Disney Enterprises, Inc. v. Frank Goddard & Son
Claim Number: FA0805001192328
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 <disneycelebration.com>, registered with Network Solutions, Inc.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 21, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 22, 2008.
On May 23, 2008, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <disneycelebration.com> domain name is registered with Network Solutions, Inc. and that 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 May
29, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 18, 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@disneycelebration.com
by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 25, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is one of the
world’s leading producers of children’s entertainment goods and services.
Complainant produces, among
other things, movies, television programs, books and merchandise.
Complainant uses its DISNEY
trademark in association with this business, and registered its mark with the
United States Patent and Trademark Office (“USPTO”) on July 28, 1981 (Reg. No.
1,162,727).
Complainant uses its
CELEBRATION service mark in association with its business, specifically in
association with its real estate services, and registered its mark with the
USPTO on September 2, 1997 (Reg. No. 2,093,271).
Respondent, Frank Goddard
& Son, registered the <disneycelebration.com> domain
name on December 22, 1999, which resolves to a website displaying information
regarding renting a home in
Respondent is not authorized or licensed by Complainant to utilize its DISNEY or CELEBRATION marks.
Respondent is intentionally diverting to its own website Internet users seeking Complainant in order to advertise rental properties for Respondent’s commercial benefit.
Respondent’s <disneycelebration.com> domain name is confusingly similar to Complainant’s DISNEY and CELEBRATION marks.
Respondent does not have any rights or legitimate interests in the domain name <disneycelebration.com>.
Respondent registered and uses the <disneycelebration.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical to a trademark and 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 same domain name was registered and is being used by Respondent in bad faith.
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.
Complainant has established rights in its DISNEY and CELEBRATION marks pursuant to Policy ¶ 4(a)(i) through their registrations with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004): “Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.” See also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003): “Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”
Respondent’s <disneycelebration.com> domain name fully incorporates both of Complainant’s marks, and merely adds the generic top-level domain (“gTLD”) “.com.” In Nintendo of America Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000), a panel found confusing similarity between a domain name and competing marks where a respondent combined a complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name. We reach a similar conclusion here.
It is likewise well accepted that the addition of a gTLD to a mark in forming a disputed domain name is irrelevant when determining if the domain name is confusingly similar to the mark. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003):
The
addition of a top-level domain is irrelevant when establishing whether or not a
mark is identical or confusingly similar, because top-level domains are a
required element of every domain name.
Therefore, we conclude that Respondent’s <disneycelebration.com> domain name is confusingly similar, indeed substantively identical, to Complainant’s DISNEY and CELEBRATION marks under Policy ¶ 4(a)(i).
Complainant sufficiently alleges a prima facie case that Respondent lacks rights to and legitimate interests in the <disneycelebration.com> domain name, thus shifting the burden of proof to Respondent to prove otherwise. 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.
Respondent’s failure to respond allows the presumption that Respondent has no rights to or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Because
Complainant’s Submission constitutes a prima
facie case under the Policy, the burden effectively shifts to Respondent.
Respondent’s failure to respond means that Respondent has not presented any
circumstances that would promote its rights or legitimate interests in the
subject domain name under Policy ¶ 4(a)(ii).
We will nonetheless evaluate the available evidence within the parameters of Policy ¶ 4(c) to determine if there is any basis for concluding, on the record before us, that Respondent has such rights or interests.
We begin by noting that Complainant asserts, and Respondent
does not deny, that Respondent is not authorized or licensed to utilize Complainant’s
DISNEY or CELEBRATION marks, and that Respondent is intentionally diverting
Internet users seeking Complainant to its own website to advertise rental
properties for its own benefit. A panel
in Vapor Blast Mfg. Co. v. R & S Tech.,
Inc., FA 96577 (Nat. Arb. Forum Feb.
27, 2001) found that a respondent’s commercial use of a confusingly similar
domain name suggests that that respondent lacks rights to or legitimate
interests in a disputed domain name.
Similarly, we conclude that Respondent’s use of both of Complainant’s
DISNEY and CELEBTRATION marks in the confusingly similar disputed domain name makes
it impossible to infer a legitimate use.
See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating
that a respondent’s use of a complainant’s entire mark in domain names makes it
difficult to infer a legitimate use). We
also find that Respondent’s undenied use of the disputed domain name for its
commercial benefit does not constitute 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). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003):
Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's
benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).
To the same effect, see also Golden
Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003)
We also observe that Respondent’s WHOIS information implies that Respondent is commonly known as “Frank Goddard & Son” rather than the disputed domain name. Further, nothing in the record before us suggests that Respondent is known by the <disneycelebration.com> domain name. A panel in Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001), found that a respondent did not have rights in a domain name where that respondent was not known by the competing mark. See also 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"). Similarly, we conclude that Respondent is not commonly known by the disputed domain name and thus has no rights to or legitimate interests in it pursuant to Policy ¶ 4(c)(ii).
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(ii).
It is undisputed that Respondent is attempting to gain commercially by diverting Internet users seeking Complainant to its own website offering rental property. This behavior is use is likely to create confusion as to Complainant’s possible affiliation with the disputed domain name, and thus constitutes evidence of bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iv). See, for example, Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use of a contested domain name under Policy ¶ 4(b)(iv) where a respondent diverted Internet users searching for a complainant to that respondent’s own website, likely profiting from the confusion); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name there in question was obviously connected with a complainant’s well-known marks, thus creating a likelihood of confusion for a respondent’s commercial gain).
In addition, it appears that Respondent registered the <disneycelebration.com> domain name
with at least constructive knowledge of Complainant’s rights in the DISNEY
trademark and CELEBTRATION service mark by virtue of Complainant’s prior registration of those
marks with the United States Patent and Trademark Office. Registration of a confusingly similar domain
name despite such constructive knowledge is, without more, evidence of bad
faith registration and use of the domain name pursuant to Policy ¶
4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct.
24, 2002); see also Orange Glo
Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
The Panel finds that Policy ¶ 4(a)(iii)
has been met.
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 <disneycelebration.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 30, 2008
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