ТОВ “ЮНІВЕРСАЛ ПАРК ЮА” D. Pohorielko, Universal Park UA LLC

WIPO Case No. DUA2024-0006

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Universal City Studios LLC v. Погорєлко Денис Андрійович/ Д. Погорєлко,

ТОВ “ЮНІВЕРСАЛ ПАРК ЮА” D. Pohorielko, Universal Park UA LLC

Case No. DUA2024-0006

1. The Parties

The Complainant is Universal City Studios LLC, of United States of America (“United States”), represented by Baker McKenzie Ukraine B.V., Ukraine.

The Respondent is Погорєлко Денис Андрійович/ Д. Погорєлко, ТОВ “ЮНІВЕРСАЛ ПАРК ЮА” D.

Pohorielko, Universal Park UA LLC, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <universalpark.com.ua> (the “Disputed Domain Name”) is registered with

Imena.ua. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 23,

2024. On May 31, 2024, the Center transmitted by email to the Registrar a request for registrar verification

in connection with the Disputed Domain Name. On May 31, 2024, the Registrar transmitted by email to the

Center its verification response disclosing registrant and contact information for the Disputed Domain Name

which differed from the named Respondent (Internet Invest, Ltd. dba Imena.ua) and contact information in

the Complaint. On May 31, 2024, the Respondent sent a substantive email communication to the Center.

The Center sent an email communication to the Complainant on June 3, 2024, providing the registrant and

contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the

Complaint. The Complainant filed an amendment to the Complaint on June 3, 2024.

On June 3, 2024, the Center informed the Parties in English and Ukrainian, that the language of the

registration agreement for the Disputed Domain Name is Ukrainian. On June 3, 2024, the Complainant

confirmed its request that English be the language of the proceeding. The Respondent submitted its

comment on the Complainant’s submission on June 3, 2024.

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The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal

requirements of .UA Domain Name Dispute Resolution Policy (the “.UA Policy”), the Rules for .UA Domain

Name Dispute Resolution Policy (the “.UA Rules”), and the WIPO Supplemental Rules for .UA Domain Name

Dispute Resolution Policy (the “WIPO Supplemental Rules”).

In accordance with the .UA Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent in

English and Ukrainian of the Complaint, and the proceedings commenced on June 10, 2024. In accordance with the .UA Rules, paragraph 5(a), the due date for Response was June 30, 2024. On June 24, 2024, the

Respondent filed a Response in Ukrainian.

The Center appointed Mariia Koval as the sole panelist in this matter on July 26, 2024. 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 .UA Rules,

paragraph 7.

4. Further Procedural Considerations – location of the Respondent

According to the paragraph 10 of the .UA Rules, the Panel is required to ensure that the Parties are treated

with equality and that each Party is given a fair opportunity to present its case, and also that the

administrative proceeding takes place with due expedition.

Since the Respondent’s mailing address is stated to be in Ukraine, which is subject to an international

conflict at the date of this Decision that may impact case notification, it is appropriate for the Panel to

consider, in accordance with its discretion under paragraph 10 of the .UA Rules, whether the proceeding

should continue.

Having considered all the circumstances of the case, the Panel considers that there are no grounds for

suspension of the proceedings in view of the following.

Prior to the filing of the Complaint, the Disputed Domain Name was used by the Respondent for a website

with information regarding some theme and entertainment parks in Ukraine as well as offering of the services

related to the theme parks creation.

Moreover, in its email communications sent by the Respondent to the Center on May 31 and June 24, 2024,

the Respondent objected to the filed Complaint, having also attached the formal Response to the Complaint.

The Panel notes that the Respondent received the Complaint and communications from the Center at the

email address confirmed by the Registrar, and thus its email has been functioning properly throughout the

proceedings.

Thus, the Panel considers that the Respondent, having actively participated in the correspondence with the

Center and in the present proceedings, as well as receiving all necessary correspondence (at least in

electronic form) and sending his responses, has the opportunity to participate further in the proceedings.

