national arbitration forum

 

DECISION

 

Disney Enterprises, Inc. v. Internet Marketing Pty Ltd.

Claim Number: FA0707001039783

 

PARTIES

Complainant is Disney Enterprises, Inc. (“Complainant”), represented by J. Andrew Coombs, of J. Andrew Coombs, A Professional Corporation, 450 North Brand Boulevard, Suite 600, Glendale, CA 91203-2349.  Respondent is Internet Marketing Pty Ltd. (“Respondent”), P.O. Box 3210, Newmarket, Queensland, II 4051, Australia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <disneyshow.com>, registered with Wild West Domains, Inc.

 

PANEL

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.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 17, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 18, 2007.

 

On July 18, 2007, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <disneyshow.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name.  Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. registration agreement 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, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 13, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@disneyshow.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On August 20, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <disneyshow.com> domain name is confusingly similar to Complainant’s DISNEY mark.

 

2.      Respondent does not have any rights or legitimate interests in the <disneyshow.com> domain name.

 

3.      Respondent registered and used the <disneyshow.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds hundreds of DISNEY trademarks, as well as trademarks incorporating the DISNEY mark, in the United States and around the world, including with the United States Patent and Trademark Office (“USPTO”)(Reg. No. 1,162,727 issued on July 28, 1981).

 

Respondent registered the <disneyshow.com> domain name on November 19, 2004.  The disputed domain name currently resolves to a website featuring shows, games, and products associated with Complainant without its authorization as well as various hyperlinks to third-party websites.

 

When contacted regarding the disputed domain name, Respondent offered to sell the domain name to Complainant.

 

DISCUSSION

Paragraph 15(a) of 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."

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)   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.

 

Identical and/or Confusingly Similar

 

By registering the DISNEY mark with the USPTO, Complainant has met its burden under Policy ¶ 4(a)(i) establishing rights in the mark.  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”). 

 

Respondent’s <disneyshow.com> domain name is confusingly similar to Complainant’s mark, as it incorporates Complainant’s entire DISNEY mark along with a descriptive term and adds the generic top level domain (“gLTD”) “.com” to the end.  Respondent has failed to create a sufficiently distinct mark under Policy ¶ 4(a)(i).  See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is…without legal significance since use of a gTLD is required of domain name registrants….").

 

The Panel concludes that Complainant has satisfied Policy ¶ 4 (a)(i).

 

Rights or Legitimate Interests

 

Pursuant to Policy ¶ 4(a)(ii), Complainant’s allegation makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name thus shifting the burden to Respondent to show that any rights or legitimate interests exist.  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also 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”).

 

Respondent did not submit a Response to the Complaint, which leads to the presumption that Respondent lacks rights and legitimate interests in the <disneyshow.com> domain name.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint).  However, the Panel will now examine the evidence to determine if there is anything further in the record that would lead to the conclusion that Respondent has rights or legitimate interests under any of the factors listed in Policy ¶ 4(c).

 

As nothing in the record, including the WHOIS information, would lead to the conclusion that Respondent, Internet Marketing Pty Ltd., is commonly known by the disputed domain name, Respondent has failed to establish rights under Policy ¶ 4(c)(ii).  See Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).

 

Respondent’s use of the domain to divert Internet users to third-party websites and Complainant’s associated material is not representative of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  Therefore, Respondent has failed to establish rights or legitimate interests in the disputed domain name.  See Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user); see also Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (holding that the respondent’s use of infringing domain names to direct Internet traffic to a search engine website that hosted pop-up advertisements was evidence that it lacked rights or legitimate interests in the domain names).

 

The Panel concludes that Complainant has satisfied Policy ¶ 4 (a)(ii).

 

Registration and Use in Bad Faith

 

Under Policy ¶ 4(b)(iv), Respondent’s registration and use of the disputed domain name to attract Internet users seeking Complainant’s products and services to its own website for commercial gain is evidence of bad faith.  Further, the disputed domain name is capable of creating confusion as to Complainant’s affiliation with the disputed domain name.  See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the respondent registered the domain name <statefarmnews.com> in bad faith because the respondent intended to use the complainant’s marks to attract the public to the web site without permission from the complainant); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”).

 

In addition, Respondent’s attempt to sell the disputed domain name to Complainant is further evidence of bad faith registration and use.  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).

 

The Panel concludes that Complainant has satisfied Policy ¶ 4 (a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <disneyshow.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated:  September 1, 2007

 

 

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