Disney Enterprises, Inc. v.
Claim Number: FA0806001211346
Complainant is Disney Enterprises, Inc. (“Complainant”), represented by
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <imgoingtodisneyland.com>, registered with Wild West Domains, 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.
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 24, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 14, 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 firstname.lastname@example.org by e-mail.
A timely Response was received in electronic format only, and not in
hard copy on
On July 18, 2008, Complainant delivered to the National Arbitration Forum a timely Additional Submission, which was determined to be timely and complete under the National Arbitration Forum’s Supplemental Rule 7.
On July 18, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James Bridgeman as Panelist.
On July 23, 2008, the hard copy of the Response was received by the National Arbitration Forum and on the same day Respondent an Additional Submission.
Since, quite sensibly in the circumstances, no point has been taken by Complainant relating to the late filing of the Response, and, since there was insignificant delay caused and no prejudice either to the process or to Complainant by Respondent’s late filing of the hard copy Response, this Panel has admitted and considered the Response, Complainant’s Additional Submissions and Respondent’s Additional Submission.
Complainant requests that the domain name <imgoingtodisneyland.com> be transferred from Respondent to Complainant.
Complainant submits that it is a producer
of children’s entertainment goods and services such as movies, television
programs, books, and merchandise. In
association with these goods and services, Complainant owns rights in a variety
of registered trademarks in jurisdictions throughout the world; the most
relevant of which are United States Trademark DISNEY
(Reg. No. 1,162,727 issued July 28, 1981) and
Complainant has furnished details of the registered trademarks upon which it relies.
Complainant submits that it holds
numerous domain name registrations incorporating the
Complainant submits that its
widespread international use of the
Complainant further submits that the primacy of its
Complainant submits that its
Complainant submits that the test of confusing similarity under the Policy is confined to a consideration of the disputed domain name and the trademark, without reference to other issues. See Microsoft Corp. v. WDW Inc., D2002-0412 (WIPO July 1, 2002).
Complainant submits that the domain name at issue is confusingly similar to Complainant’s said trademarks, as it incorporates each of the trademarks in their entirety with only the addition of a generic phrase “imgoingto.” Complainant cites Microsoft, supra (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant’s combined with a generic word or term); see also Yahoo! Inc. v. Seocho, FA 109050 (Nat. Arb. Forum May 13, 2002) (same); see also Sony Kubushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that neither the addition of an ordinary descriptive word nor the suffix “.com” detracts 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 Disney Enter., Inc. v. Zuccarini, D2001-0489 (WIPO June 19, 2001) (finding “disneychanel.com”, “disneywallpaper.com”, “disneywold.com”, “disneywolrd.com”, disneyworl.com” and “walddisney.com” confusingly similar to the trademark DISNEY).
Complainant submits that several distinct grounds support the conclusion that Respondent has no legitimate interest in the domain name at issue.
Firstly, Respondent is not
authorized by Complainant to use the domain name. See Guerlain S.A. v. Peikang, D2000-0055 (WIPO
Secondly, Complainant submits that Respondent’s use of the domain name does not constitute a bona fide offering of goods or services. See Ciccione v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods and services”); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Mar. 6, 2001) (“bona fide use does not exist when the intended use is a deliberate infringement of another’s rights”).
Thirdly, Complainant has not authorized Respondent to use its trademarks or to seek the registration of any domain names incorporating Complainant’s trademarks. Respondent must have known when he selected the domain name that the public would incorrectly associate it with Complainant’s marks. In fact, given the distinctiveness and fame of Complainant’s trademarks, there is no plausible explanation for Respondent’s registration of the domain name at issue other than to trade upon the goodwill that Complainant has developed in its marks.
Fourthly, Complainant submits that despite having owned the domain name for more than two years, there is only a parking web page associated with the domain name. In an annex to the Complaint, Complainant has submitted a printout of the parking webpage displayed upon entering the URL. Complainant submits that this clearly indicates that Respondent has no legitimate use for the domain name <imgoingtodisneyland.com>.
