Disney Enterprises, Inc. v. Greg Kiesinger
Claim Number: FA0709001080245
Complainant is Disney Enterprises, Inc. (“Complainant”), represented by J.
Andrew Coombs, of J. Andrew Coombs, A Professional Corporation,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <disneyworldshopping.com>, registered with Register.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 18, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 19, 2007.
On September 19, 2007, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <disneyworldshopping.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, 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 September 21, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 11, 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.
On October 18, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <disneyworldshopping.com> domain name is confusingly similar to Complainant’s WALT DISNEY WORLD mark.
2. Respondent does not have any rights or legitimate interests in the <disneyworldshopping.com> domain name.
3. Respondent registered and used the <disneyworldshopping.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Disney Enterprises, Inc., is a worldwide producer of children’s entertainment goods and services. Complainant markets its various goods and services under the famous DISNEY mark, for which it holds numerous trademark registrations in multiple jurisdictions, including with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 1,162,727 issued May 5, 1981). Complainant also holds a trademark registration for the WALT DISNEY WORLD mark with the USPTO (Reg. No. 1,189,727 issued February 16, 1982). Additionally, Complainant operates websites at the <disney.com>, <disneyworld.com> and <disneyland.com> domain names, among others.
Respondent registered the <disneyworldshopping.com> domain name on August 17, 2006. Respondent’s disputed domain name resolves to a website that displays various goods that are for sale, including Complainant’s own goods and the goods of Complainant’s competitors, as well as hyperlinks to third-party websites.
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.
The Panel finds that Complainant’s registration of the WALT DISNEY WORLD mark with the USPTO sufficiently establishes Complainant’s rights in the mark for the purposes of 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”).”).
Additionally, the <disneyworldshopping.com> domain name is confusingly similar to Complainant’s WALT DISNEY WORLD mark under Policy ¶ 4(a)(i) as the disputed domain name omits the first term from the mark and adds the generic term “shopping” to the end of the mark, as well as a generic top-level domain. None of these modifications render the disputed domain name sufficiently distinct from Complainant’s mark. See Down E. Enter. Inc. v. Countywide Commc’ns, FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the domain name <downeastmagazine.com> confusingly similar to the complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE); see also 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 Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
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). Here, the Panel finds that Complainant’s allegations in its Complaint have sufficiently met this burden. 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 name resolves to a website offering Complainant’s products and products of Complainant’s competitors, as well as links to commercial websites. The Panel finds 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)).
Moreover, there is no evidence in the record, including Respondent’s WHOIS information, to indicate that Respondent is or has ever been known by the <disneyworldshopping.com> domain name. As Complainant has also stated that Respondent is not authorized to use its WALT DISNEY WORLD mark, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain name resolves to a website that features products of Complainant’s competitors. The Panel holds that Respondent’s use constitutes a disruption of Complainant’s business, and is thus evidence of bad faith registration and use 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)).
Respondent’s disputed domain name resolves to a website featuring links to commercial websites, as well as offering various products for sale. Such use of the <disneyworldshopping.com> domain name is presumably for Respondent’s own commercial benefit. Additionally, Complainant alleges that Respondent’s use of the confusingly similar domain name will result in a likelihood of confusion regarding the source and affiliation of the resulting material among unsuspecting Internet users. The Panel therefore finds 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 Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain); 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 Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <disneyworldshopping.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 31, 2007
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum