Disney Enterprises, Inc. v. Shanadu Enterprises, Inc and Paco Bertomeu
Claim Number: FA0806001211219
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 <disneylandhotels.com>, <hotels-by-disneyland.com> and <hotels-nearby-disneyland.com>, registered with Enom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 20, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 23, 2008.
On June 27, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <disneylandhotels.com>, <hotels-by-disneyland.com> and <hotels-nearby-disneyland.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, 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 June 30, 2008, a Notification of
Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of July 21, 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@disneylandhotels.com, postmaster@hotels-by-disneyland.com and
postmaster@hotels-nearby-disneyland.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 24, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s
<disneylandhotels.com>, <hotels-by-disneyland.com>
and <hotels-nearby-disneyland.com> domain names are
confusingly similar to Complainant’s DISNEY and
2. Respondent does not have any rights or legitimate interests in the <disneylandhotels.com>, <hotels-by-disneyland.com> and <hotels-nearby-disneyland.com> domain names.
3. Respondent registered and used the <disneylandhotels.com>, <hotels-by-disneyland.com> and <hotels-nearby-disneyland.com> domain names 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 such as movies,
television programs, books, and merchandise.
Complainant also owns and operates theme parks in several countries,
including the “Disneyland” theme park located in
Respondent registered the <hotels-by-disneyland.com> and <hotels-nearby-disneyland.com> domain names on April 13, 2000, and registered the <disneylandhotels.com> domain name on February 3, 2000. The disputed domain names resolve to websites that display a search engine function as well as third-party advertisements, some of which compete with Complainant’s operations.
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 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 that 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 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 has set forth evidence demonstrating that its DISNEY and
Respondent’s <disneylandhotels.com>, <hotels-by-disneyland.com> and
<hotels-nearby-disneyland.com> domain names include
Complainant’s entire DISNEY and DISNEYLAND marks, while adding the generic
terms “hotels,” “by,” and/or “nearby,” hyphens, and the generic top-level
domain (“gTLD”) “.com.” Previous panels
are consistent in finding that TLDs and hyphens are irrelevant additions under
Policy ¶ 4(a)(i).
Moreover, the generic terms “hotels,” “by,” and “nearby” do not
distinguish the disputed domain name since both of Complainant’s marks remain
the dominant element of the disputed domain names. For the foregoing reasons, the Panel finds
that the <disneylandhotels.com>, <hotels-by-disneyland.com> and <hotels-nearby-disneyland.com>
domain names are confusingly similar to Complainant’s DISNEY and
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and
legitimate interests in the <disneylandhotels.com>, <hotels-by-disneyland.com> and
<hotels-nearby-disneyland.com> domain names. Complainant must set forth a sufficient prima facie case supporting its
allegations before Respondent receives the burden of proving its rights or
legitimate interests. Because the Panel
finds that Complainant has alleged a prima
facie case, Respondent receives its corresponding burden. See AOL LLC v. Gerberg, FA 780200 (Nat.
Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that
Respondent does not have rights or legitimate interest in the subject domain
names, which burden is light. If
Complainant satisfies its burden, then the burden shifts to Respondent to show
that it does have rights or legitimate interest in the subject domain names.”);
see also F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii)
of the Policy shows that the burden of proof shifts from the Complainant to the
Respondent once the Complainant has made out a prima facie case that the
Respondent has no rights or interests in the domain names.”).
Respondent has failed to respond to the Complaint. As such, the only evidence before the record in which Respondent may be seen to be commonly known by the disputed domain names is the WHOIS registration information. However, the registrant of record for each of the disputed domain names is “Shanadu Enterprises, Inc and Paco Bertomeu.” As this does not bear any resemblance or similarity to the disputed domain names, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Respondent’s <disneylandhotels.com>, <hotels-by-disneyland.com> and
<hotels-nearby-disneyland.com> domain names resolve to
websites that feature search engine functions as well as competitive
third-party advertisements. Respondent
presumably receives a commercial benefit through this activity in the receipt
of “click-through” referral fees. The
Panel finds this use of the disputed domain names to fail to constitute 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 Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the
respondent was not using the <tesco-finance.com> domain name in
connection with a bona fide offering of goods or services or a
legitimate noncommercial or fair use by maintaining a web page with misleading
links to the complainant’s competitors in the financial services industry); see
also Trans Global
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain names resolve to websites that
feature third-party advertisements, some of which compete with Complainant’s
operations. The Panel finds that Respondent
has registered the disputed domain names primarily to disrupt Complainant’s
business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum
July 24, 2006) (finding that the respondent engaged in bad faith registration
and use pursuant to Policy ¶ 4(b)(iii) by using the
disputed domain names to operate a commercial search engine with links to the
products of the complainant and to complainant’s competitors, as well as by diverting
Internet users to several other domain names); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes
that by redirecting Internet users seeking information on Complainant’s
educational institution to competing websites, Respondent has engaged in bad
faith registration and use pursuant to Policy ¶
4(b)(iii).”).
Respondent has registered confusingly similar disputed
domain names, and presumably benefits from the placement of third-party
competitive advertisements on its website through the receipt of referral
fees. The Panel finds that Respondent
has therefore created a likelihood of confusion for commercial benefit as to
Complainant’s affiliation with the disputed domain names and corresponding websites,
which constitutes Policy ¶ 4(b)(iv) bad faith
registration and use. See Velv,
LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that
the respondent’s use of the <arizonashuttle.net> domain name, which
contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic
to Respondent’s website offering competing travel services violated Policy ¶
4(b)(iv)); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum
June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv)
where the respondent was diverting Internet users searching for the complainant
to its own website and likely profiting).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <disneylandhotels.com>, <hotels-by-disneyland.com> and <hotels-nearby-disneyland.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: August 7, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum