Universal City Studios LLC, Amblin’ Entertainment, Inc. v. Kaan Turkmen / Reklav Medya
Case No. D2015-1856
1. The Parties
The Complainants are Universal City Studios LLC (“Universal”) and Amblin’ Entertainment, Inc. (“Amblin’”) of Universal City, California, United States of America (“United States”), represented by Manatt, Phelps & Phillips, LLP, United States.
The Respondent is Kaan Turkmen of Adana, Turkey / Reklav Medya of Adana, Turkey.
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2015. On October 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 20, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 22, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 11, 2015.
On November 6, 2015 the Center received an email from the Respondent informing it wished to transfer the disputed domain name to the Complainant.
The Complainant submitted a request for suspension on November 11, 2015 and a request for extension of suspension on December 4, 2015. On January 1, 2016, the Complainant submitted a request to re-institute the proceeding.
The Center notified the parties that the proceeding was re-instituted on January 6, 2016 and that the response due date was January 12, 2016.
The Respondent did not submit any response. Accordingly, the Center notified the parties of the Commencement of Panel Appointment process on January 13, 2016.
The Center appointed Steven A. Maier as the sole panelist in this matter on January 19, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Consolidation of Proceedings
The Complainants seek to have their proceedings against the Respondent consolidated in a single Complaint. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) provides under paragraph 4.16 that a complaint filed under the UDRP by multiple complainants may be brought against (one or more) respondents in situations in which (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants’ individual rights in a similar fashion; and (ii) it would be equitable and procedurally efficient to permit the consolidation.
The Complainants state that they have a common grievance against the Respondent because they are the joint owners of trademarks including the mark JURASSIC PARK. They submit that there would be no prejudice to the Respondent in consolidating the proceedings and that, on the contrary, it is in the interests of efficiency to avoid two virtually identical complaints. The Panel accepts these submissions, which are not contested by the Respondent, and finds that the Complaints should be consolidated accordingly.
5. Consent to Transfer
Under paragraph 4.13 of the WIPO Overview 2.0: “Where the parties to a UDRP dispute have not succeeded in settling a case between themselves prior to the rendering of a panel decision, but the respondent has given its unilateral and unambiguous consent on the record to the remedy sought by the complainant, a panel may at its discretion order transfer (or cancellation) of the domain name on that basis alone.”
As stated above, the Respondent emailed the Center on November 6, 2015. The email stated:
“Hello, We are delete the site of adanajurassicpark.com and we want to transfer this domain to you. Please contact us on email@example.com about details.”
The administrative proceedings were suspended to enable settlement negotiations between the parties and on November 10, 2015 the Respondent emailed the Center stating:
“Hello, we suspend the domain. Its ok?”
However, the administrative proceedings were reinstated with effect from January 6, 2016 as the parties had been unable to reach agreement. On January 5, 2016 the Respondent emailed the Center stating:
“Hi, how can we transfer domain to you?”
The above communications notwithstanding, the Panel does not consider it to be clear that the Respondent has given its unambiguous consent to the remedy sought by the Complainants in this matter, namely the transfer of the disputed domain name. In particular, the Panel does not know the reason why the negotiations between the parties were unsuccessful and, in particular, whether the Respondent intended to impose conditions upon the transfer most recently referred to. In the circumstances, the Panel finds that the proper course is to proceed to a reasoned Decision on the merits of the case.
6. Factual Background
The Complainant Universal is a Delaware limited liability company with its principal place of business at Universal City, California. It is a well-known film studio. The Complainant Amblin’ is a California corporation with its principal place of business at Universal City, California. It is a film and television production company. Together the Complainants are the producers of the 1993 motion picture “Jurassic Park” and three sequel pictures and are the joint owners of trademark registrations in numerous territories throughout the world covering a range of goods and services related to the “Jurassic Park” franchise.
The Complainants’ registered trademarks include, for example:
- United States trademark number 2057641 for JURASSIC PARK registered on April 29, 1997 in International Class 41 for entertainment services in the nature of an amusement park ride.
