Disney Enterprises, Inc. v. Skylab Interactive, Inc.
Claim Number: FA0808001220435
Complainant is Disney Enterprises, Inc. (“Complainant”), represented by J.
Andrew Coombs, of J. Andrew Coombs, A Professional
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <disneychannelmagazine.com>, registered with 1 & 1 Internet Ag.
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 August 13, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 14, 2008.
On August 15, 2008, 1 & 1 Internet Ag confirmed by e-mail to the National Arbitration Forum that the <disneychannelmagazine.com> domain name is registered with 1 & 1 Internet Ag and that Respondent is the current registrant of the name. 1 & 1 Internet Ag has verified that Respondent is bound by the 1 & 1 Internet Ag 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").
19, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 8, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 14, 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 a worldwide leader in the production of children’s movies, television programs, books, and merchandise.
In addition, Complainant owns and operates a cable television channel called “The Disney Channel.”
Complainant holds numerous registrations for its DISNEY mark and its variations, including the THE DISNEY CHANNEL service mark for which it holds a registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,343,334, issued June 18, 1985).
Complainant also owns a domain registration for the <disneychannel.com> domain.
Respondent registered the <disneychannelmagazine.com> domain name on November 17, 2007.
The disputed domain name does not resolve to an active website.
Respondent’s <disneychannelmagazine.com> domain name is confusingly similar to Complainant’s THE DISNEY CHANNEL mark.
Respondent does not have any rights or legitimate interests in the domain name <disneychannelmagazine.com>.
Respondent registered and uses the <disneychannelmagazine.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to 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 holds a registration of the THE DISNEY CHANNEL service mark with the USTPO. Accordingly, Complainant has sufficiently established rights in the mark pursuant to Policy ¶ 4(a)(i). 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.”
Respondent has merely added the generic term “magazine” to Complainant’s THE DISNEY CHANNEL mark. The addition of this generic term does not distinguish the <disneychannelmagazine.com> domain name from Complainant’s THE DISNEY CHANNEL mark. Accordingly we conclude that the disputed domain name is confusingly similar to the competing mark under Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001):
[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.
See also Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to a complainant’s THE BODY SHOP trademark).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Initially, Complainant must make out a prima facie showing that Respondent lacks rights and legitimate interests in the <disneychannelmagazine.com> domain name. The burden then shifts to Respondent to establish that it nonetheless has rights or legitimate interests in the disputed domain name. 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.
Complainant has sufficiently made out a prima facie showing under Policy ¶ 4(a)(ii). Respondent’s failure to respond to the Complaint entitles us to presume that it has no rights or interests in the disputed domain name sufficient to satisfy the requirements of the Policy. 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 nevertheless examine the record to determine whether there is any basis in the facts before us justify a conclusion that Respondent has such rights or interests.
We begin by observing that Respondent’s WHOIS information does not indicate that Respondent is commonly known by the <disneychannelmagazine.com> domain name and Respondent has not provided any evidence to suggest otherwise. Therefore, we conclude that Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003): “Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.” See also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the proposition that a respondent is commonly known by a domain name, that proposition must be rejected).
We note also that there is no dispute as to Complainant’s allegation to the effect that the disputed domain name does not resolve to any active website, so that Respondent has made no use of the disputed domain name. Such inactive use of the domain name does not establish in Respondent any rights or legitmate interests under Policy ¶ 4(a)(ii). See Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where a respondent made no use of infringing domain names); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003):
[T]he Panel concludes that Respondent's passive [use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).
The Panel thus finds that Policy ¶ 4(a)(ii) has been established.
Respondent does not dispute the assertion that it has made no active use of the disputed <disneychannelmagazine.com> domain name in that the domain does not resolve to any active website. This is evidence of registration and use of the domain in bad faith under Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that a respondent made no active use of a domain name or website that connects with it, and that inactive use of a domain name permits an inference of registration and use in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that a respondent’s inactive use of a domain name satisfies the bad faith requirement of ¶ 4(a)(iii) of the Policy).
In addition, it appears that Respondent registered the <disneychannelmagazine.com> domain name with at least constructive knowledge of Complainant’s rights in the THE DISNEY CHANNEL service mark by virtue of Complainant’s prior registration of that mark 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).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
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 <disneychannelmagazine.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 24, 2008
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