Disney Enterprises Inc. v. PushTravel.com
Claim Number: FA0206000114626
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.
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.
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.
Complainant requests that the domain name <pushnevada.com> be transferred from Respondent to 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.
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;
(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).
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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