The Complainant submits that the Respondents operate an explicit hardcore pornographic website at the domain name , which it registered June 4, 1999 and from which it sells explicit hardcore pornographic films and images. In support of this contention the Complainant has submitted print-outs of the content of the Respondents' said www site. The Complainant considers the Respondents' use and registration of the domain name to be an infringement of the Complainant's UNIVERSAL PICTURES trade marks, given the international fame of the Complainant's marks, the virtual identity of the Complaint and Respondents' domain names, and the use of both domain names for www sites that involve the advertisement and distribution of films.

The Complainant submits that the Respondents have registered and are using said domain name in bad faith. In this regard, the Complainant submits that the Respondents are using the said domain name for the purposes of operating a commercial, hard-core por nography site whose wares and services include the distribution and sale of pornographic films and photographs. The Complainant uses its well-known UNIVERSAL PICTURES trade marks and domain name for purposes including producing and selling films and television shows, including films and shows for children, and operating a www site offering information about such films and shows. The Respondents' activities are therefore related to or overlap with those of the Complainant, except tha t the Respondents' site, wares and services are associated with pornography.

The Respondents claim that the said domain name has been lawfully registered though the Registrar since June 4, 1999 and state that from that date to the date of filing of the Response, the Respondents have not been in receipt of any communications from t hird parties addressing concerns, comments, or confusion made due to typo-error in respect of the said domain name.

The Respondents submit that the said domain name was registered for the purpose of an adult site and was not registered to intentionally attract or divert the Complainant's consumers to the Respondents' www site. The Respondents point to the record of the Complainant's www site and in particular to the number of hits on the Complainants www site from January 2000 to September 2000. The Respondents submit that since the Complainant has had approximately 94 million hits in that period and since the Responde nts' own records show that the Respondents' said www site accessible via the said domain name, had only approximately 12 thousand hits in the same period, persons described by the Respondent as "meaningful" consumers are well aware that the Complai nant's name, trademark, service mark and domain name ends with the letter "s". In this the Complainant is borrowing a phrase from the decision of the administrative panel in said Loblaws, Inc. v. Presidentchoice.inc/ Presidentchoice.com (e-Resoluti on AF-0170A, AF-0170B, AF-0170C, June 7, 2000).

As to whether the Respondents registered and are using the said domain name in bad faith, the Respondents address the issues raised relating the correspondence between the parties in the months of July and August 2000. The Respondents state that in the Re spondents' letter of response on August 17, 2000 to the Complainant's letters of July 19, 2000 and August 13, 2000, the Respondents addressed their concerns to the Complainant in good faith. In this regard the Respondents particularly point to the 4th pa ragraph of the said letter of August 17. The Respondents further submit that, not having had a reply to that letter from the Complainant the Respondents sent a further letter in good faith, on September 27, 2000.

The Respondents submit that they do not wish to capitalize on the Complainant's consumers and point to the fact that the Complainant's www site has had approximately 7800% more hits than the www site operated by the Respondents at the said domain name . T he Respondents submit that these statistics obviously demonstrate that their use of the said domain name does not lure the Complainant's consumers to the Respondents' said www site.

Furthermore the Respondents submit that when registering the said domain name, the Respondents did not deliberately intended to attract the Complainant's consumers to the Respondent's site. The Respondents submit that if they had intended so to do, their www site would have achieved a similar number of hits to the number achieved by the Complainant's said www site. The Respondents submit that the number of hits on the respective www sites show it is possible to have consumer confusion as a result of missp elling of the word "pictures", but that while they admit such confusion is possible they state that the number of hits they received demonstrate that such confusion is not likely.

As to the Respondents' and the Complainant's respective logos, the Respondent submits that there is absolutely no resemblance between them "other than the film ends".

The Respondents submit that the Complainant is acting in bad faith in claiming that the Respondents' use film ends in their logo resembles the Complainant's UNIVERSAL PICTURES logo. The Respondents state that consumers have been we ll aware of the UNIVERSAL PICTURES logo for over 70 years, and it is unlikely that consumers would now be confused between the Respondents' and the Complainant's respective logos.

