Disney Enterprises, Inc. v. Mark Trepanier and DisneyThemes.com
Claim Number: FA0707001030838
Complainant is Disney Enterprises, Inc. (“Complainant”), represented by Annie
Wang, of J. Andrew Coombs, A Professional
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <disneyartposters.com>, registered with Onlinenic, Inc., <disneythemes.com>, and <disney-watches.com>, registered with In2Net Network, Inc., and <disneythemes.net>, registered with Register.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Calvin A. Hamilton as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 10, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 11, 2007.
On July 11, 2007, Onlinenic, Inc., confirmed by e-mail to the National Arbitration Forum that the <disneyartposters.com> domain name is registered with Onlinenic, Inc and that the Respondent is the current registrant of the name. On July 11, 2007, In2Net Network, Inc. confirmed by e-mail to the National Arbitration Forum that the <disneythemes.com> and <disney-watches.com> domain names are registered with In2Net Network, Inc. and that the Respondent is the current registrant of the name. On July 11, 2007, Register.com, Inc confirmed by e-mail to the National Arbitration Forum that the <disneythemes.net> domain name is registered with Register.com, Inc. and that the Respondent is the current registrant of the name. Onlinenic, Inc., In2Net Network, Inc. and Register.com, Inc have verified that Respondent is bound by the Onlinenic, Inc., In2Net Network, Inc., Register.com, Inc registration agreements and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 23,
A timely Response was received and determined to be complete on August 13, 2007.
On August 20, 2007, Complainant filed an Additional Submission, which does not comply with Supplemental Rule 7 as it was not received by the Forum within five (5) Calendar Days after the date the Response.
On August 24, an Additional Submission was filed by Respondent.
On August 22, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Calvin A. Hamilton as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
1. The domain names <disneyartposters.com>, <disneythemes.com>, <disneythemes.net> and <disney-watches.com> are identical and/or confusingly similar to a trademark or service mark in which the Complainant has rights;
2. Respondent has no rights or legitimate interests in respect of the domain names that are subject to the complaint;
3. Respondent registered and used the domain names in bad faith.
1. The domain name <disney-watches.com> was registered as a complete phrase, chosen to let an Internet user know exactly what will be found within the Respondent’s website.
is an authorized Seiko watch retailer, purchasing licensed Disney watches
through Odyssey Time Inc., which is the sole authorized Disney watch
3. Respondent has an ongoing agreement with ScreenPlay, Inc., the Buena Vista Home Entertainment (“BVHE”) streaming agent, and with Linkshare Corporation, concerning Respondent’s website <disneythemes.com>.
4. The Complainant’s company BVHE sought the help and approved the website <disneythemes.com>.
5. <disneythemes.net> is used as an ftp server for the files available on the pages within <disneythemes.com>.
6. Respondent has spent hundreds of hours into building and maintaining <disneythemes.com>, <disney-watches.com> and <disneyartposters.com>.
7. The disputed domain names were not registered in bad faith.
C. Additional Submissions
Although Complainant filed a non timely Additional Submission, the Panel has the discretion to draw such inferences therefrom as it considers appropriate (ICANN Rule 14). Therefore, the Panel will consider the Additional Submissions to see whether relevant inferences can be drawn.
Complainant Additional Submission:
1. The disputed domain names were registered and used for purposes of directing Internet traffic to the websites found at the infringing domain names.
2. The linking agreements referred to by Respondent do not evidence legitimate use if the <disneythemes.com> domain name. They were Respondent’s engagements with third parties.
3. Notwithstanding the above, the use contemplated in those agreements between those parties was not considered a license for unrestricted use of Disney’s intellectual properties or authorization of links to websites which also infringe Complainant’s intellectual properties.
4. In any event, <disneythemes.net> and <disneyartposters.com> domain names were not subject to the agreements referred to by Respondent.
6. Respondent’s unauthorized, commercial use of complainant’s trademark is extensive.
7. Respondent does not dispute the pattern of registering infringing domain names.
8. Respondent mischaracterizes the nature of <disneythemes.com> as a Disney fan site, suggesting that it is noncommercial in nature.
Respondent Additional Submission:
1. <disneythemes.net> is covered under the ScreenPlay agreement that was approved by BVHE.
2. <disneyartposters.com> was registered to make use of Respondent’s affiliation with <art.com>, which promotes Disney licensed art and posters.
3. The linking agreements were not Respondent’s engagement with third parties. These were agreements that were initiated, overseen and ultimately approved by Complainant’s own company.
4. The <disney-watches.com> webpage has been always at least 90% Disney watch styles and 10% non Disney watches; now it is 100% Disney watch styles. Respondent has removed the non-Disney character watches from <disney-watches.com> on June 30, 2007.
5. Respondent states, on every page of the site <disney-watches.com>, that <disney-watches.com> is in no way associated with the Disney companies.
6. There is no suggestion that Respondent’s affiliate program is endorsed by Complainant.
7. Respondent’s registration of the disputed domain names over the period of almost 4 years does not imply the pattern of registering infringing domain names.
owns hundreds of registrations for the DISNEY trademark in the
2) Respondent registered the disputed domain name <disney-watches.com> on May 13, 2004, <disneythemes.com> on August 25, 2000, <disneythemes.net> on April 19, 2002 and <disneyartposters.com> on February 17, 2005.
3) The domain names are confusingly similar to the trademark, as they incorporate the trademark in its entirety with only the addition of generic words “Themes,” “Art Posters” and “Watches.”
4) Respondent has no legitimate interest in the domain names, as Respondent was in no way authorized by Complainant to use said domain names. Therefore, no bona fide offering of goods and services or legitimate use of the domain names could be claimed by Respondent.
