DECISION
Disney
Enterprises Inc. v. PushTravel.com
Claim
Number: FA0206000114626
PARTIES
Complainant is Disney
Enterprises Inc., Burbank, CA (“Complainant”) represented by David M.
Kelly, of Finnegan Henderson Farabow Garrett & Dunner L.L.P. Respondent is PushTravel.com, Reno,
NV (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at
issue is <pushnevada.com>, registered with Register.com.
PANEL
A 3-member panel was
selected for this proceeding including, Honorable Richard B. Wickersham
(Ret.), Honorable John J. Upchurch (Ret.), and Ms. Anne M. Wallace, Q.C.,
as Panelists.
PROCEDURAL HISTORY
Complainant submitted
a Complaint to the National Arbitration Forum (the “Forum”) electronically on
June 19, 2002; the Forum received a hard copy of the Complaint on June 20,
2002.
On June 20, 2002,
Register.com confirmed by e-mail to the Forum that the domain name <pushnevada.com>
is registered with Register.com and that the Respondent is the current
registrant of the name. Register.com
has verified that Respondent is bound by the Register.com 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 (UDRP) (the “Policy”).
On June 20, 2002, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of July 10, 2002 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@<pushnevada.com>
by e-mail.
Respondent requested
and was granted a twenty-day extension to file the Response.
A Response was
received and determined to be complete on July 30, 2002.
A timely Additional
Submission was received by Complainant and determined to be complete on August
5, 2002.
A timely Additional
Response was filed by Respondent and received August 12, 2002.
On August 16, 2002, a
3-member panel was appointed including Honorable Richard B. Wickersham (Ret.),
Honorable John J. Upchurch (Ret.), and Ms. Anne M. Wallace, Q.C., as Panelists.
RELIEF SOUGHT
Complainant requests
that the domain name <pushnevada.com> be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1.
Disney Enterprises, Inc. (“DISNEY”) is a
Delaware Corporation with its principal place of business in Burbank,
California and is an entertainment company and owner of a vast array of
intellectual properties, including many trademarks and copyrighted works
associated with live-action and animated movies and television shows.
2.
The registrant, PushTravel.com, is a sole
proprietorship owned by an individual named Wesley Gregg, who registered the
Domain Name on September 24, 2002 (about 3-months after the initial promotional
campaign for Disney’s TV series “pushnevada” began).
3.
This dispute is subject to a mandatory
administrative proceeding as provided for in Section 4(a) of the UDRP because:
a.
Complainant
owns the trademark PUSH, NEVADA, which mark the Domain Name at issue, <pushnevada.com>,
fully incorporates.
b.
Respondent
has no cognizable right or legitimate interest in the Domain Name, and
Respondent’s use of Complainant’s PUSH, NEVADA trademark is unauthorized.
c.
Respondent’s
registration and use of the Domain Name meet the bad faith requirement
described in Paragraph 4(a) of the UDRP.
4.
Complainant’s “PUSH, NEVADA” television series
can be described as a new type of “integrated media” entertainment that
incorporates traditional media, new media and physical world activities. Co-produced with the production company of
actors Ben Affleck and Matt Damon, and scheduled to air on the ABC Television
Network beginning Fall 2002.
5.
The Series has received substantial press
attention since June 2001 and has reached many millions of people across the
country before Respondent registered the Domain Name <pushnevada.com>.
6.
The first thing Respondent posted at its <pushnevada.com>
website after registering the Domain Name using Disney’s mark PUSH, NEVADA, was
a page devoted entirely to Disney’s “PUSH, NEVADA” series.
7.
Having usurped the Domain Name and used it to
post pirated material about Complainant’s Series, Respondent also included an
offer to sell the Domain Name in “WELCOME TO PUSH, NEVADA. This domain is for sale!”
8.
Because the Domain Name is identical to and
confusingly similar to Complainants PUSH, NEVADA mark, and because Internet
users typically associate a Domain Name comprised of a trademark with the
trademark owner, Internet users searching for Complainant’s website dedicated
to its “PUSH, NEVADA” series and who instead arrive at Respondent’s website are
likely to be misled into believing that Complainant sponsors or endorses Respondent’s
website.
9.
Respondent’s registration and use of the Domain
Name deprives Complainant of the Internet traffic rightly intended for
Complainant, thereby disrupting Complainant’s business.
10.
