad faith.  There is a pattern of bad faith on the part of this Respondent.  Respondent had been involved in previous arbitration under the Policy which had resulted in a finding of bad faith.  Further, there was evidence that Respondent has registered fifty other domain names incorporating famous marks.  Respondent began registering the domain names following an announcement of a merger between the Complainants.  Complainant offered to reimburse Respondent for costs of registering, but Respondent refused and requested a fee, although no amount was specified.  All of these factor into a finding of bad faith registration and use.

Policies referred to

ICANN Rules for Uniform Domain Name Dispute Resolution Policy
Supplemental Rules for Uniform Domain Name Dispute Resolution Policy

Panel decisions referred to

United States Olympic Committee v. MIC, ICANN Case D2000-0189 (WIPO)
Morgan Stanley Dean Witter & Co. v. CPIC Net c/o Syed Hussain, ICANN Case FA 94449 (Nat. Arb. Forum)

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Samuels, Panelist: -

1. The Parties

The Complainants in this administrative proceeding are Vivendi S.A., a French corporation with a principal place of business in Paris; the Seagram Company Ltd., a Canadian corporation with a principal place of business in Montreal;  Joseph E. Seagram & Sons, Inc., a corporation incorporated under the laws of the State of Indiana, with a principal place of business in New York;  Universal Studios, Inc., a corporation incorporated under the laws of the State of Delaware, with a principal place of business in Universal City, California; and Universal City Studios, Inc., a corporation incorporated under the laws of the State of Delaware, with a principal place of business in Universal City, California.  The Respondent is CPIC NET, of Closter, New Jersey.
 

2. The Domain Names and Registrars

The domain names in dispute are as follows:

VIVENDIUNIVERSAL.ORG
VIVENDIUNIVERSALINC.COM
VIVENDIUNIVESALCORP.COM
VIVENDIUNIVERSALTVFCOM
VIVENDIUNIVERSALSTUDIO.COM
VIVENDIUNIVERSALMUSIC.COM
VIVENDIUNIVERSALMOVIES.COM
VIVENDIUNIVERSALMEDIA.COM
VIVENDIUNIVERSALFILMS.COM
IVIVENDIUNIVERSAL.COM
VIVENDISEAGRAM.COM
VIVENDI-SEAGRAM.COM
VIVENDISEAGRAM.NET
VIVENDI-SEAGRAM.NET

The domain names were registered by Respondent with Network Solutions, Inc. (NSI) and Register.com, Inc. on either June 13 or 14, 2000. 
 

3. Procedural Background

On June 27, 2000, the WIPO Arbitration and Mediation Center received from Complainant via e-mail a complaint for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation of Assigned Names and Numbers (ICANN) on August 26, 1999 (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules).

The complaint was filed in compliance with the requirements of the Rules and the Supplemental Rules, payment was properly made, the administrative panel was properly constituted, and the panelist submitted the required Statement of Acceptance and Declaration of Impartiality and Independence.

The instant Administrative Proceeding was commenced on July 31, 2000.

In a communication dated August 18, 2000, Complainants sought permission to supplement the record by submitting to the panel new facts and authority relevant to the case. 

Respondent failed to file a Response and a “Notification of Default,” dated August 21, 2000, was sent to Respondent by WIPO.

The decision of the Panel was due to WIPO on or before September 12, 2000.
 

4. Factual Background

As set forth in the Complaint, Complainant Vivendi has used its VIVENDI trademarks both in France and elsewhere since May 1998, and has registered its marks in France, the U.S. and many other countries in connection with a variety of goods and services, including telephones and telecommunications services.  See Complaint, Exhibit 7.

Complainant Seagram is a diversified company that operates in four global business segments: music, filmed entertainment, recreation, and spirits and wines.  The SEAGRAM mark has been used by Seagram and its affiliates since 1857.  The SEAGRAM or SEAGRAM-formative marks has been registered in more than 150 countries.  See Complaint, Exhibit 8.

Universal Studios, Inc. and its Universal City Studios, Inc. subsidiary are leading entertainment companies. Universal City Studios, Inc. owns a number of U.S. trademark registrations for the mark UNIVERSAL, as used in connection with entertainment services and motion picture films.  See Complaint, Exhibit 9.

Complainants Vivendi and The Seagram Company Ltd. have announced a planned merger, which is expected to result in a business to be named “Vivendi Universal”.  “On or about June 13, 2000, an article about the planned merger was published in several electronic news services.”  See Complaint, Exhibit 4.  That same day, Respondent commenced registering the disputed domain names.

On June 22, 2000, counsel for Vivendi wrote to Respondent's contact, Mr. Syed Hussain, notifying him that his registration of vivendiuniversal.org infringed Vivendi's trademark and trade name rights and demanded that Mr. Hussain transfer the domain name registration to Vivendi.  See Complaint, Exhibit 6.  Mr. Hussain failed to respond to the letter.

