Disney Enterprises, Inc. v.
Claim Number: FA0806001204246
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 <disneyholidays.com>, registered with Enom, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically June 12, 2008; the National Arbitration Forum received a hard copy of the Complaint June 16, 2008.
On June 13, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <disneyholidays.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. verified that Respondent is bound by the Enom, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June
19, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 9, 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@disneyholidays.com by
e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 15, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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:
1. The domain name that Respondent registered, <disneyholidays.com>, is confusingly similar to Complainant’s DISNEY mark.
2. Respondent has no rights to or legitimate interests in the <disneyholidays.com> domain name.
3. Respondent registered and used the <disneyholidays.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Disney
Enterprises, Inc., is a worldwide producer of children’s entertainment goods
and services, specifically books, movies, television programs, and
merchandise. Complainant uses its DISNEY
mark 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).
Respondent, Philip Port, registered the <disneyholidays.com> domain name March 10, 2002, which resolves to a website displaying Complainant’s name and DISNEY mark and offering non-DISNEY merchandise and services through the website.
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 will draw such inferences as the Panel 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 the 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 Complainant to 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 Respondent is identical or confusingly similar to a trademark or 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 domain name has been registered and is being used in bad faith.
Complainant established rights in its DISNEY mark by
registration of the mark with the USPTO pursuant to Policy ¶ 4(a)(i). See Enter. Rent-A-Car Co.
v. David Mizer Enters., Inc., FA 622122 (Nat.
Arb. Forum Apr. 14, 2006) (finding that the complainant’s
registration with the USPTO for the
The disputed domain name that Respondent registered, <disneyholidays.com>, fully
incorporates Complainant’s DISNEY mark with the addition of the generic
top-level domain (“gTLD”) “.com” and the generic term “holidays.” It is well accepted that the addition of
gTLDs in a domain name are irrelevant when determining if a domain name is
confusingly similar or identical to a mark.
See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25,
2000) (finding that the top level of the domain name such as “.net” or “.com”
does not affect the domain name for the purpose of determining whether it is
identical or confusingly similar). In Oki
Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001), the panel
stated that “the fact that a domain name wholly incorporates a Complainant’s
registered mark is sufficient to establish identity [sic] or confusing
similarity for purposes of the Policy despite the addition of other words to
such marks.” Similarly, the Panel finds
that Respondent’s addition of the generic term “holidays” does not render the
disputed domain name distinctive enough to prevent Internet users from being
confused as to Complainant’s suggested affiliation with the domain name. Therefore, the Panel finds that Respondent’s <disneyholidays.com> domain name is
confusingly similar to Complainant’s DISNEY mark pursuant to Policy ¶ 4(a)(i). See Arthur
Guinness Son & Co. (
The Panel finds that Complainant satisfied the elements of
ICANN Policy ¶ 4(a)(i).
Initially, Complainant has the burden of proof to
demonstrate that Respondent has no rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(a)(ii). Once Complainant makes a prima facie showing, the burden of proof shifts to the Respondents to show
rights and legitimate interests in the disputed domain name. Respondent’s failure to respond to the
Complaint furthers this presumption that it has no rights or legitimate
interests in the disputed domain name. The
Panel finds that Complainant made a prima
facie showing but this Panel still considers all of the evidence under
Policy ¶ 4(c) before making a determination that Respondent lacks rights. 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 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).”).
Complainant alleges that Respondent does not have permission
or authorization to use its DISNEY mark in the registered disputed domain name
or on the resolving website. Additionally,
nothing in the record, including the WHOIS information that lists the
registrant as “
Furthermore, Respondent’s disputed domain name resolves to a
website featuring pictures and text associated with Complainant while offering non-DISNEY
merchandise and services. Complainant
alleges, and the Panel finds, that Respondent’s use of the <disneyholidays.com> domain name is for
Respondent’s commercial gain and thus 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).”); see also Toronto-Dominion Bank v. Karpachev,
188 F.Supp.2d 110, 114 (D. Mass. 2002)
(finding that, because the respondent's sole purpose in selecting the domain
names was to cause confusion with the complainant's website and marks, its use
of the names was not in connection with the offering of goods or services or
any other fair use); see also State Farm Mut. Auto. Ins.
Co. v. LaFaive, FA 95407 (Nat. Arb.
Forum Sept. 27, 2000) (“The unauthorized providing of information and services
under a mark owned by a third party cannot be said to be the bona fide
offering of goods or services.”).
The Panel finds that Complainant satisfied the elements of
ICANN Policy ¶ 4(a)(ii).
While Complainant and Respondent do not compete in the same commercial areas, Respondent can still be said to be Complainant’s competitor, in that Respondent has intentionally drawn away Complainant’s Internet visitors using the confusingly similar disputed domain name. Therefore, the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii). See Mission KwaSizabantu 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 EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business).
Respondent’s disputed domain name resolves to a website
likely to create confusion as to Complainant’s suggested affiliation and
sponsorship of the disputed domain name and corresponding website due to the
displaying of text and images related to Complainant. The evidence supports the Panel’s inference
that Respondent is attempting to commercially gain from the incorporation of
Complainant’s DISNEY mark in its disputed domain name and is thus evidence of
bad faith. See Am. Univ. v.
Cook, FA 208629 (Nat. Arb. Forum Dec. 22,
2003) (“Registration and use of a domain name that incorporates another's mark
with the intent to deceive Internet users in regard to the source or
affiliation of the domain name is evidence of bad faith.”). Therefore, the Panel finds that Respondent’s
registration and use of the disputed domain to commercially gain from Complainant’s
goodwill in the DISNEY mark is in violation of 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 State Fair of
The
Panel finds that Complainant satisfied the elements of ICANN Policy ¶
4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <disneyholidays.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 29, 2008.
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