Finally, Complainant submits that Respondent is not and has not been commonly known by the domain name <imgoingtodisneyland.com>. Respondent does not use Complainant’s trademarks to identify himself on his website or for any other legitimate purpose. Even if Respondent has used the trade name, such an unauthorized use does not establish legitimate interests in the domain name in dispute. See Compaq Info. Technologies Group, LP v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002). Thus, Respondent has no legitimate interest in the domain name at issue.
Complainant submits that the fame
of Complainant’s trademarks combined with widespread marketing of Complainant’s
goods and services and the above referenced trademark put Respondent on notice
of Complainant’s trademarks. Respondent must have had actual knowledge of
Complainant’s trademarks prior to his registration of the domain name at issue
Complainant submits that the domain name at issue incorporates Complainant’s world famous trademarks with only minor additions, making it identical to the name widely used by Complainant on a variety of goods and services, thereby increasing the confusion in the minds of users who may be falsely led to believe that the domain name and the advertising links to which it directs are sponsored by Complainant.
Further evidence of bad faith exists in that the registration breaches the Domain Name Registration Agreement with Respondent’s registrar because Respondent falsely represented that the registration does not “infring[e] upon or conflict with the legal rights of a third party or a third party’s trademark or trade name.” Complainant has submitted a copy of the registration agreement.
In support of its submissions
Complainant cites Google Inc. v. wwwgoogle.com, D2000-1240 (WIPO Nov. 9,
2000) (finding Respondent's false representation that its domain name did not
infringe the rights of any third party as proof of bad faith). Complainant also cites Young Genius
Software AB v.
Complainant has submitted a print out of a search that it claims to show that Respondent has registered over 1,200 domain names. Complainant submits that bad faith should be found due to the fact that Respondent has registered such an incredibly large volume of domain names, many of which infringe upon other famous trademarks, including <yahoodater.com> (Yahoo trademark), <mybmwdealer.com> (BMW trademark), <googleadvisor.com> (Google trademark), and <harleyboys.com> (Harley trademark). Complainant cites Technology Prop., Inc. v. Hussein, FA 095411 (Nat. Arb. Forum Sept. 14, 2000) (finding bad faith where pattern of conduct evidenced by registering numerous domain names that infringe on famous marks).
Complainant submits that the fact that Respondent has done nothing with the web site to which the domain name at issue resolves is further evidence of his intent to simply park the domain name.
Finally, Complainant has submitted copy correspondence sent by Complainant to Respondent and submits that Respondent’s failure to cease and desist from wrongful use of the domain name, after being notified by Complainant of the unauthorized use, is evidence of bad faith. Complainant cites RRI Financial Inc. v. Ray Chen, D2001-1242 (WIPO Dec. 11, 2001) (holding that a failure to respond to cease and desist demands is a factor supporting a finding of bad faith).
that the domain name <imgoingtodisneyland.com>
is confusingly similar to the trademark in which Complainant has rights because
the manner in which Respondent’s domain name is used is very specific and
direct in its intent of simply communicating his interest in and information
about Disneyland, and to provide a forum for Internet users who may have an
interest of visiting or have actually visited the theme park. Respondent is using the
In that context,
Respondent submits that Complainant’s founder,
A Google search
of “Disneyland” demonstrates the extensive use and incorporation of “
Respondent states that he intends to include a disclaimer on the home page of his website, along with a link to Complainant’s website, to mitigate any confusion that may arise with Complainant’s trademarks.
Respondent affirmatively asserts his intention to make a legitimate fair use of the <imgoingtodisneyland.com> domain name devoid of the intent to mislead or divert consumers for commercial gain or to tarnish the trademark at issue.
Respondent submits that prior to receiving any notice of dispute, it was Respondent’s primary purpose to make a legitimate non-commercial use of the domain name at issue by sharing experiences (e.g., photos and information) of trips to the theme park similar to numerous existing and established websites such as <DisneylandReport.com> (containing Disneyland News and Secrets and copyrighted 2004 – 2007), Jeff Keller’s Home Page of Digital Disney (copyrighted 1995 to 2008) found on multiple websites including < lostworld.com>, <theimagineworld.com>’s Disney Photo tour (1950s and 1960s copyrighted), and John Perry’s Disneyland Page (originally copyrighted in 1995 and containing personal photos and other links).