The Respondents submit that they registered the said domain name on June 4,2000, in good faith, for the purpose of an adult site. At all times the Respondents' primary goal has been to focus on their www site and not to tarnish the Complainant's trade mar ks or service marks. Furthermore, the Respondents deny any intention or plan to sell, rent, or transfer the said domain name. The Respondents state that if their intention was to capitalize on the Complainant's goodwill they could have bought other simila r domain names which were still available on the date on which the Respondent filed their Response in these Administrative Proceedings.

The Respondents counter-claim that it is the Complainant who is acting in bad faith by engaging in reverse domain name hijacking, because the Complainant's have no rights to the said domain name. The Respondents submit that the Complainant is endeavouring to monopolize the word UNIVERSAL and that the Complainant's position is that no words can follow after UNIVERSAL. In this regard, the Respondents cite another dispute existing between the Parties to these Adm inistrative Proceedings, wherein the Respondents have registered another domain name and the Complainants are alleging that the word "pixx" is too similar to the word "pictures". The Respondents state that in the present Administrative Proceedings the Com plainants are trying to monopolize the word "pictures" and all abbreviations associated with the word "pictures".

The Respondents deny that it has at any time been their intention to capitalize on typo-errors of consumers in typing the words UNIVERSAL PICTURES The Respondents submit that there has only been one (1) e-mail addressed to the Compl ainant on the matter of mistakenly typing in without the plural, in which the correspondent stated: "I'm surprised you guys haven't registered the non-plural domains." The Respondents submit that if the Complainants were so concerned about their trademark and the infringement laws associated with it, they would of bought the said domain name and other domain names similar to the domain name

5. Discussion and Findings

Paragraph 4(a) of the Policy places the onus on the Complainant to establish:

(i) that the domain name registered by the Respondents is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondents have no rights or legitimate interests in respect of the domain name;

(iii) that the domain name has been registered and is being used in bad faith.

This Administrative Panel is satisfied that the Complainant is the owner of inter alia the said USA registered trademark UNIVERSAL PICTURES and design (Registration No. 1639638) since April 1991 and the said USA registered service mark UNIVERSAL PICTURES DEBUT NETWORK and design (Registration No. 1394409) since May 1986. Furthermore this Administrative Panel is satisfied that the Complainant has acquired common law rights in the trademark UNIVERSAL PICTURES through its use of the said trademark in the USA and other jurisdictions in relation to the making and distribution of inter alia motion picture films and entertainment services including television since 1924.

Furthermore this Administrative Panel is satisfied that the Complainant has also, through its business activities on its www site at its domain address universalpictures.com, acquired common law rights in the use of the said tradem ark and service mark UNIVERSAL PICTURES in that context.

This Administrative Panel does not agree with the Complainants submissions that the said domain name is essentially identical to the Complainant's UNIVERSAL PICTURES & Design, because the said registration is for a "design"or "devic e" mark and there are a number of elements in that registration in addition to the words universal and pictures, however it seems clear to this Administrative Panel that the said domain is confusingly similar to said UNIVERSAL PICTURES & D esign registered trademark. On the other hand, this Administrative Panel accepts the Complainant's submissions that the said domain name is confusingly similar to the Complainant's UNIVERSAL PICTURES DEBUT NETWORK & Design, p reviously used in the United States since January 1, 1985 in association with entertainment services namely the distribution of a variety of motion pictures for presentation on television.

Furthermore this Administrative Panel accepts the Complainant's submissions that the said domain name is essentially identical and certainly confusingly similar to the Complainant's said common law trade mark UNIVERSAL PICTURES.

In reaching this conclusion, this Administrative Panel has considered ICANN decision cited by the Respondents in support of their contention that although there is only a single letter "s" in the difference, the domain name is similar but not confusingly similar to the Complainant's trademark.

