Disney Enterprises, Inc., v. Haichao Xu c/o Dinglijisuanjijishuzixunfuwubu
Claim Number: FA0808001222447
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 <disneyit.com>, registered with Xin Net Technology Corporation.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 27, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 28, 2008. The Complaint was submitted in both Chinese and English.
On September 8, 2008, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <disneyit.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 September 22, 2008, a Chinese language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 13, 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@disneyit.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 20, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <disneyit.com> domain name is confusingly similar to Complainant’s DISNEY mark.
2. Respondent does not have any rights or legitimate interests in the <disneyit.com> domain name.
3. Respondent registered and used the <disneyit.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Disney Enterprises, Inc., is famous across the world for its entertainment services. It owns hundreds of registrations of the DISNEY mark in numerous jurisdictions including with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,162,727 issued July 28, 1981).
Respondent’s <disneyit.com> domain name was registered on August 20, 2006 and currently resolves to a commercial website offering goods and services for sale. After receiving a cease-and-desist letter from Complainant, Respondent offered to sell the disputed domain name for US $14,500.00.
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 sufficiently established rights in the
DISNEY mark through registration with the USPTO pursuant to Policy ¶
4(a)(i). See Disney Enters., Inc. v.
Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the
complainant’s registration of the DISNEY trademark with the USPTO prior to the
respondent’s registration of the disputed domain name is sufficient to prove
that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct.
25, 2006) (finding that the complainant had established rights in the BLOOMBERG
mark through registration with the United States Patent and Trademark Office).
The <disneyit.com> domain name contains
Complainant’s DISNEY mark in its entirety followed by the abbreviation “it,”
which stands for “information technology,” a type of service offered within Complainant’s
company. The inclusion of a term that
has an obvious relationship to Complainant’s business will not differentiate
the disputed domain name. The disputed domain name also incorporates the
generic top-level domain (“gTLD”) “.com.” However, this is irrelevant to a
Policy ¶ 4(a)(i) analysis. For these
reasons, the Panel finds that Respondent’s <disneyit.com>
domain name is confusingly similar to Complainant’s DISNEY mark pursuant to
Policy ¶ 4(a)(i). See Disney Enters. Inc. v. McSherry, FA 154589 (Nat.
Arb. Forum June 17, 2003) (finding the
<disneyvacationvillas.com> domain name to be confusingly similar to
Complainant’s DISNEY mark because it incorporated Complainant’s entire famous
mark and merely added two terms to it); see
also Space Imaging LLC v. Brownell,
AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the
respondent’s domain name combines the complainant’s mark with a generic term
that has an obvious relationship to the complainant’s business); see also Reese v. Morgan, FA 917029
(Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic
top-level domain “.com” is insufficient to differentiate a disputed domain name
from a mark).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Before the Panel can proceed under Policy ¶ 4(a)(ii),
Complainant must demonstrate a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name. The Panel finds
that this threshold has been met and accordingly the burden is shifted upon
Respondent to prove that it does have rights or legitimate interests in the
disputed domain name. See VeriSign Inc. v. VeneSign
No response has been filed in this case. Therefore, the Panel may presume that
Respondent lacks rights and legitimate interests in the disputed domain
name. Nonetheless, the Panel will
proceed to consider the elements listed under Policy ¶ 4(c) in examination of
the record. See
Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the
Complaint functions as an implicit admission that [Respondent] lacks rights and
legitimate interests in the disputed domain name. It also allows the Panel to accept all
reasonable allegations set forth…as true.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec.
21, 2000) (finding that failing to respond allows a presumption that the
complainant’s allegations are true unless clearly contradicted by the
evidence).