Respondent submits that the websites,
to which he refers, along with numerous others found on the Internet, use the
Respondent denies that he registered
the domain name in bad faith. Respondent
submits that he intends going to
Respondent is not a competitor of Complainant and is not in any way attempting to disrupt or divert Complainant’s business.
This is a legitimate purpose done in good faith. The fact that Respondent has yet to visit the theme park, nor has developed his website at this time does not evidence bad faith. Respondent’s actions were taken to ensure that he can achieve his mission of developing his website, when feasible, with the ordinary and every day use of the theme park name.
Respondent acknowledges that he owns a large volume of domain names, but that there are less than ten out of over 2,400 domain names that may be considered to contain any trademark-related words (i.e., less than a fraction of 1%). This clearly does not amount to evidence a pattern of bad faith registration as alleged by Complainant. Respondent has not at any time purposefully engaged in any bad faith efforts to infringe anyone’s interest nor have any other claims ever been asserted against Respondent.
As further example
of Respondent’s good faith action in registering the domain name, it should be
Thus Complainant’s attempts to categorize Respondent’s actual intentions as being in bad faith are unfounded and simply misrepresent the facts.
Respondent denies that he registered the domain name so as to attract for commercial gain, Internet users to Complainant’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
In fact, as acknowledged by Complainant, Respondent has merely established a parking webpage associated with the domain name, which further supports his assertion that there is no intent to confuse anyone or act in bad faith at any time. Also, Respondent did not mean any ill intent or bad faith when he did not respond to Complainant’s cease and desist letter, because Respondent was relying on the fact that his parked webpage was inactive.
Lastly, as further example of his bona fides, Respondent is not in any way attempting to disrupt Complainant’s business in any way, and has not at any time, tried to sell or gain monetary benefits from the domain name at issue from any party. The domain name in dispute was not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant, or to a competitor of Complainant, for any consideration.
B. Complainant’s Additional Submissions
In its Additional Submission, Complainant submits that Respondent has admitted key facts supporting Claimant’s claim seeking transfer of the domain name at issue.
Complainant further submits that Respondent asserts a nominative fair use of Complainant’s trademarks for “simply communicating its [sic] interest to visit a place or theme park in question.” Complainant rejects this assertion and notes that, over a substantial period of time, Respondent has not put the domain name to any such use.
Complainant submits that the Panel is required to make an objective
determination based upon a comparison of Complainant’s
Complainant argues that Respondent’s commercial use of the domain name as the address of a parking page, over a substantial period of time, since its initial registration, demonstrates an intention to capitalize on the confusion created by his use of the domain name at issue.
Complainant further argues that while Respondent apparently believes that
other uses of Complainant’s trademarks online by third parties exonerate his
infringing bad faith use, there is no authority to support such a proposition. See
Pepperdine Univ. v. BDC Partners, Inc., D2006-1003 (WIPO Sept.25, 2006)
(Respondent’s “nominative fair use” argument and evidence of a Google search
showing numerous third party uses of the trademarks is not appropriate for a
confusing similarity analysis); see also
Marvel Mfg. Co. Inc. v. Koba Internet Sales, LP, D2008-0265 (WIPO May 5,
2008) (panel ignores Respondent’s argument that extensive third party use of
the trademark both as a mark and within domain names precludes confusing
similarity and finds that “no doubt exists that the [domain] name is
confusingly similar to the marks[.]”)
Respondent’s intended use of a disclaimer does not eliminate any
confusing similarity. See Allen-Edmonds
Shoe Corp. v. Takin’ Care of Bus., D2002-0799 (WIPO Oct. 10, 2002)
(disclaimer was not effective to avoid confusing similarity); see also PG&E Corp. v.
Complainant submits that Respondent admits his hitherto illegitimate use of the domain name <imgoingtodisneyland.com> to host a parking page consisting of commercial links. Complainant submits that this Panel may therefore infer that Respondent earns a revenue stream from those links.
Complainant notes that Respondent
asserts an unfulfilled intent to post a website honoring a trip to
Respondent admits ownership of multiple registrations, including registrations which infringe trademark rights owned by third parties. Respondent does not dispute these domain names are used to “park” “landing pages” from which it can be inferred that Respondent derives revenue from the diversion of traffic from the true owners of the underlying trademarks. Respondent also acknowledges receipt and inaction in response to Complainant’s cease and desist letter.