Respondent is not making legitimate,
non-commercial or fair use of the Domain Name <pushnevada.com>;
but rather is intending to mislead and divert consumers or to tarnish
Complainant’s PUSH, NEVADA mark for commercial gain. Respondent’s <pushnevada.com> website does not and
cannot constitute a bona fide offering of goods or services pursuant to
§4(c)(i) of the UDRP.
11.
Respondent’s registration and use of the Domain
Name meet the bad faith element set forth in §4(b)(i) of the UDRP because
Respondent registered the Domain Name primarily to sell, rent, or otherwise
transfer it for valuable consideration in excess of Respondent’s out-of-pocket
expenses.
B. Respondent
1.Wesley
E. Greg of Reno, Nevada defines himself as the only person authorized to
represent pushtravel.com. He states
that he registered the Domain Name, <pushnevada.com> in September
2001 in good faith and has been using the Domain Name to operate a legitimate
and viable business, a travel and tourism business.
2.Respondent
asserts that the Complainant launched the official website for the proposed TV
show at <pushtimes.com>.
3.
Respondent contends that Complainant has failed
to prove that the Domain Name is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights and he argues
that the Complainant has not established that they have any rights in a
trademark or service mark in the name Push, Nevada.
4.
Respondent points out that barely anyone has
heard of their proposed TV show as of this date, let alone last summer. He asserts that he had not.
5.
Respondent points out that prior to purchasing
the Domain Name, he conducted a search of the world wide web for the words
“push+nevada” and found nothing related to the TV show or any other business
name. He also did a search for a registered
trademark and found nothing. He says he
did everything reasonable to ensure that the name he had chosen for his
business did not belong to someone else.
6.
Respondent further asserts that the Complainant
has failed to prove that the Respondent (Domain Name holder) should be
considered as having no rights or legitimate interests in respect of the Domain
Name that is the subject of the Complaint.
He argues that <pushnevada.com> is a travel and tourism
business that provides a valuable service to the residents of and visitors to
Nevada.
7.
Also Respondent points out that he acted in good
faith at all times, both at the time of the registration and ever since in the
utilization of the Domain Name. He
argues that there was no bad faith because he came up with his idea for a
business name which made sense, searched to make sure it wasn’t being used,
registered the Domain Name, and developed a travel and tourism website. All of this was done, he claims, before he
ever heard of a proposed TV show entitled “Push, Nevada.” He contends that it was not his primary
purpose to sell, rent or otherwise transfer the Domain Name but rather his
primary purpose was the travel and tourism website which promotes his state,
Nevada.
8.
Respondent concludes by arguing that the Complainant
owns several Domain Names under which it can operate the official site for the
proposed TV show and has, in fact, launched an official site at
<pushtimes.com>. He argues that
we are not competitors and web users will not be confused.
C. Complainant’s Additional Response
Complainant’s
Additional Response was received on August 5, 2002 and was timely. Complainant urges that Respondent’s Response
fails to refute any of Disney’s showings established in its Complaint that (1)
it has prior, protectable rights in its PUSH, NEVADA trademark, (2) the Domain
Name <pushnevada.com> is identical and confusingly similar to
Disney’s mark, (3) Respondent does not have a legitimate interest in the Domain
Name and, (4) Respondent registered and used the Domain Name in bad faith. Complainant further urges that it had gained
trademark protection for its television series title, “PUSH, NEVADA” by July
2001 and that Respondent registered the Domain Name at issue, <pushnevada.com>
after that, on September 24, 2001.
Complainant
argues further that its trademark PUSH, NEVADA is inherently distinctive and,
thus, immediately protectable and enforceable against confusingly similar
marks.
Complainant
points out that Respondent’s searches for the identical Domain Name <pushnevada.com>
are irrelevant as those searches would not have revealed that Complainant had
already established rights in its mark PUSH, NEVADA because search engines do
not search for variations of character strings or omit non-distinguishing
elements of a mark.
Complainant
in its Reply reviews its positions asserted in its Complaint that Complainant
has established prior rights in its trademark, PUSH, NEVADA; that Respondent
has no legitimate interest in the Domain Name; that Respondent registered the Domain
Name in bad faith.
D. Respondent’s Additional Response
Respondent
filed an Additional Response that was received August 12, 2002 and was
timely. The contention is made that a
case cited by Complainant and relied on in its Complaint and in its Reply
reaches the opposite conclusion for which it was cited. T.A.B. Systems v. PacTel Teletrac, 77
F.3d 1372, 37 U.S.P.Q.2d 1879 (Fed.Cir. 1995).