- United States trademark number 1881053 for the mark JURASSIC PARK and a design (the “Design”) registered on February 28, 1995 in International Classes 06, 14, 20 and 21. The Design consists of a circular device featuring a dinosaur head and a band containing the words JURASSIC PARK in a stylized font.
- Four Turkey trademarks, numbers 148635, 145037, 148160 and 155625, comprising the mark JURASSIC PARK and the Design registered between July 1993 and September 1994 in International Classes 09, 16, 18, 25, 28 and 30.
The Complainants submit evidence that they are the owners of over 350 trademark registrations worldwide for the words JURASSIC PARK and the Design, in addition to a multitude of other marks containing the term JURASSIC.
The disputed domain name was registered on July 29, 2015.
The Complainants have submitted evidence by way of screen prints that, on October 16, 2015, the disputed domain name resolved to a website which appeared to be promoting a dinosaur-themed amusement park named “Jurassic Park Adana”.
5. Parties’ Contentions
The Complainants state that the “Jurassic Park” film series franchise is one of the most commercially successful franchises of all time. The original “Jurassic Park” film broke the record for the highest grossing film worldwide and has since grossed over USD 1 billion. The Complainants have produced three sequels, most recently “Jurassic World” which was released in June 2015 and grossed a record estimated USD 500 million worldwide in its opening weekend. The “Jurassic Park” franchise overall has grossed at least USD 6.3 billion to date making it one of the top grossing and most widely recognized film franchises of all time.
The Complainants state that, through their related companies and licensees, they have used the JURASSIC PARK trademark since 1993 in connection with a wide range of merchandise and services, including clothing, games, bags and accessories. They also state that they have used the mark in connection with amusement park services since at least 1996 (although further details are not provided). The Complainants also refer to related trademarks, including JURASSIC WORLD, and provide evidence that they operate a virtual theme park under that name.
The Complainants also provide evidence they are the owners of (among others) the domain names and , the first of which redirects to the “Jurassic World” virtual theme park referred to above.
The Complainants submit that, as a result of the above matters, the mark JURASSIC PARK has become recognized by the public as identifying the Complainants’ film franchise and associated merchandise and has the status of a well-known and famous trademark in the United States and a multitude of other territories.
The Complainants submit that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights.
The Complainants rely on both their registered rights in the mark JURASSIC PARK and unregistered rights arising from the worldwide fame of the mark as submitted above. They say that the disputed domain name incorporates their mark JURASSIC PARK in its entirety together with the addition of the name “Adana”, which is the name of a city in Turkey. The Complainants submit that the addition of a descriptive, geographical, term to the disputed domain name does not distinguish it from the Complainants’ famous trade mark or serve to avoid confusion.
The Complainants submit that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, they state that they have never authorized or licensed the Respondent to use their mark JURASSIC PARK or any related trademark. Nor has the Respondent been commonly known by the disputed domain name or any similar name.
The Complainants point to the website referred to above and submit that the Respondent is using the website to provide information about a physical dinosaur-themed park located in Adana, Turkey. They allege that the website falsely appears to be authorized, sponsored by or affiliated with the Complainants by its use of the Complainants’ name and mark JURASSIC PARK and other protected elements of the Complainants’ franchise. The Complainants submit that the website features a picture of a “Jurassic Park” sign that is identical or confusingly similar to the Design and appears to be used at the entrance to the park. They also say that the website includes the name “Jurassic Park Adana” surrounded by various dinosaurs on every page. They state that the Respondent is also using the infringing website and JURASSIC PARK mark in connection with a dinosaur tour, birthday activities, sporting activities and a café, as well as an animated model named “Jurassic Land”. The Complainants say that the Respondent’s park opened for business on August 15, 2015 and provide evidence of a promotional video featuring a virtual tour of the park, including the “Jurassic Park” entrance sign referred to above.
