Disney Enterprises, Inc. v. Internet Marketing Pty Ltd.
Claim Number: FA0707001039783
Complainant is Disney Enterprises, Inc. (“Complainant”), represented by J.
Andrew Coombs, of J. Andrew Coombs, A Professional
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <disneyshow.com>, registered with Wild West Domains, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
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.
Complainant holds hundreds of DISNEY trademarks, as well as
trademarks incorporating the DISNEY mark, in the
Respondent registered the <disneyshow.com>
domain name on
When contacted regarding the disputed domain name, Respondent offered to sell the domain name to Complainant.
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.
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
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….").
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
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).
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
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.
The Panel concludes that Complainant has satisfied Policy ¶ 4 (a)(ii).
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
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
The Panel concludes that Complainant has satisfied Policy ¶ 4 (a)(iii).
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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