Respondent argues that the case supports the proposition that public
recognition is a prerequisite of establishing a common law trademark.
Respondent
contends that the evidence of publicity offered by the Complainant has not met
the burden of being sufficiently clear, widespread and repetitive.
Respondent’s
Reply concludes with the assertion that the Complainant has failed to prove any
one of the three points that they are required to prove and nothing in their
Reply changes this. Further, the
Complainant has no rights in a trademark or service mark to which our Domain
Name is identical or confusingly similar.
He asserts that he has a legitimate interest in <pushnevada.com>
and he did not register or use the Domain Name in bad faith.
FINDINGS AND
DISCUSSION
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.
Identical or Confusingly
Similar Policy ¶ 4(a)(i).
Complainant
claims to have a trademark in PUSH, NEVADA.
Complainant has produced and exposed to the public a new television
series titled “Push, Nevada,” which is due to be aired this fall. Complainant argues, and we concur, that the
new series is a unique blend of “integrated media” because the show is
interactive with the television viewers, as they have an opportunity to win
cash prizes. Complainant asserts that
the show has received a substantial amount of press and has been heavily
promoted by Complainant and its affiliates, most notably ABC television network
(the shows network).
Complainant
asserts that television titles, such as “Push, Nevada,” are protectable as
trademarks. Complainant argues that the
PUSH, NEVADA mark is distinct and fanciful as it represents a fictional town
for the television series. Complainant
notes that the promotional efforts for “Push, Nevada” series started at least
as early as June 2001, before Respondent registered the Domain Name on
September 24, 2001. Therefore,
Complainant maintains its common law rights in PUSH, NEVADA flourished before
Respondent registered the subject Domain Name.
We so find. See McCarthy
on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000) (the ICANN
dispute resolution policy is “broad in scope” in that “the reference to a
trademark or service mark ‘in which the complainant has rights’ means that
ownership of a registered mark is not required- unregistered or common law
trademark or service mark rights will suffice” to support a Domain Name
Complaint under the policy); see also British Broad. Corp. v.
Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not
distinguish between registered and unregistered trademarks and service marks in
the context of abusive registration of domain names” and applying the Policy to
“unregistered trademarks and service marks”).
The
Panel finds that Respondent’s <pushnevada.com> Domain Name is
identical to Complainant’s common law PUSH, NEVADA mark because punctuation
marks, such as commas, are not allowed in second level domains. See Little Six, Inc. v. Domain For
Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that
<mysticlake.net> is plainly identical to Complainant’s MYSTIC LAKE
trademark and service mark); see also Victoria’s Secret v.
Hardin, FA 96694 (Nat. Arb. Forum Mar. 31, 2001) (finding that the
<bodybyvictoria.com> Domain Name is identical to Complainant’s BODY BY
VICTORIA mark); see also Chi-Chi’s Inc. v. Rest. Commentary,
D2000-0321 (WIPO June 29, 2000) (finding the Domain Name <chichis.com> to
be identical to Complainant’s CHI-CHI’s mark, despite the omission of the
apostrophe and hyphen from the mark).
Rights and Legitimate
Interests Policy ¶ 4(a)(ii).
Complainant
maintains that Respondent originally posted a website at <pushnevada.com>
that notified Internet users the domain name was for sale. Also, at this website, Respondent had a
short two paragraph synopsis of the “Push, Nevada” television series, which
Complainant asserts came from official promotional material. Complainant argues that Respondent
registered the <pushnevada.com> Domain Name with the original
intent to trade off of the goodwill associated with the PUSH, NEVADA mark, and
Respondent’s intent does not constitute a connection with a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i). We so find. See Hewlett-Packard
Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31,
2000) (finding no rights or legitimate interests where the Respondent
registered the Domain Name with the intention of selling it); see also
Kinko’s Inc. v. eToll, Inc., FA 94447 (Nat. Arb. Forum May 27, 2000)
(finding that the Respondent has no rights or legitimate interests in the Domain
Name where it appeared that the Domain Name was registered for ultimate use by
the Complainant); see also Cruzeiro Licenciamentos Ltda v.
Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate
interests do not exist when one holds a Domain Name primarily for the purpose
of marketing it to the owner of a corresponding trademark).
