national
arbitration forum
DECISION
Disney Enterprises, Inc. v. David Runde
Claim Number: FA0804001178346
PARTIES
Complainant is Disney Enterprises, Inc. (“Complainant”), represented by J.
Andrew Coombs, of J. Andrew Coombs, A Professional
Corporation,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <disneyidol.com>, and <disneyidol.net>, registered with Network Solutions, Inc.
PANEL
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.
Terry F. Peppard as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 15, 2008; the National Arbitration Forum received a hard copy of the Complaint on April 16, 2008.
On April 16, 2008, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <disneyidol.com>, and <disneyidol.net> domain names are registered with Network Solutions, Inc. and that Respondent is the current registrant of the names. 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 April
16, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 6, 2008
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@disneyidol.com, and
postmaster@disneyidol.net by e-mail.
On May 6, 2008, pursuant to a joint request from Complainant and Respondent, the National Arbitration Forum issued an Order Staying the Administrative Proceeding.
On May 29, 2008, the National Arbitration Forum granted Complainant’s request to lift the Stay of Arbitration. Respondent was given until May 30, 2008 to submit a response.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 4, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant makes the following assertions:
Complainant produces children’s entertainment goods and services.
Complainant registered its DISNEY trademark with the United States Patent and Trademark Office (“USPTO”) on July 28, 1981 (Reg. No. 1,162,727).
Respondent registered the disputed domain names on May 9, 2007.
Respondent has never been authorized to use the DISNEY mark and Respondent is not, and never has been, commonly known by the disputed domain names.
Respondent’s <disneyidol.com>, and <disneyidol.net> domain names resolve to a website which displays links for goods and services, some of which directly compete with Complainant’s business.
Respondent offered to sell the disputed domain names to Complainant prior to the filing of the Complaint in this proceeding and after Complainant had sent a cease and desist letter to Respondent.
Respondent’s <disneyidol.com>, and <disneyidol.net> domain names are confusingly similar to Complainant’s DISNEY mark.
Respondent does not have any rights to or legitimate interests in the <disneyidol.com> and <disneyidol.net> domain names.
Respondent registered and uses the <disneyidol.com>, and <disneyidol.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
(1) the domain names registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain names; and
(3) the domain names were registered and are being used by Respondent in bad faith.
DISCUSSION
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant registered its DISNEY trademark with the USPTO
in 1981. This registration sufficiently
establishes Complainant’s rights in its mark pursuant to Policy ¶ 4(a)(i). See Automotive
Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006)
(finding that a complainant’s federal trademark registration establishes its
rights under Policy ¶ 4(a)(i)); see also Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007)
(finding that a complainant sufficiently established rights in its SKUNK WORKS mark
through registration of the mark with the USPTO).
Respondent’s <disneyidol.com>, and <disneyidol.net>
domain names incorporate Complainant’s
DISNEY mark in its entirety, adding only the generic term “idol” and the
generic top-level domains (“gTLD”) “.com,” and “.net.” The addition of the generic term “idol” is
insufficient to distinguish the disputed domain names from Complainant’s
mark.
Likewise, the addition of a gTLD is not relevant in evaluating whether the disputed domain names are confusingly similar to Complainant’s mark. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); 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.
Therefore, Respondent’s <disneyidol.com>, and <disneyidol.net> domain names are confusingly similar to Complainant’s DISNEY mark pursuant to Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant claims that Respondent has neither rights to nor legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). Complainant has the initial burden of showing that Respondent does not have rights to or legitimate interests in the disputed domain names. Once Complainant has made out a prima facie showing that Respondent lacks rights and legitimate interests cognizable under the Policy, the burden shifts to Respondent to show that it does have such rights or legitimate interests. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving that the Respondent has no rights or legitimate interests in
respect of the Domain Name requires the Complainant to prove a negative. For
the purposes of this sub paragraph, however, it is sufficient for the
Complainant to show a prima facie case and the burden of proof is then shifted
on to the shoulders of Respondent. In
those circumstances, the common approach is for respondents to seek to bring themselves
within one of the examples of paragraph 4(c) or put forward some other reason
why they can fairly be said to have a relevant right or legitimate interests in
respect of the domain name in question.
See also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the assertion by a complainant that a respondent has no right to or legitimate interest in a contested domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists).
Complainant has met the initial burden of showing a prima facie case that Respondent lacks
rights to and legitimate interests under Policy ¶ 4(a)(ii). Because Respondent has failed to answer the
Complaint, we may presume that Respondent lacks rights to and legitimate
interests in the disputed domain names. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond, it is presumed
that Respondent lacks all rights and legitimate interests in the disputed
domain name.
See also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond to a complaint filed under the Policy allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nevertheless, we will examine the evidence of record to determine if there is any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain names under Policy ¶ 4(c).
We first note in this connection that Complainant asserts, and Respondent does not deny, that Respondent has never been authorized to use the DISNEY mark and that Respondent is not and never has been commonly known by the disputed domain names. We also observe that the pertinent WHOIS information does not indicate that Respondent is commonly known by the disputed domain names. Thus, we conclude that Respondent is not commonly known by the <disneyidol.com> and <disneyidol.net> domain names for purposes of Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent does not have rights in a disputed domain name where that respondent is not known by the competing mark).
We also note that there is no dispute as to Complainant’s allegation that Respondent is using the <disneyidol.com>, and <disneyidol.net> domain names to advertise links to Complainant’s business competitors. Such use is not 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). See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002): “Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.” See also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that a respondent’s use of a disputed domain name to redirect Internet users to a financial services website, which competed with the business of a complainant, was not a bona fide offering of goods or services).
Additionally, we take notice of the undisputed assertion
that Respondent offered to sell the disputed domain names to Complainant after Complainant
had sent a cease and desist letter to Respondent. In the circumstances here
obtaining, Respondent’s attempt to sell the disputed domain names is evidence
that it lacks rights and legitimate interests in them under Policy ¶ 4(a)(ii). See Wal-Mart
Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that a
respondent’s effort to sell a domain name suggests it has no legitimate use for
the domain); see also Mothers Against
Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27,
2003) (holding that a respondent’s apparent willingness to dispose of a domain
name suggested that it lacked rights to or legitimate interests in the domain).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
We have already discussed under the previous heading the fact that Respondent offered to sell the disputed domain names to Complainant after Complainant had sent a cease and desist letter to Respondent. This behavior is also evidence of registration and use of the contested domains in bad faith under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003): “Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).” See also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where a respondent offered domain names for sale).
In addition, Respondent’s use of the <disneyidol.com>, and
<disneyidol.net> domain names to gain commercially by
advertising links to competing services constitutes bad faith registration and
use under Policy ¶ 4(b)(iv). See Disney
Enters., Inc. v. Noel, FA 198805 (Nat.
Arb. Forum Nov. 11, 2003):
Respondent registered a domain name confusingly similar to
Complainant's mark to divert Internet users to a competitor's website. It is a
reasonable inference that Respondent's purpose of registration and use was to
either disrupt or create confusion for Complainant's business in bad faith
pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).
See also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005: “[T]he Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”
The Panel thus finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <disneyidol.com>, and <disneyidol.net> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 18, 2008
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