Thus, the Respondent, in order to properly defend his rights, had the opportunity to provide all available and

relevant evidence (in addition to that already provided in the email communications) of his rights and

legitimate interests in the Disputed Domain Name, as well as of the good faith of his registration and use of

the Disputed Domain Name, if any. The Panel also notes that the manner in which the Disputed Domain

Name is being used has changed and, therefore, the Respondent appears to be in a position to control its

use.

The Panel therefore concludes that the Respondent, who is allegedly located in Ukraine, has been afforded

a fair opportunity to present its case and, in order to ensure that the administrative proceeding is conducted

with due expedition, the Panel proceeds with the case.

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5. Factual Background

The Complainant, founded in 1912, is one of the largest American film production and distribution

companies, and is owned by NBCUniversal, a division of Comcast. NBCUniversal owns and operates a

valuable portfolio of news and entertainment television networks, a premier motion picture company,

significant television production operations, a leading television stations group, world-renowned theme parks,

and a premium ad-supported streaming service. Since 1964, the Complainant has used the UNIVERSAL

trademark (the “UNIVERSAL Trademark”) specifically in connection with theme parks. Today, the

Complainant owns, operates, and licenses the UNIVERSAL Trademark for theme parks throughout the

world: four parks in the United States (Universal Studios Florida, Universal Islands of Adventure, Universal

Volcano Bay and Universal Studios Hollywood) and parks in China (Universal Beijing Resort), Singapore

(Universal Studios Singapore), and Japan (Universal Studios Japan), which have garnered worldwide

popularity as entertainment destinations and hosted a combined total of over 30 million visitors in 2022.

The Complainant owns over 600 active UNIVERSAL Trademark registrations in over 70 countries, including

Ukraine, among which are:

-	Australian Trademark Registration No. 85482, registered on December 5, 1945, in respect of goods in
class 9;
-	United Kingdom Trademark Registration No. UK00000680489, registered on June 23, 1949, in respect

of goods in class 9;

- Ukrainian Trademark Registration No. 2461, registered on November 15, 1993, in respect of goods in

classes 9 and 16.

The Complainant has built up a considerable online presence and is operating many domain names,

including <universalpictures.com> (registered on December 11, 1996), <universalstudioshollywood.com>

(registered on May 17, 2000), <universalorlando.com> (registered on September 19, 1999),

<universalstudioslot.com> (registered on September 2, 2015) and many others. The Complainant also

operates pages on various social media platforms, particularly Facebook (nearly 32 million followers),

Instagram (7 million followers), and X (5 million followers), where the UNIVERSAL Trademark is extensively

used and promoted.

The Disputed Domain Name was registered on August 11, 2021. At the date of this Decision, the Disputed

Domain Name resolves to an inactive website. However, according to the evidence presented by the

Complainant (Annex 6 to the Complaint), the Disputed Domain Name previously resolved to a website which

contained an information related to the theme and entertainment park complexes in Ukraine, as well as the

services related to the creation of the theme parks and installations, figures and decorations for them.

The Respondent is an applicant for two trademark applications in Ukraine: UNIVERSAL PARK, application

No. m202400573, filed on January 12, 2024, in respect of services in class 41; UNIVERSAL PARK in

Ukrainian Cyrillic, application No. m202400572, filed on January 12, 2024, in respect of services in class 41.

6. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer

of the Disputed Domain Name.

Notably, the Complainant contends that the Disputed Domain Name is confusingly similar to the

Complainant’s UNIVERSAL Trademark. The Disputed Domain Name incorporates the Complainant's

UNIVERSAL Trademark in its entirety and contains the dictionary word “park”. The presence of the

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additional term “park” would not prevent a finding of confusing similarity between the Disputed Domain Name

and the Complainant's UNIVERSAL Trademark. The UNIVERSAL Trademark is world-renown and, as such,

is instantly recognizable globally.