D. Respondent’s Additional Submission
In his Additional Submission, Respondent categorically denies that he admitted key facts that support Complainant’s claim seeking transfer of its domain name.
Respondent argues that Complainant seeks to rely on unsubstantiated facts alleging commercial use of the domain name at issue by Complainant and infers that Respondent earns a revenue stream from its parked web page. Respondent submits that Complainant has provided no direct evidence that Respondent earns a revenue stream from its parked page or is using the web page for commercial use. Respondent’s parked web page clearly states that “this page is parked “free” courtesy of its registrar”, GoDaddy.com. The registrar is not a competitor of Complainant and Respondent conducts no commercial-related activities or has any rights, title or interest in registrar.
Respondent denies that he at any time engaged in any commercial use of the web page or has received any revenue stream from his web page.
Respondent denies any intention to confuse or mislead the public in any way. He denies commercial use of the domain name as the address of his parked web page. He re-asserts his intention to use the domain name at issue in a non-commercial use as a consumer information website in a manner similar to the examples that he listed in his Response some of which have been experiencing quiet enjoyment since 1995.
Respondent denies ever having conducted any activities regarding the website to tarnish Complainant’s interest with the mark through incorrect representation or slander. Respondent’s pre-existing plans for a non-commercial use are in fact, intended to be a beneficial consumer information web site that does not misrepresent a connection to the Complainant.
Respondent denies seeking commercial gain by diverting Internet traffic.
Respondent submits that the fact that Respondent has not developed its consumer information website at this time does not establish the lack of legitimate use or bad faith as alleged by Complainant. Respondent is a part-time web developer who plans, collaborates on, and has designed multiple websites, and has the demonstrated experience to develop its contemplated website. Respondent cites Koninklijke Philips Electronics N.V. v. Manageware, D2001 0796 (WIPO Oct. 25, 2001) where the panel found ”such beneficial consumer information websites would fall within the Policy exemption, provided they did not misrepresent the connection to the product manufacturers, or otherwise run afoul of intellectual property rules.”
Also, during the past two years, Respondent has owned only two domains that reference “imgoingto (a designated place).com” namely <imgoingtodisneyland.com> and <imgoingtoheaven.com>. The former refers to “the happiest place on earth”, while the latter refers to “the happiest place” period. This is not coincidental and clearly demonstrates Respondent’s pre-established plans to legitimately use the domain for the purposes outlined in his initial Response. Accordingly, Respondent’s good faith conduct, plans, and action to secure the domain name for legitimate use in a non-commercial manner should not be diminished by Complainant’s unsubstantiated inferences to the contrary.
Respondent denies that his ownership of multiple Internet domain name registrations, including a few that allegedly may infringe trademark rights owned by third parties amounts to evidence of bad faith. Complainant however has not provided any evidence that any third party has alleged that Respondent has infringed trademark rights. Furthermore Respondent has never received any such allegations from third parties. In any case, over 99.99% of the domain names that are registered by Respondent would indisputably not be considered as infringing any trademark rights of third parties. Respondent submits that this clearly is evidence of a strong pattern of good faith conduct on his part.
Respondent denies deriving revenue from the diversion of traffic from the true owners of the underlying trademarks. Respondent to the contrary has never engaged in any commercial use of the domain name at issue or any of the domain names that Complainant allege infringe the trademarks of third parties. Respondent is not receiving nor has ever received any monetary consideration for these domain names.
Respondent also is not seeking commercial gain by diverting Internet traffic. Respondent’s web page is parked “free” courtesy of GoDaddy.com, its registrar, as noted directly on the top of its web page. Respondent has no rights, title or interest in the parked page, no other association other than the noted courtesy “free” parking, and thus it cannot be inferred that he is receiving a revenue stream. There is no information or links that can be construed to divert traffic from Complainant for commercial gain.
Respondent does not conduct, nor has he ever conducted, any activity on his parked page, the non-use of which has been noted by Complainant when asserting the lack of legitimate interest.
Respondent denies acting in bad faith by not responding to Complainant’s cease and desist letter since he was not actively using the domain name at issue, the web page was inactive and parked as noted by Complainant, and Respondent was not engaging in any commercial activity or deriving any revenue stream from the courtesy, parked page.
