Claim Number: FA0711001110740
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 <tinkerbell.com>, registered with Network Solutions, 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.
David S. Safran as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 16, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 19, 2007.
On November 19, 2007, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <tinkerbell.com> domain name is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 November 26, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 17, 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.
A timely Response was received and determined to be complete on December 17, 2007.
An Additional Submission was received December 26, 2007, and has been considered.
On December 23, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David S. Safran as Panelist.
Further information was submitted by both Complainant and Respondent in response to requests for information issued by the Panel, and have been considered.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that the Domain Name fully incorporates Complainant’s famous and distinctive trademark that has been widely registered. Respondent has no legitimate interest in the Domain Name because Respondent was not authorized by Complainant to use the Domain Name, and Respondent is not and has not been commonly known by the Domain Name. Complainant also contends that Respondent does not use the name “tinkerbell” to identify itself on its website or for any other legitimate purpose. Respondent evidences bad faith in attempting to sell the Domain Name to Complainant, because Respondent must have had the actual knowledge of the mark prior to the registration because of its fame, and because Respondent falsely represented that the registration did not infringe upon the rights of any third party thereby breaching the registration agreement with Respondent’s registrar.
Respondent contends that its domain cannot be confusingly similar to Complainant’s trademarks since Complainant’s trademark rights do not predate registration of the <tinkerbell.com> domain by Respondent, and because Respondent’s use of the domain is so dissimilar to any goods or services of Complainant that no one would assume that the website at <tinkerbell.com> domain is owned or sponsored by Complainant. Respondent also contends that it acquired legitimate rights and interests in the domain by the non-commercial use of the domain without offering of any goods and services since prior to acquisition of any trademark rights by Complainant and since no attempt has ever been made to divert consumers to the site at <tinkerbell.com> from Complainant. Furthermore, Respondent contends that the offer to sell was in response to an inquiry from Complainant and that the domain was never acquired for purposes of sale, but rather only for private non-commercial fair use in connection with Respondent’s wife for which it was acquired as a gift prior to the time in which domains were sold for value.
C. Additional Submissions
The Additional Submissions, effectively, merely repeat positions of the parties contained in their initial submissions.
PRELIMINARY ISSUE – REQUEST FOR PANEL TO RECUSE ITSELF
Respondent has sought to have the Panel recuse itself as being unqualified to decide the present case. Apart from the fact that The Forum has found the Panel to be qualified, it is noted that the Panel has three decades of trademark experience and the Panel was a representative of the Intellectual Property Constituency on the ICANN Names Counsel’s Transfer Task Force. Thus, no basis for Respondent’s request exists and the Panel has decided not to recuse itself.
The Panel finds that the domain fully incorporates Complainant’s famous and distinctive trademark that has been widely registered. Respondent has no legitimate interest in the Domain Name because Respondent was not authorized by Complainant to use the Domain Name, Respondent is not and has not been commonly known by the name “tinkerbell,” and Respondent has provided no evidence that legitimate fair use has been made of the Domain Name. The Panel also finds that Complainant has failed to meet its burden of establishing that the domain was used in bad faith.
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.
asserts rights in the TINKERBELL mark through various trademark registrations
with the United States Patent and Trademark Office (“USPTO”),
dating back to 1958 (i.e. Reg. No. 671,944 issued December 30, 1958). While Respondent
contends that Complainant did not register the TINKERBELL mark, Complainant has provided evidence that
Complainant does own the rights to the TINKERBELL mark registrations, through
an assignment of rights from the direct predecessor-in-interest of the
trademark rights. Moreover, the Panel
takes note of the fact that Complainant has released the film Peter Pan, which contains the Tinkerbell
character theatrically 6 times during the period of 1953 through 1989, and on
home video at least 4 times in the period of 1990 to 2007 while the Tinkerbell
image was/is used in association with television shows and theme parks of the
Complainant so that no question of abandonment of Complainant’s rights exists
and the Tinkerbell character is indelibly associated with Complainant in the
minds of the public. The Panel also finds that Respondent’s argument that the
TINKERBELL mark is part of the public domain due to its first use in a
children’s novel is an argument applicable in copyright law, not the trademark
law which governs the instant UDRP proceedings.
Thus, the Panel finds that Complainant’s numerous trademark
registrations and usages confer rights in the TINKERBELL mark to Complainant
under Policy ¶ 4(a)(i).
Panel finds that the <tinkerbell.com>
domain name is identical to Complainant’s TINKERBELL mark under Policy ¶
4(a)(i) as the disputed domain name contains Complainant’s mark in its
entirety, with the addition of the generic top-level domain (“gTLD”)
“.com.” Previous panels have held, and
this Panel finds, that the addition of a gTLD is irrelevant in a Policy ¶ 4(a)(i) analysis, as a top-level domain is a required element
of all domain names. Thus, the Panel
finds that Complainant has satisfied this portion of Policy ¶ 4(a)(i). See W.
Union Holdings, Inc. v. XYZ, D2005-0945 (WIPO Oct. 20, 2005)
(finding <wuib.com> identical to the complainant’s mark because the
generic top-level domain (gTLD) “.com” after the name WUIB is part of the
Internet address and does not add source-identifying significance); see also Jerry
Damson, Inc. v.