The Complainant further asserts that the Respondent has no rights or legitimate interests in respect of the

Disputed Domain Name in view of the following:

- the Respondent must be fully aware that the UNIVERSAL Trademark is well-known global brand,

owing to the global advertising, marketing of UNIVERSAL products and services all over the world by the

Complainant;

- the Respondent is not affiliated with nor authorized by the Complainant to use the UNIVERSAL Trademark, including in the Disputed Domain Name;

- the Respondent is not subsidiary of the Complainant nor is he currently the Complainant’s authorized

Independent Business Owner;
- the Respondent’s website under the Disputed Domain Name does not mention the Respondent's relationship with the Complainant. In contrast, the UNIVERSAL Trademark is prominently displayed at the

Respondent’s website where certain copyrighted movie characters of Universal's group of companies are

also displayed;

- the Respondent has not been commonly known by the Disputed Domain Name;

- the Respondent is also not making a legitimate noncommercial or fair use of the Disputed Domain

Name without intent for commercial gain. Instead, the Respondent is using the Disputed Domain Name to

confuse, defraud, and misleadingly divert consumers of the Complainant for his own benefit;

- the Respondent has taken unfair advantage of the UNIVERSAL Trademark in which the Complainant

has rights, including a substantial reputation from high profile activity, advertising and marketing of the

UNIVERSAL branded products.

The Complainant contends that the Respondent registered and is using the Disputed Domain Name in bad

faith based on the following:

- the Complainant’s UNIVERSAL Trademark is well known and famous worldwide having been in use

for over 100 years and with annual revenue in the billions of USD;

- the only purpose the Respondent could have for registering the Disputed Domain Name would be to

illegitimately profit from the association of the domain name with the Complainant;

- the Respondent is clearly portraying itself as a subsidiary or affiliate of the Complainant, when it is not;

- the Respondent intentionally registered and uses the Disputed Domain Name, without consent from

the Complainant, to confuse and mislead visitors to his website;

- the Respondent has registered the Disputed Domain Name in order to prevent the Complainant from

reflecting its UNIVERSAL Trademark in a corresponding domain name.

B. Respondent

On June 24, 2024, the Respondent submitted a formal Response to the Complainant’s contentions. The

Respondent contends that he did not receive any benefit from the use of the Disputed Domain Name

because in Ukraine the word “Universal” is not associated with Hollywood Pictures and Universal studios

Hollywood.

The Respondent further contends that he categorically disagrees with the Complainant’s statement that “the

Disputed Domain Name fully includes the Complainant’s registered UNIVERSAL Trademark” since the

Respondent has applied for word trademarks “UNIVERSAL PARK” and “UNIVERSAL PARK in the Ukrainian

Cyrillic” (applications Nos. m202400572, and m202400572) and established priority on January 12, 2024. A

distinctive feature of the trademarks - the word “park”, unlike the UNIVERSAL Trademark registered by the

Complainant, has an independent meaning: Park (from the medieval Latin parricus — “fenced place”) - a

plot of land with natural or specially planted vegetation; and the adjective “UNIVERSAL” only indicates that

the Respondent is talking about a park of universal (that is, versatile) use by consumers.

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The Respondent further asserts that in view of the Complainant has never organized theme parks for

entertainment in Ukraine, for ordinary Ukrainians, the Disputed Domain Name is not associated with the

Complainant’s UNIVERSAL Trademark.

The Respondent also sent an informal email communication in which he stated that “the Universal Park UA

company was created in 2019 for the purpose of creating various theme parks in Ukraine. The name was

chosen as “universal” since we do various projects in the field of lighting, animatronics, landscape and

flowers. Previously, photographs of characters belonging to the company that invented this product were

posted on our website. We would like to inform you that these characters were produced and exhibited by a

municipal institution from the city hall Kyiv. But after a complaint about placement was written, we

immediately deleted it so as not to spoil our reputation. We would like to reiterate that we are not and have attempted to impersonate representatives of Universal Studios. There was never a goal to mislead people

that we are representatives of an international company specializing in motion cinema. We also want to add

that we do not copy anything, since the style of our company is completely different.”