Accordingly, Complainant’s inferences are unfounded and clearly do not prove bad faith. Respondent plans to develop a consumer information website to share photos and information, and has even, in good faith, expressed its intentions to cooperate with Complainant to minimize any confusion by including a disclaimer statement expressing any lack of association or affiliation with Complainant, and provide a link to Complainant’s website.
is the registered owner of United States Trademark DISNEY (Reg. No. 1,162,727
issued July 28, 1981) and
Complainant has a worldwide reputation and goodwill as producer of children’s entertainment goods and services such as movies, television programs, books, and merchandise.
Complainant holds numerous domain
name registrations incorporating the DISNEY and
Respondent accepts that he is the owner of between 1,200 and 2,400 Internet domain names.
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; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has established that it has rights in the
In the view of this Panel any comparison of the domain name at issue <imgoingtodisneyland.com> and Complainant’s DISNEY and DISNEYLAND trademarks must inevitably lead to the conclusion that the domain name is confusingly similar to Complainant’s trademarks.
The domain name incorporates each of the trademarks in their
entirety with only the addition of a generic phrase “imgoingto” to the
In the circumstances Complainant has established the first element of the test in Paragraph 4(a) of the Policy.
Once Complainant makes a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii) the burden shifts to Respondent to
show it does have rights or legitimate interests. See
Complainant has made out a well-argued prima facie case that Respondent has no such rights, and, having considered the submissions of Respondent, this Panel is satisfied that Respondent has failed to prove that he has any such rights.
The essence of Respondent’s
argument in this regard is that he plans to use the domain name as the address
of a public information site for people visiting Complainant’s
Policy ¶ 4(c) provides that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on the evaluation of all evidence presented, shall demonstrate Respondent’s rights or legitimate interests to the domain name for purposes of the Policy ¶ 4(a)(ii):
(i) before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent bases his claim on Policy ¶ 4(c)(iii).
The domain name at issue was
In the view of this Panel, given the confusing similarity of the domain name at issue and Complainant’s trademarks, the present use and the use which Complainant proposes would in any event inevitably misleadingly divert consumers wishing to access a website associated with Complainant and the present use tarnishes the trademarks at issue.
In any event this Panel is of the view that Respondent’s claimed intention to establish a non commercial site lacks credibility. This is particularly the case since Respondent is the owner of between 1,200 and 2,400 Internet domain names and it is unlikely that he holds such a large portfolio for non commercial purposes.
Respondent acknowledges that he was aware of Complainant’s trademark and theme park when registering the domain name. His submission is that he registered the domain name with the intention of establishing a public information noncommercial website to assist families and holidaymakers visiting Complainant’s theme park. He submits that he still intends to proceed with that project and has parked the domain name for the present.
In view of the fact
that Respondent appears to be an Internet domain name reseller with a large
portfolio of domain names, this Panel is of the view that his intentions in
registering the domain name were of a commercial nature. On the balance of probabilities the domain
name at issue was registered to take predatory commercial advantage of
Complainant’s rights and goodwill in the
On the balance of probabilities Respondent’s use of the domain name at issue must inevitably divert Internet users wishing to access Complainant’s business activities.
Since the decision of the learned panel in Telstra Corp. Ltd. v. Nuclear Marshmallows D2000 0003 (WIPO Feb. 18, 2000) panels have accepted that inactive use of a domain name can be an indicator of bad faith registration and use.
It is not necessary to decide whether Respondent is generating an income from the parked domain name. Complainant’s submissions that Respondent is generating revenue from the parking site is unsupported by evidence but on the balance of probabilities Respondent registered the domain name in dispute in the knowledge that it bore a confusing similarity with Complainant’s trademarks and with the intention of putting it to a commercial use.
In reaching the conclusion that Respondent registered and is using the domain name in bad faith, this Panel takes note that Respondent has admitted to having registered a number of domain names incorporating third party trademarks. The domain names identified by Complainant in this regard incorporate well known and distinctive third party trademarks. Respondent has not provided any explanation as to why he has registered said marks.
Complainant has satisfied the third element of the test in the Policy.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <imgoingtodisneyland.com> domain name be TRANSFERRED from Respondent to Complainant.
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