The
Panel also finds that Respondent’s original use of the <pushnevada.com>
Domain Name as a website offering to sell the rights in the Domain Name, while
at the same time implicitly describing the connection of the Domain Name with
Complainant’s “Push, Nevada” television series, is not a fair use under Policy
¶ 4(c)(iii). See J. Paul
Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7,
2000) (finding rights or legitimate interests do not exist when one has made no
use of the websites that are located at the domain names at issue, other than
to sell the domain names for profit).
Complainant
asserts that Respondent is not and has not been commonly known by the <pushnevada.com>
Domain Name. The Panel finds that
Respondent is only known as PushTravel.com and that Complainant created the
fictional town name “Push, Nevada” for its television series. Furthermore, Complainant had launched its
promotional campaign for “Push, Nevada” prior to Respondent registering the
domain name, as is evidenced by Respondent’s use of Complainant’s promotional
language. Since the town is fictional
and Respondent is not known by the Domain Name, Respondent has no rights and
legitimate interests in the Domain Name pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone
Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or
legitimate interests because Respondent is not commonly known by the disputed
Domain Name or using the Domain Name in connection with a legitimate or fair
use); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior
rights in the Domain Name precede Respondent’s registration; (3) Respondent is
not commonly known by the Domain Name in question); see also Gallup
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding
that Respondent does not have rights in a Domain Name when Respondent is not
known by the mark).
Registration and Use in Bad
Faith Policy ¶ 4(a)(iii).
Complainant
asserts that Respondent’s registration and use of the <pushnevada.com>
Domain Name amounts to bad faith registration and use under Policy ¶ 4(b)(i),
and we agree. Respondent’s use of the
Domain Name offering it for sale at a connected website evidences Respondent’s
primary intent to sell the Domain Name Registration to Complainant, since the
only party interested in the fictional name is Complainant. See Pocatello Idaho Auditorium
Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002)
(“[w]hat makes an offer to sell a domain [name] bad faith is some accompanying
evidence that the domain name was registered because of its value that is in
some way dependent on the trademark of another, and then an offer to sell it to
the trademark owner or a competitor of the trademark owner.”) See also
Cree, Inc. v. The Domain Name You Have Entered is For Sale, FA 94790 (Nat.
Arb. Forum May 25, 2000) (finding bad faith where the Respondent purchased the
domain names on the date of the Complainant’s press release regarding a merger
and business expansion); see also Am. Online, Inc. v. Avrasya
Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000)
(finding bad faith where Respondent offered domain names for sale).
Complainant
notes that the use of the <pushnevada.com> Domain Name was changed
between March 7, 2002 and May 20, 2002 to a website that purports to promote
Reno, Nevada. Complainant argues that
this is a commercial website that infringes on its PUSH, NEVADA mark because
consumers will be confused as to Complainant’s affiliation. The Panel finds that Respondent’s altered
use of the Domain Name constitutes bad faith use under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent
Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith
where Respondent registered and used an infringing Domain Name to attract users
to a website sponsored by Respondent); 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).
Complainant
argues that Respondent is in the entertainment industry, attempting to develop
a television series, and that it is apparent that Respondent knew of
Complainant’s developmental efforts for the “Push, Nevada” television series. We agree!
Respondent as a competitor in the entertainment industry registered the
Domain Name with the intent to disrupt Complainant and its newly developed
series. Such a finding warrants a bad
faith registration determination pursuant to Policy ¶ 4(b)(iii). See Mission Kwa Sizabantu v. Rost,
D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “...one who acts in
opposition to another and the context does not imply or demand any restricted
meaning such as commercial or business competitor”); see also Surface
Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb 5, 2001) (finding
that, given the competitive relationship between Complainant and Respondent,
Respondent likely registered the contested domain name with the intent to
disrupt Complainant’s business and create user confusion); see also
Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb.
Forum Dec. 23, 2000) (concluding that domain names were registered and used in
bad faith where Respondent and Complainant were in the same line of business in
the same market area).
DECISION
We
find in favor of Disney Enterprises, Inc. and against PushTravel.com and for a
remedy we ORDER that the Domain Name <pushnevada.com> be
transferred from the Respondent to the Complainant.
RICHARD B. WICKERSHAM,
(Ret. Judge), Panelist
JOHN J. UPCHURCH (Ret.
Judge), Panelist
MS. ANNE M. WALLACE, Q.C., Panelist
Dated: August 25, 2002
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