7. Discussion and Findings

Paragraph 4(a) of the .UA Policy binds the Complainant to prove each of the following three elements to

succeed:

(i)        the disputed domain name is identical or confusingly similar to a trademark or service mark in which

the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in the disputed domain name; and

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

Taking into consideration many similarities between the .UA Policy and the Uniform Domain Name Dispute

Resolution Policy (“UDRP”), the Panel has taken note of the WIPO Overview of WIPO Panel Views on

Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and, where appropriate, will decide

consistent with the consensus views captured therein.

7.1 Language of the Proceeding

In accordance with paragraph 11 of the .UA Rules, unless otherwise agreed by the Parties, or specified

otherwise in the Registration Agreement, the language of the administrative proceeding shall be the

language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having

regard to the circumstances of the administrative proceeding.

The Registrar confirmed that the language of the Registration Agreements for the Disputed Domain Name is

Ukrainian.

The Complainant filed the Complaint in English and requested English to be the language of this proceeding

in view of the following:

- the Respondent advertises and proposes services on its website in Ukrainian, English and Turkish,

that demonstrates that the Respondent is familiar with the English language;

- the words “universal” and “park” in the Disputed Domain Name and in the content of the Respondent’s

website are the words that appear only in the English language;

- the Respondent’s familiarity with the English language is evident as he has been sending some emails

in English ;

- taking into account the clearly intentional copying of the UNIVERSAL Trademark in the Disputed

Domain Name by the Respondent it would not be fair or equitable to require the Complainant to go to the
unnecessary time and expense of translating its pleadings into another language.

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The Respondent disagreed with the Complainant’s proposal that English shall be the language of

proceeding, since the Disputed Domain Name is intended primarily for Ukrainian-speaking consumers, and

the information provided on the website mainly concerns Ukraine.

Paragraph 10(c) of the .UA Rules sets out that the Panel shall ensure that the administrative proceeding

takes place with due expedition.

The Complainant is an American company and is not obviously able to understand and to communicate in

Ukrainian. Forcing the Complainant to translate the Complaint and annexes thereto, would result in unfair

additional expenses for the Complainant and would delay this proceeding.

In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to

exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all

relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the

proposed language, time and costs.

The Disputed Domain Name and country-code Top-Level domain (“ccTLD”) comprise Latin script. The

Panel has taken into account the facts that the content of the website under the Disputed Domain Name was

also available in English, the Respondent communicated with the Center and presented the reasoned

response on behalf of his attorney in the English language. This all demonstrates that the Respondent is

sufficiently proficient in the English language.

Having considered all circumstances of this case, the Panel concludes under paragraph 11(a) of the .UA

Rules that English shall be the language of the proceeding.

A. Identical or Confusingly Similar

In accordance with paragraph 4(a)(i) of the .UA Policy it should be established that the Disputed Domain

Name is identical or confusingly similar to a mark in which the Complainant has rights.

Section 1.2.1 of the WIPO Overview 3.0 makes clear that, where the complainant holds a nationally or

regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having

trademark rights for purposes of standing to file a UDRP case.

The Panel accepts that the Complainant demonstrated that it has the rights in the UNIVERSAL Trademark in

view of a large number of registrations in different jurisdictions, including Ukraine, and more than 80 years

use of its Trademark, long before the filing of trademark applications by the Respondent and his registration

of the Disputed Domain Name.

The Disputed Domain Name incorporates the UNIVERSAL Trademark in its entirety combined with the

descriptive term “park” and ccTLD “.com.ua”. In accordance with prior decisions under the .UA Policy, the

applicable ccTLD in a domain name is viewed as a standard registration requirement and as such is

generally disregarded under the first element confusing similarity test. See AB Electrolux v. Захаров

Евгений, WIPO Case No. DUA2020-0006. Therefore, the addition of the ccTLD “.com.ua” to the Disputed

Domain Name in this case does not prevent a finding of confusing similarity between the Complainant’s

UNIVERSAL Trademark and the Disputed Domain Name.