While Respondent contends that the <tinkerbell.com> domain name can be determined to be identical or confusingly similar to Complainant’s mark only by examining what the disputed domain name is used for, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. The use of the <tinkerbell.com> domain name will be examined under Policy ¶¶ 4(a)(ii) and (iii). See Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2001) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name rather than upon the likelihood of confusion test under U.S. trademark law); see also Desktop Media, Inc. v. Desktop Media, Inc., FA 96815 (Nat. Arb. Forum Apr. 12, 2001) (“[F]or the limited purposes of the domain name dispute resolution process[,] a low threshold of proof is all that is required to meet the first element ….”).
The Panel notes that once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have 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).
Complainant contends that Respondent is not authorized to use Complainant’s TINKERBELL mark in any way, and an examination of the WHOIS evidence indicates that Respondent is “Robert C. Welch.” Furthermore, having been given the opportunity to demonstrate that Respondent’s wife was known by the “tinkerbell” name and failed to do so, and the Panel finds no other evidence in the record to indicate that either Respondent or his wife was so known, the Panel finds that Respondent is not known by the <tinkerbell.com> domain name under Policy ¶ 4(c)(i). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there is no evidence in the record indicating that the respondent is commonly known by the disputed domain name).
Complainant contends that Respondent’s <tinkerbell.com> domain name is not being used in connection with 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). Respondent has acknowledged that it offers no goods or services via the website. However, Complainant has demonstrated no attempt by Respondent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit.
Complainant alleges that Respondent has attempted to sell the <tinkerbell.com> domain name to Complainant. Cases have found that this indicates a lack of rights and legitimate interests in the <tinkerbell.com> domain name under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”). However, since the evidences is unclear as to which party initiated contact and since the offer to sell was made at least 6 years after registration of the domain, the Panel is not prepared to conclude that, under such circumstances, the offer to sell evidences a lack of rights and legitimate interests.
However, even in 1997, the association of the name Tinkerbell with Complainant was so strong (see points noted by the Panel in the second paragraph of the discussion of the Identical and/or Confusingly Similar factor) that the Panel finds it unimaginable that Respondent could not have been aware of the close association of the name Tinkerbell with Complainant when it registered the domain name <tinkerbell.com> and by virtue of Complainant’s federal registration, by law, Respondent had at least constructive notice of Complainant’s rights. Furthermore, having been given the added opportunity to demonstrate that fair use was being made of the domain name and having failed to provide evidence establishing the fact that such is the case, the Panel finds that Respondent could acquire no rights or legitimate interests in a domain name consisting solely of Complainant’s famous trademark.
As found by the Panel above, at the time at which the <tinkerbell.com> domain name was registered, Respondent had to have been aware the close association of the name Tinkerbell with Complainant and had at least constructive notice of Complainant’s rights. Thus, the Panel finds that the mark was registered in bad faith. See Sun Chronicle v. Web Solutions Inc., FA 94895 (NAF July 18, 2000) (holding that registering a well-known mark or failing to check whether the registration would infringe on rights held by another constitutes bad faith registration).
However, it is insufficient to merely establish registration in bad faith. Complainant also has the burden of establishing use in bad faith. The Panel finds that this burden has not been met by Complainant. The sole basis put forth by Complainant for meeting the second prong of this factor is an offer to sell under disputed circumstances long after the registration was obtained. The Panel finds that such does not meet Complainant’s burden to establish a prima facie case of use of the domain in bad faith. See JCM Germany GmbH v. McClatchey Jr., D2004-0538 (WIPO Sept. 17, 2004) (holding that the respondent did not violate Policy ¶ 4(b)(i) by attempting to sell the disputed domain name for profit because the respondent did not register the domain name with the intent to sell it to the complainant or one of its competitors); see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) (finding that “when a Complainant indicates a willingness to engage in a market transaction for the name, it does not violate the policy for [a respondent] to offer to sell for a market price, rather than out-of-pocket expenses”); see also Coca-Cola Co. v. Svensson, FA0 103933 (Nat. Arb. Forum Feb. 27, 2002) (finding that the respondent was not acting in bad faith when it engaged in discussions to sell its domain name registration to the complainant after the complainant initiated the discussion).
Moreover, Respondent has alleged that it has owned the <tinkerbell.com> domain name since June 1997. The Panel finds that Complainant’s failure to bring this Complaint for more than ten years since the disputed domain name was registered is evidence that it did not believe its claims to be warranted under the Policy. The Panel thus considers the inaction by Complainant over such a long period of time as evidence for Respondent that the domain name <tinkerbell.com> was not being used in bad faith. See Square Peg Interactive Inc. v. Naim Interactive Inc., FA 209572 (Nat. Arb. Forum Dec. 29, 2003) (“Although laches by itself is not a defense to a complaint brought under the Policy, Complainant's delay in seeking relief is relevant to a determination of whether Respondent has been able to build up legitimate rights in the Domain Name in the interim, and whether it is using the Domain name in bad faith.”); see also Meat & Livestock Comm’n v. Pearce, D2003-0645 (WIPO Oct. 27, 2003) (“Although laches is not a defence in itself under the Policy, the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem.”).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <tinkerbell.com> domain name be retained by Respondent.
David S. Safran, Panelist
Dated: February 19, 2008
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