In the circumstances, the Complainants submit that the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name. They submit that on the contrary, the Respondent is using the disputed domain name to capitalize upon the reputation and goodwill of the Complainants’ trademark and to divert Internet users who are interested in the Complainants to drive traffic to the Respondent’s website and park. The Complainants say that the Respondent’s promotional website, park and activities are directly competitive with the Complainants’ own commercial activities and make misleading use of the Complainants’ marks for that purpose.
The Complainants contend that the disputed domain name has been registered and is being used in bad faith.
In this regard, the Complainants rely again on the Respondent’s use of the disputed domain name in connection with the website referred to above. They submit that the Respondent must have been aware of the Complainants’ trademarks at the time the disputed domain name was registered and that the Panel should so infer from the totality of the surrounding circumstances. Given the fame and success of the Complainants’ “Jurassic Park” franchise and the Respondent’s use of the JURASSIC PARK mark, there can be no reasonable prospect that the Respondent chose the disputed domain name innocently or fortuitously. The Complainants also point out that the disputed domain name was registered just over one month after the release of the “Jurassic Word” film.
As to the use of the disputed domain name, the Complainants say that it is clear from the Respondent’s actions that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on that website (paragraph 4(b)(iv) of the Policy). In particular, the Respondent has used the Complainants’ trademarks falsely to attract Internet users to a website linked to the disputed domain name where the Respondent promotes and offers the Respondent’s own services.
The Complainants seek a transfer of the disputed domain name to the Complainant Universal.
The Respondent did not reply to the Complainants’ contentions.
In order to succeed in the Complaint, the Complainants are required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Even in a case such as this where the Respondent has not contested the Complaint, it is still necessary for the Complainants to establish that all of the three above elements are present.
A. Identical or Confusingly Similar
The Complainants have established that they have extensive registered trademark rights throughout the world for the mark JURASSIC PARK. The Panel accepts the Complainants’ evidence that the mark is widely known in many territories and is associated by the public with the Complainants’ motion picture franchise. The disputed domain name consists of the term “adana” before the term “jurassicpark” and the generic Top-Level Domain “.com”, which is typically to be disregarded for the purposes of comparison. The Panel accepts the Complainants’ evidence that Adana is a city in Turkey. In the circumstances, the disputed domain name wholly incorporates the Complainants’ distinctive trademark JURASSIC PARK together with the prefix “adana”. The Panel finds that the addition of a descriptive, geographical term to the Complainants’ mark does not serve to distinguish the disputed domain name from the Complainants’ mark. On the contrary, it is liable to increase the likelihood of confusion by suggesting that it relates to the Complainants’ activities in the geographical area in question.
Therefore, the Panel finds that that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainants have rights.
B. Rights or Legitimate Interests
The Panel accepts the Complainants’ contentions (which are not contested by the Respondent) that the Complainants have never licensed or authorized the Respondent to use their mark JURASSIC PARK and that the Respondent has not commonly been known by that name. The Panel also accepts the Complainants’ evidence that the Respondent has used the disputed domain name for the purposes of a website that makes substantial use of the Complainants’ JURASSIC PARK trademarks including the Design and which misleadingly represents that it, and the dinosaur-themed park which it promotes, are authorized, sponsored by or affiliated with the Complainants. This does not constitute a bona fide offering of goods or services for the purposes of the Policy and the Panel is unable to find any other basis upon which the Respondent may have rights or legitimate interests in the disputed domain name.
In the circumstances, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Panel notes that the disputed domain name was registered many years after the Complainants’ JURASSIC PARK trademark had gained worldwide notoriety. In the light of both this and the use to which the disputed domain name has been put, the Panel has no hesitation in inferring that the Respondent registered the disputed domain name in the full knowledge of the Complainants’ trademark and with the intention of using the disputed domain name unfairly to take commercial advantage of the Complainants’ significant goodwill in that mark.
In the light of the Respondent’s use of the disputed domain name for the purposes of a website that makes substantial use of the Complainants’ JURASSIC PARK trademarks including the Design for the purposes of promoting a dinosaur-themed park, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on that website (paragraph 4(b)(iv) of the Policy).
In the circumstances, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, be transferred to the Complainant Universal.
Steven A. Maier
Date: January 26, 2016