According to the section 1.8 of the WIPO Overview 3.0 where the relevant trademark is recognizable within

the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative,

meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. In this

case, the addition of the descriptive term “park” to the UNIVERSAL Trademark does not prevent a finding of

confusing similarity between the Disputed Domain Name and the Complainant’s UNIVERSAL Trademark.

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Furthermore previous .UA and UDRP panels have recognized that incorporation of a trademark in its entirety

is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered

mark; see bridport & cie S.A v. Privatewhois.net, Private Whois bridportadvisory.com, WIPO Case No.

D2011-2262.

In view of the above, the Panel concludes that the Disputed Domain Name is confusingly similar to the

Complainant’s UNIVERSAL Trademark and therefore, the Complainant has satisfied the first element of the

.UA Policy.

B. Rights or Legitimate Interests

According to paragraph 4(a)(ii) of the .UA Policy the Complainant has to establish that the Respondent has

no rights or legitimate interests in the Disputed Domain Name.

The applicable standard of proof in .UA cases is the “balance of probabilities” or “preponderance of the

evidence”; some .UA and UDRP Panels have also defined it as the “all circumstances considered” standard.

Under this standard, a party must demonstrate to the satisfaction of the Panel that the alleged fact is more

likely to be true than not.

The Complainant was founded in 1912. The Complainant is the owner of numerous registrations of the

UNIVERSAL Trademark all over the world, including Ukraine. The Complainant claims that the Respondent

is not affiliated with nor authorized by the Complainant to use previously registered UNIVERSAL Trademark,

including in the Disputed Domain Name.

The Respondent seeks to rely on the Respondent's trademark applications in Ukraine and asserts in the

Response as follows: “The trademarks “UNIVERSAL PARK” and “UNIVERSAL PARK in the Ukrainian

Cyrillic” consist of two verbal blocks, where the logical emphasis is on the word “park”. A distinctive feature

of the trademarks - the word “park”, unlike the trademark “UNIVERSAL” registered by the Complainant, has

an independent legal meaning: Park (from the medieval Latin parricus — “fenced place”) - a plot of land with

natural or specially planted vegetation. And the adjective “UNIVERSAL” only indicates that we are talking

about a park of universal (that is, versatile) use by consumers.” The Panel notes that the Respondent's

trademark applications were filed in 2024 only, that cannot, of itself, give rise to any rights or legitimate

interests on the part of the Respondent in the Disputed Domain Name. Pending trademark applications do

not, of themselves, confer any rights to the trademarks in respect of which the applications were filed. Given

the overall circumstances of this case, including that the Respondent's trademark applications are

confusingly similar to the UNIVERSAL Trademark, the Panel considers that such trademark applications

have been filed by the Respondent primarily to circumvent the application of the .UA Policy. The Panel also

notes that even existence of intellectual property rights in a certain territory does not mean an automatic

presumption of rights and legitimate interests in a domain name under the .UA Policy. When considering

whether the filing of trademark application or registration of a trademark evidences the existence of a

legitimate interest, the following circumstances should be taken into account (see Fonbet Corp. v. Gennadiy

P. Pastushenko, WIPO Case DUA2020-0020):

(i) when considering the issue of ‘rights or legitimate interests’ under paragraph 4(a)(ii) of the .UA Policy, the

panel may, where appropriate, question the legitimacy of the trademark referred to by the respondent. The

mere fact that the respondent has filed a trademark application or registered a trademark, in accordance with

the UDRP practice used in this case by analogy, is not an absolute bar to the complainant’s ability to file a

complaint. If, in the opinion of the panel, the trademark application or its registration was not made with

legitimate or good faith intentions, but only to legitimise the registration of a domain name, such trademark

may be disregarded.

(ii) the chronology of events is an important factor in determining whether a trademark registration is bona

fide or merely a way to legitimise the respondent's right to the domain name. The filing of a trademark

application after the notification of a dispute or the registration of a domain name may indicate a lack of

legitimate interest.