In Loblaws, Inc. v. Presidentchoice.inc/ Presidentchoice.com (e-Resolution AF-0170A, AF-0170B, AF-0170C, June 7, 2000), the administrative panel stated as follows:

"Similarity of domain name to mark presidentchoice.com, presidentchoice.net and presidentchoice.org are not identical to the PRESIDENTS CHOICE mark, but they are unquestionably similar. The issue of confusing similarity is a close one. As Loboaws notes, t he domain name differs from its mark only by the omission of the possessive "s". As Azimi notes, the mark comprises two common words combined in an undistinctive phrase, which is used by more than one entity as a trademark. Further, the facts that a third party with independent trademark rights operates a website at www.presidentschoice.com and that none of Loblaw's "presidentchoice[product].com" domain name registrations, use the "presidentchoice" string to act to reduce confusion. On balance, meaningful consumer confusion seems possible but not likely."

This Administrative Panel is not willing to accept that the decision in that case can be taken to establish or even advocate that the mere addition of the letter "s" is sufficient to remove the liklihood of confusion between two combinations of words that are otherwise identical.

In the undefended administrative proceedings, MatchNet Plc. v. MAC Trading, (WIPO Case No. D2000-0205, May 11, 2000), this administrative panelist decided that the domain name americansingle.com was virtually identical to and certainly confusingly similar to the complainants AmericanSingles common law trademark.

In other undefended proceedings the administrative panel in World Wrestling Federation Entertainment Inc. v. Matthew Bessite, (WIPO Case No. D2000-0256, June 7, 2000), the administrative panel found that "[t]he domain name WWWWF.COM is confusingly similar to Complainant's mark WWF, and substantially identical to Complainant's domain name WWF.COM. The domain name WWWSTONECOLD.COM is confusingly similar to the name of Complainant's STONE COLD character, and substantially identical to Complainant's do main name STONECOLD.COM."

Neither Party has addressed this Administrative Panel on the correct test to be applied in deciding whether a domain name is confusingly similar to a trademark. This question has arisen in other cases and this Administrative Panelist has considered the qu estion recently in Diageo plc v. John Zuccarine, Individually and t/a Cupcake Patrol, (WIPO Case No. D2000 - 0996, October 22, 2000) and concluded as follows:

" In the absence of any Response from the Respondent, this Administrative Panel accepts that in the present state of development of the jurisprudence in this area, in cases where the administrative panel is being guided by the principles developing in the laws of the USA, the appropriate test to apply is the multi-factor test set forth in the decision of the United States Court of Appeals for the Ninth Circuit in AMF Inc. v. Sleekcraft Boats, [1979] USCA9 691; 599 F.2d 341 (9th Cir. 1979). In doing so, this Adminis trative Panel is conscious that this test may not be entirely suited to the determination of these issues as can be seen from the difficulties experienced by this Administrative Panel in its application (infra)."

Since in the present Administrative Proceedings the Complainant and the Registrar are based in the USA, and since the Respondents are based in Canada, in the absence of any submissions on the Canadian law on this area, this Administrative Panel will be gu ided by the factors set out in the Sleekcraft decision.

The multifactor test applied in Sleekcraft was described by the administrative panel in Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, (WIPO Case No. D2000-0477) in the following terms:

"The question whether a domain name and a trademark are confusingly similar involves the application of a multifactored test exemplified in the decision of the U.S. Court of Appeals for the Ninth Circuit in AMF Inc. v. Sleekcraft Boats, [1979] USCA2 431; 599 F.2d 34 1 (9th Cir. 1979). The Sleekcraft factors are directed to whether there is a "likelihood of confusion" between two marks. While developed in the context of comparing two trademarks, the Sleekcraft factors have more recently been employed by the federal courts to compare domain names to trademarks, and domain names to domain names. The Sleekcraft factors were, for example, employed by the federal district court in Bally Total Fitness discussed infra. The Sleekcraft factors were relied upon by the Court of Appeals for the Ninth Circuit in Brookfield Communications v. West Coast Entertainment, [1999] USCA9 225; 174 F.3d 1036, 1053-61 (9th Cir. 1999).