Respondent is identified in the WHOIS information for the
disputed domain name as “Haichao Xu c/o Dinglijisuanjijishuzixunfuwubu.” This provides no indication that Respondent
is or ever was commonly known by the disputed domain name. Further, Complainant states that it has at no
time authorized or otherwise granted permission to Respondent to use its DISNEY
mark in any way. Without any additional
information, the Panel finds that Respondent is not commonly known by the <disneyit.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Braun Corp. v. Loney, FA 699652
(Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not
commonly known by the disputed domain names where the WHOIS information, as
well as all other information in the record, gave no indication that the
respondent was commonly known by the disputed domain names, and the complainant
had not authorized the respondent to register a domain name containing its
registered mark); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David
Sanders.’ Given the WHOIS domain name
registration information, Respondent is not commonly known by the
[<awvacations.com>] domain name.”).
Respondent’s <disneyit.com> domain name
resolves to a commercial website offering a variety of goods and services for
sale unrelated to Complainant. The Panel
finds that Respondent is trying to profit off of the goodwill and fame
associated with Complainant’s mark, and accordingly finds that this 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 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.”); see also U.S.
Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that the respondent’s use of the
complainant’s mark and the goodwill surrounding that mark as a means of
attracting Internet users to an unrelated business was not a bona fide offering of goods or services); see also Wells Fargo & Co. v.
Nadim, FA 127720 (Nat. Arb. Forum Nov. 29, 2002) (finding that the
respondent’s use of the complainant’s WELLS FARGO mark to redirect Internet users
to a domain name featuring magazine subscriptions was neither a bona fide
offering of goods or services nor a legitimate noncommercial or fair use of the
domain name).
After Complainant sent a cease-and-desist letter to
Respondent, Respondent replied offering to sell the disputed domain name for US
$14,500.00. The Panel considers this to
be further evidence that Respondent lacks rights and legitimate interests in
the <disneyit.com> domain name pursuant to Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that
a respondent’s willingness to sell a domain name to the complainant suggests
that a respondent has no rights or legitimate interests in that domain name
under Policy ¶ 4(a)(ii)); see also Vance
Int’l, Inc. v. Abend, FA 970871
(Nat. Arb. Forum June 8, 2007) (“An attempt by a respondent to sell a domain
name to a complainant who owns a trademark with which the domain name is
confusingly similar for an amount in excess of out-of-pocket costs has been
held to demonstrate a lack of legitimate rights or interests.”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has offered to sell the disputed domain name to
Complainant for US $14,500.00, which is in considerable excess of the
out-of-pocket expense in registering the disputed domain name. The Panel finds that Respondent’s willingness
to dispose of its rights in the disputed domain name demonstrates that
Respondent registered and is using the <disneyit.com> domain name
in bad faith pursuant to Policy ¶ 4(b)(i).
See George
Weston Bakeries Inc. v. McBroom, FA
933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent
registered and was using the <gwbakeries.mobi> domain name in bad faith
according to Policy ¶ 4(b)(i) where it offered it for sale for far more than
its estimated out-of-pocket costs it incurred in initially registering the
disputed domain name); see also Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5,
2003) (“Respondent registered the disputed domain name and offered to sell it
to Complainant for $10,600. This demonstrates bad faith registration and
use pursuant to Policy ¶ 4(b)(i).”).
Furthermore, the disputed domain name resolves to Respondent’s
commercial website, where a variety of goods and services unrelated to
Complainant are offered for sale. The
Panel finds that this is evidence that Respondent has registered and is using
the disputed domain name in an attempt to profit from the goodwill surrounding
Complainant’s DISNEY mark. The Panel
determines that this is additional evidence of Respondent’s bad faith
registration and use of the <disneyit.com> domain name pursuant to
Policy ¶ 4(b)(iv).
See 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); see also Carey Int’l, Inc. v. Kogan, FA
486191 (Nat. Arb. Forum July 29, 2005) (“[T]he Panel finds that Respondent is
capitalizing on the confusing similarity of its domain names to benefit from
the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent
registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”).
The Panel concludes that Complainant has satisfied 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 <disneyit.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: October 31, 2008
NATIONAL ARBITRATION FORUM