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(iii) the respondent's knowledge and intentions at the time of registration of the disputed domain name are

important, but knowledge of the complainant's rights does not by itself preclude the respondent from having

a right or legitimate interest in the domain name.

(iv) the connection (or lack thereof) between the respondent and the jurisdiction in which it seeks to register

the trademark may indicate whether the trademark application or registration is “legitimate”.

In the present proceedings, the Complainant’s UNIVERSAL Trademark was first registered in 1946 in

respect of services in class 41, including several Ukrainian Trademark registrations from 1993.

The Respondent’s Ukrainian trademark applications Nos. m202400572, m202400572 for word trademarks

“UNIVERSAL PARK” and “UNIVERSAL PARK in Ukrainian Cyrillic” have been filed on January 12, 2024,

also in respect of services in class 41.

The Panel takes into account the fact that the Complainant's UNIVERSAL Trademark is well-known and has

been continuously and widely used more than 80 years for, among others, the services in class 41.

As of the date of this Decision, the Disputed Domain Name resolves to an inactive website. The

Complainant has provided evidence (Annex 6 to the Complaint) that as of the date of filing the Complaint, the

Disputed Domain Name resolved to the Respondent’s website which contained an information related to the existed theme and entertainment park complexes in Ukraine, as well as the services related to the creation

of installation, figures and decorations for the theme parks. The Respondent claims that his company was

founded in 2019 for the purpose of creating various theme parks in Ukraine. At the same time according to

the Complainant the Respondent used on his website certain copyrighted movie characters belonging to the

Universal's Group of companies. The Respondent states that after the Complaint has been filed, he deleted

photographs of the characters belonging to his company from the website so as not to tarnish his reputation.

The Panel concludes that the Respondent has failed to show that it has acquired any genuine trademark

rights in respect of the Disputed Domain Name or that the Disputed Domain Name has been used in

connection with a bona fide offering of goods or services.

According to the section 2.8 of the WIPO Overview 3.0, panels have recognized that resellers, distributors, or

service providers using a domain name containing the complainant’s trademark to undertake sales or repairs

related to the complainant’s goods or services may be making a bona fide offering of goods and services and

thus have a legitimate interest in such domain name. Outlined in the “Oki Data test”, the following

cumulative requirements will be applied in the specific conditions of a UDRP case:

(i)        the respondent must actually be offering the goods or services at issue;

(ii)       the respondent must use the site to sell only the trademarked goods or services;

(iii)      the site must accurately and prominently disclose the registrant’s relationship with the trademark

holder; and

(iv)      the respondent must not try to “corner the market” in domain names that reflect the trademark.

Cases applying the Oki Data test usually involve a domain name comprising a trademark plus a descriptive

term (e.g., “parts”, “repairs”, or “location”), whether at the second-level or the top-level.

Having carefully analyzed the materials available in the proceedings, the Panel found that the Respondent's

actions did not meet, in particular, the above criterions (iii) and (iv).

Furthermore, the Panel finds that there is no evidence in the present case that the Respondent is commonly

known by the Disputed Domain Name, which could indicate his rights or legitimate interests.

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In addition, the Panel notes that the Disputed Domain Name is confusingly similar to the Complainant's

previously registered UNIVERSAL Trademark. The Panel considers that the nature of the Disputed Domain

Name carries a risk of being perceived as potentially affiliated with the Complainant that also supported by

the fact that since 1964 the Complainant has used the UNIVERSAL Trademark specifically in connection

with theme parks.

Considering the above, the Panel concludes that the Complainant meets the requirements of the second

element of the .UA Policy.

C. Registered or Used in Bad Faith

Paragraph 4(b) of the .UA Policy sets out a non-exhaustive list of circumstances that indicate bad faith

conduct on the part of the respondent, namely:

(i) circumstances indicating that the respondent has registered or has acquired the disputed domain name

primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the

complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for

valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the

disputed domain name; or

(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trademark

or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has

engaged in a pattern of such conduct; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the

business of a competitor; or

(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial

gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion

with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s

website or location or of a product or service on the respondent’s website or location.