In Sleekcraft, the Court of Appeals for the Ninth Circuit enumerated eight factors to be weighed on the question of likelihood of confusion. These are: (1) strength of the mark; (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actu al confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchaser; (7) defendant's intent in selecting the mark; and (8) likelihood of expansion of the product lines."

Applying these factors to the domain name and trademark and service mark in issue in the present Administrative Proceedings this Administrative Panel concludes as follows:

(1) As to the strenght of the mark, although the Complainant's registrations are device marks and there is a disclaimer on the exclusive right to the use of the word "pictures", because the Complainant has been established for so many years and because i t has developed such a reputation as to attract such substantial hits on its www site, it is clear that the Complainant is the owner of a distinctive mark with a strong reputation; (2) As to proximity of the goods, although the Respondents are engaged in the sale of essentially erotic materials and the Complainant is engaged in what it describes as "main stream" entertainment, they each are engaged in the sale and distribution of films; (3) As to the similarity of the marks, it is clear to this Administra tive Panel and accepted by the Respondent that the marks are very similar; (4) As to evidence of actual confusion, the Complainant has submitted an e-mail to demonstrate that confusion has actually occurred, this Administrative Panel notes however that, a s has been pointed out by the Respondents, there is only one piece of evidence and the Respondents deny having had any contact from third parties relating to confusion; (5) As to the marketing channels used, in the present dispute each of the Parties are using the Internet as a marketing channel; (6) As to the type of goods and the degree of care likely to be exercised by the purchaser, it seems that the issue here is primarily initial interest confusion and it is likely that children could be included a mong those searching for the Complainant's www site; (7) As to the Respondents' intent in selecting the mark, this Administrative Panel is satisfied that on the balance of probabilities, the Respondents selected the domain name with the intention of attra cting, for commercial gain, Internet users to the Respondent's said www site, by creating a likelihood of confusion with the Complainant' trademark and service mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's said www si te.; and (8) in the view of this Administrative Panel the likelihood of expansion of the product lines, is not pertinent in the present Administrative Proceedings.

On balance therefore, applying this test, this Administrative Panel concludes that said domain name is confusingly similar to the Complainant's trademark and service mark.

As regards the Respondents rights or legitimate interest in the said domain name, this Administrative Panel is also satisfied that the Respondents have no such rights or legitimate interest in the said domain name.

This Administrative Panel accepts the Complainant's argument that the Respondents' use and registration of the said domain name amounts to an infringement of the Complainant's UNIVERSAL PICTURES trade marks, given the international fame of the Complainant's marks, the confusing similarity of the said domain name to the Complainant's registered trademark, service mark, common law trademark and the domain name universalpictures.com which has been used by the Com plainant on a www site which has achieved such a substantial reputation in a relatively short time as is shown by the number of hits achieved. Furthermore both parties are engaged in the business of the advertisement and distribution of films via t heir www sites.

As to whether the Respondents registered and are using the said domain name in bad faith, this Administrative Panel is satisfied that the Respondents registered and are using the said domain name in order to take unfair advantage of the Complainant's sai d trademarks. The Complainant has established through evidence that it has a long standing and wide spread reputation and goodwill in the words UNIVERSAL and PICTURES in combination. The very substantial numbers of hits on the Complainant's www site when compared with the comparatively small number of hits on the Respondents www site, illustrates to some extent the strenght of the Complainant's reputation among the general public.

The Respondents have not given any explanation as to why they selected the said universalpicture.com domain name in circumstances where the Respondents acknowledge the Complainant's reputation in the said trademark. On the evidence submitted, this Administrative Panel concludes that the Complainant is correct in its assertion that the Respondents' choice of the domain name is deliberately intended to capitalize on the public recognition of the Complainant's said UNIV ERSAL PICTURES trade marks and universalpictures.com domain name, and on the fact that Internet users will commonly forget the letter "s" when attempting to access a website, and specifically, the Complainant's site.