On June 26, 2000, Complainants' attorney received a telephone message from Mr. Hussain.  The message stated that Mr. Hussain had no intention of using the disputed domain names and that he was interested in negotiating an amicable resolution of the dispute.  Counsel returned the call on June 30.  During the conversation, Mr. Hussain indicated that he makes his living out of this type of activity and that other companies have paid a lot for domain names.  Counsel offered to reimburse Respondent for the expenses incurred in registering the domain names, but Mr. Hussain declined the offer.  When asked what he wanted, Mr. Hussain indicated that he would not name a price but that he felt entitled to a “fee” for his services and emphasized that mere reimbursement of his expenses “won't put food on my table.”  See sworn Affidavit of Jeffrey D. Neuburger attached as Exhibit 15 to Additional Submission.

This is not the first time Mr. Hussain has been involved in a dispute brought under the Uniform Domain Name Dispute Resolution Policy.  For example, an earlier Panel, in a dispute brought by the United States Olympic Committee, found that Mr. Hussain registered and used the domain name USOLYMPICSTORE.COM in bad faith and ordered the domain name transferred to the United States Olympic Committee.  See United States Olympic Committee v. MIC, Case No. D2000-0189 (WIPO May 4, 2000).  The facts of that case resemble those in the instant dispute insofar as the record established that, after reading a press release announcing plans by the United States Olympic Committee and NBC to open an online U.S. Olympic Store, Mr. Hussain registered the domain name in dispute.  In another case, Morgan Stanley Dean Witter & Co. v. CPIC Net c/o Syed Hussain (NAF, May 31, 2000), Mr. Hussain was found to have knowingly and in bad faith registered the domain names MSDWPRIVATEEQUITY.COM and MSDWPE.COM.

The facts further establish that Mr. Hussain has registered more than fifty (50) domain names, many of which are variations of, or combinations of, names of well-known companies, including TIMEWARNER-CETV.COM, VODAFONEMANNESMAN.COM, and OLIVETTICNOST.ORG.  See Additional Submission, Exhibits 20 and 21.SEE
 

5. Parties' Contentions

Complainants contend that there is no doubt that each of the disputed domain names is confusingly similar to Complainants' marks, that Mr. Hussain cannot prove any legitimate interest or rights in any of the domain names in issue, and that the facts establish that Mr. Hussain registered and uses the domain names in bad faith.
 

6. Discussion and Findings

The Panel has carefully weighed the evidence presented and determines that Complainants have established all of the elements required under paragraph 4.a. of the Policy.

Each of Respondent's domain names incorporates in full the VIVENDI mark, in combination with either the UNIVERSAL or SEAGRAM marks and, thus, are either identical or confusingly similar to Complainants' marks.  The minor differences that do exist, for example, the addition of the terms “inc”, “corp”, “tv”, “music”, and “movie” to the domain names, are legally insignificant.  Further, Complainants clearly have rights to the VIVENDI, UNIVERSAL, and SEAGRAM marks, as evidenced by their existing registrations and widespread use.

It is also clear that Respondent has no rights or legitimate interests in respect of the domain name.  None of the circumstances set forth in paragraph 4.c. of the Policy is applicable.

With respect to the issue of “bad faith” registration and use, the Panel determines that Respondent has registered the domain names in order to prevent Complainants from reflecting the marks in corresponding domain names and has engaged in a “pattern” of such conduct, within the meaning of paragraph 4.b.(ii) of the Policy.  The evidence further establishes that Respondent registered the disputed domain names primarily for the purpose of transferring the registrations to Complainants for consideration in excess of out-of-pocket expenses, within the meaning of paragraph 4.b.(i) of the Policy.
 

7. Decision

In view of the above, the Panel GRANTS Complainants' request for transfer to Complainant Vivendi of the following domain names:

VIVENDIUNIVERSAL.ORG
VIVENDIUNIVERSALINC.COM
VIVENDIUNIVESALCORP.COM
VIVENDIUNIVERSALTV.COM
VIVENDIUNIVERSALSTUDIO.COM
VIVENDIUNIVERSALMUSIC.COM
VIVENDIUNIVERSALMOVIES.COM
VIVENDIUNIVERSALMEDIA.COM
VIVENDIUNIVERSALFILMS.COM
IVIVENDIUNIVERSAL.COM
EVIVENDIUNIVERSAL.COM
VIVENDISEAGRAM.COM
VIVENDI-SEAGRAM.COM
VIVENDISEAGRAM.NET
VIVENDI-SEAGRAM.NET
 
  Jeffrey M. Samuels
Panelist
Dated:  September 12, 2000