5) Respondent is not commonly known by the domain names.
6) Respondent is not making a legitimate noncommercial or fair use of the domain names.
7) Respondent registered and used the domain names in bad faith, evidenced by the fact that, by using the domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s websites and/or of a product on Respondent’s website.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted 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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Preliminary Issue: Dispute Outside Scope of UDRP
Before turning to the specific grounds, a preliminary matter must be addressed.
It is clear that there is a dispute between the parties as to whether Respondent was given permission by Complainant to register the domain names. Respondent asserts that it entered into a contractual agreement with one of Complainant’s subsidiaries to promote Complainant’s products on its <disneythemes.com> website. Respondent further claims that Complainant did not expressly object to either the advertising on the website or the domain name itself. Further, Respondent claims it is an authorized distributor of Complainant’s line of Seiko-brand watches, which are the only products being sold exclusively on the <disney-watches.com> website. Based on the above, Respondent claims that the domain names were used with permission to register the same.
In light of this
information, the Panel may find that adjudication of such disputes is for the
courts of the various State and/or Federal Courts of the United States and that
the contractual dispute regarding the <disneythemes.com> and <disney-watches.com>
websites is outside the scope of the UDRP.
Notwithstanding the above, this Panel is only charged with determining (1) whether Complainant has a mark; (2) whether Respondent has or had at registration any rights in the name; and, (3) whether Respondent acted in bad faith. In the present case there is sufficient evidence to determine these issues. These elements suggest that this is a proper dispute for resolution through the UDRP. See Am. Express Co. v. Pierce, FA 166008 (Nat. Arb. Forum Aug. 14, 2003).
Further, Complainant has provided supporting information and has contended that even if Respondent was engaged in limited dealings with third party entities as Screenplay, Inc., Linkshare Corporation and/or it has been an authorized Seiko watch retailer, Complainant would not have permitted registration of domain names by a third party that contain the Complainant’s trademark, trade name and company name. This militates against Respondent’s argument. The Panel considers that adjudication of these contractual disputes are for the Courts and they cannot be resolved by this Panel. The Panel now turns to the resolution of the issues foreseen in Policy ¶ 4(a)(i), ¶ 4(a)(ii) and ¶ 4(a)(iii).
Complainant attempts to establish rights in the DISNEY mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,162,727 issued July 28, 1981). The Panel considers that Complainant’s timely registration of the DISNEY mark with the USPTO sufficiently establishes rights in the mark pursuant to Policy ¶ 4(a)(i). See Ameridream, Inc. v. Russell, FA 677782 (Nat. Arb. Forum May 24, 2006) (holding that the complainant’s registration of the AMERIDREAM mark with the USPTO established its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).”).
The disputed domain names all contain Complainant’s protected DISNEY mark in its entirety and add the generic terms “artposters,” “themes” and “watches.” Respondent’s <disney-watches.com> adds a hyphen. All of the disputed domain names also contain the generic top-level domains (“gTLD”) “.com” or “.net.” The Panel may find that the addition of generic terms, a hyphen and a gTLD to an otherwise identical mark fails to sufficiently distinguish the domain name from the mark pursuant to Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also InfoSpace.com, Inc. v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”); see also Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity).
According to the abovementioned reasoning, the Panel finds that the disputed domain names <disneyartposters.com>, <disneythemes.com>, <disney-watches.com> and <disneythemes.net> are identical, and confusingly similar, to Complainants' mark under Policy ¶ 4(a)(i).
The Panel concludes that, once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does possess rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s disputed domain names resolve to websites offering Complainant’s products and products of Complainant’s competitors, as well as links to commercial websites. The Panel believes that such use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate fair or noncommercial use pursuant to Policy ¶ 4(c)(iii). See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant avouches that Respondent is not commonly known by the disputed domain names. Respondent’s WHOIS registration information reveals that the registrant of the disputed domain names is some variation of “Mark Trepanier and DisneyThemes.com.” Despite the WHOIS information, the Panel establishes that Respondent has not presented sufficient evidence that it was commonly known by the disputed domain names prior to their registration pursuant to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”).
The Panel concludes, in view of the documentation introduced by the parties, that Respondent has not carried the burden of proof to demonstrate that a right or legitimate interest exists. Therefore, Respondent holds no legitimate interest to use the disputed domain names.
Based on the above, the Panel finds that Claimant has satisfied the burden of proof under Policy ¶ 4(a)(ii).
Respondent’s disputed domain names resolve to websites featuring, inter alia, products of Complainant’s competitors. The Panel decides that Respondent’s use constitutes a disruption of Complainant’s business pursuant to Policy ¶ 4(b)(iii). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Services, FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a website containing commercial links to the websites of the complainant’s competitors represented bad faith registration and use under Policy ¶ 4(b)(iii)).
As indicated above, Respondent’s disputed domain names resolve to websites featuring links to commercial websites. Presumably, Respondent enjoys financial remuneration from its diversionary use. Additionally, Complainant alleges that Respondent’s use of confusingly similar domain names will result in a likelihood of confusion regarding the source and affiliation of the resulting material among unsuspecting Internet users. As a result, the Panel finds Respondent’s use evinces registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting from click-through fees); see also BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”).
The Tribunal considers that Policy 4(a)(iii) has been satisfied in order to establish that Respondent registered and used the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <disneyartposters.com>, <disneythemes.com>, <disneythemes.net> and <disney-watches.com> domain names be TRANSFERRED from Respondent to Complainant.
Calvin A. Hamilton, Panelist
Dated: September 5, 2007
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