Furthermore, this Administrative Panel accepts the Complainant's submission that the Respondents are using the said domain name for the purposes of operating a commercial www site whose wares and services include the distribution and sale of films and tha t the Complainant uses its well-known UNIVERSAL PICTURES trade marks and domain name for purposes including producing and selling films and television shows and operating a www site offering information about such films and shows.

The Respondents have argued that they are not associated with motion picture films nor have they any interest in production, selling and/or the distribution of films and that their main purpose is the selling of memberships for the "Interactive Web-site" .

This Administrative Panel accepts that the Complainant makes and distributes main-stream motion pictures whereas the Respondents are engaged in the hosting of an adult orientated membership based www site distributing erotic material. While acknowedgeing that they are each interested in different markets, this Administrative Panel is satisfied that the Parties are each engaged in the sale and distribution of films.

It is not necessary for this Administrative Panel to decide whether the Respondents' decision to use film ends on its said www site is a cause of confusion with the Complainant's logo which also incorporates film ends.

The Complainant has established and the Respondents accept that the Respondents operates a commercial adult orientated membership based www site distributing erotic material, and this Administrative Panel accepts that the Complainant has established that this has resulted in damage to the Complainant's said trade mark. The Complainant has submitted a copy of an e-mail from a consumer complaining of the content which was accessible on the Respondent's site when the Respondents' site was accessed in the exp ecation that it was the Complainant's www site. Such activity has been held in other administrative proceedings to be evidence of registation and use of a domain name in bad faith viz. MatchNet Plc. v. MAC Trading, (WIPO Case No. D2000-0205, May 11 , 2000); World Wrestling Federation Entertainment Inc. v. Matthew Bessite, (WIPO Case No. D2000-0256, June 7, 2000), and CCA Industries, Inc. v. Bobby R. Dailey, (WIPO Case No. D2000-0148, April 26, 2000).

In World Wrestling Federation Entertainment Inc. v. Matthew Bessite, (WIPO Case No. D2000-0256, June 7, 2000), the administrative panel stated that "Respondent's Domain Names each differs from Complainent's domain names by a single character, a p eriod between the common third level domain, "www" and the second level domain name. The Panel agrees with Complainant's assertion that Respondent is a 'typo -pirate' who attempts to mislead Internet users who mistakenly omit the period between 'www' and the second level domain name. Cybersquatters commonly register domain names such as the ones at issue, in order to take advantage of and profit from the unavoidable fact that typolographical errors occur. Several courts, have issued injunctions against th is practice."

This Administative Panel accepts that the Complainant has established that the Respondents have registered and are using the said domain name in bad faith by intentionally attempting to attract, for commercial gain, Internet users to the Respondents' sai d www site, by creating a likelihood of confusion with the Complainant' trademark and service mark as to the source, sponsorship, affiliation, or endorsement of the Respondents said www site.

Finally, this Administrative Panel rejects the Respondents' counter-claim that the Complainant is engaging in reverse domain name hijacking, because the Complainant's have no rights to the said domain name. The said domain name is clearly confusingly simi lar to the Complainant's long established trademark which has been used by the Complainant for over seventy years, the Respondents on the other hand have not established any claim to the said domain name and given the similarity of the said domain name to the Complainants trademark and service mark it is likely that the use of the said domain name, without the licence or consent of the Complainant, in relation to the sale of goods or the provision of services in the motion picture and television industr ies would amount to infringement of the Complainant's trademark and/or service mark. In the circumstances the Respondents cannot succeed in a claim to reverse domain name hijacking by the Complainant.

6. Conclusions

This Administrative Panel decides that that the Complainant has established that the Respondents have registered said domain name universalpicture.com confusingly similar to the Complainants trademark and service mark, that the Resp ondents have no rights or legitimate interest in respect of the said domain name and that the Respondent has registered and is using said domain name in bad faith. Accordingly, this Administrative Panel decides that the said domain name un iversalpicture.com should be transferred to the Complainant.

7. Signature

At: Dublin, Ireland

Dated: December 3, 2000.

(s) James Jude Bridgeman

Presiding Panelist