The Panel finds that the Complainant’s first registration for the UNIVERSAL Trademark predates the

registration of the Disputed Domain Name by more than 80 years. The UNIVERSAL Trademark has been in

commercial use more than 100 years. Previous .UA panels have consistently found that the mere

registration of a domain name that is identical or confusingly similar (particularly domain names comprising

typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an

unaffiliated entity can by itself create a presumption of bad faith (see Google LLC v. Aлександр Дмитрович

Бутенко, WIPO Case DUA2020-0009). The Panel is of opinion that it is clear that the Respondent, having

registered and used the Disputed Domain Name, which is confusingly similar to the Complainant’s well-

known UNIVERSAL Trademark, primarily intended to disrupt the Complainant’s business and reputation.

In the Panel’s opinion, the fact that the Respondent was aware of the Complainant and the Complainant's

UNIVERSAL Trademark at the time of registration of the Disputed Domain Name and filing of the trademark

applications is beyond doubt, given that the trademark applications and the Disputed Domain Name are

confusingly similar to the Complainant's UNIVERSAL Trademark. Moreover, addition of the descriptive term

“park” to the Complainant’s UNIVERSAL Trademark in the Disputed Domain Name also evidences well

awareness of the Respondent about the Complainant and its business, as the Complainant has involved in

the theme park business since 1964, i.e., 60 years prior to the Disputed Domain Name was registered.

Furthermore, the Respondent’s knowledge of the Complainant’s UNIVERSAL Trademark is also supported

by the use of the Disputed Domain Name which previously resolved to the commercial website apparently

offering the services for creation of theme parks, as well as manufacture of decorations and installations for

the theme parks which are competitive with the Complainant’s services. Also, certain copyrighted images
belonging to the Complainant were posted on the Respondent’s website. At the same time the website

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under the Disputed Domain Name contained no information about the Respondent’s relation to the

Complainant (or lack thereof). As a result, the Panel finds that the Respondent had the Complainant’s

UNIVERSAL Trademark in mind and intentionally targeted the Complainant when it registered the Disputed

Domain Name. Accordingly, the Panel concludes that the Respondent registered and used the Disputed

Domain Name in bad faith to create a likelihood of confusion with the Complainant’s UNIVERSAL

Trademark. Accessing the Disputed Domain Name, the Internet users would most likely consider that it is

related to or associated with the Complainant and the Complainant’s business.

Therefore, the Panel concludes that the Respondent’s initial use of the Disputed Domain Name to offer the

competitive services indicates that at the time of registration of the Disputed Domain Name the Respondent

clearly and explicitly knew and targeted the Complainant's previously registered and well-known

UNIVERSAL Trademark, which is indicative of bad faith.

With regards to the current inactive status of the Disputed Domain Name, the change in its use further supports the Panel’s conclusion that the Respondent lacks any credible explanation for the good faith of the

registration and prior use of the Disputed Domain Name. Taking into account the totality of the

circumstances, the Panel finds that the current passive ownership of the Disputed Domain Name does not

preclude the establishment of bad faith. See section 3.3 of the WIPO Overview 3.0.

The Panel finds that, in all the circumstances, the Respondent's passive use of the Disputed Domain Name,

together with the factors outlined above, are sufficient to amount to bad faith registration and use.

For the foregoing reasons, the Panel concludes that the Disputed Domain Name has been registered in bad

faith. Accordingly, the Complainant has fulfilled the third condition of paragraph 4(a) of the .UA Policy.

8. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the .UA Policy and 15 of the .UA Rules, the

Panel orders that the Disputed Domain Name <universalpark.com.ua> be transferred to the Complainant.

/Mariya Koval/ Mariia Koval Sole Panelist Date: August 9, 2024