Disney Enterprises, Inc. v. E M
Claim Number: FA0810001228659
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 <disneyshoping.com>, registered with Godaddy.com, Inc.
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 October 9, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 10, 2008.
On October 10, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <disneyshoping.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.Com, 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 October
15, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
November 4, 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@disneyshoping.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 10, 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 holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”) containing the DISNEY mark (including Reg. No. 1,162,727, issued July 28, 1981).
The DISNEY trademark is internationally recognized as being associated with Complainant, which sells goods and services that include children’s toys, movies, clothes, and amusement parks.
Respondent registered the <disneyshoping.com> domain name on September 28, 2005, well after the DISNEY mark had become a household name and a registered mark.
The disputed domain name does not currently resolve to an active website.
Respondent’s <disneyshoping.com> domain name is confusingly similar to Complainant’s DISNEY mark.
Respondent’s domain name is a misspelled version of Complainant’s registered domain name <disneyshopping.com>.
Respondent does not have any rights to or legitimate interests in the domain name <disneyshoping.com>.
Respondent registered and uses the <disneyshoping.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 trademark 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 has registered the DISNEY trademark with the appropriate national authority. It has thus established rights in the mark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003): “Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”
The disputed domain name wholly incorporates Complainant’s mark and merely adds a misspelled generic term related to Complainant’s business (“shoping”) and the generic top-level domain (“gTLD”) “.com.” Additionally, it appears that Respondent’s domain name is a misspelled version of Complainant’s registered <disneyshopping.com> domain name. Accordingly, Respondent’s domain name is confusingly similar to Complainant’s mark. 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 Arthur Guinness Son & Co. (
Further see Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003):
It
has been established that the addition of a generic top-level domain is
irrelevant when considering whether a domain name is identical or confusingly
similar under the Policy.
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights to or legitimate interests in the <disneyshoping.com> domain name. Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007):
Complainant
must first make a prima facie case
that Respondent lacks rights and legitimate interests in the disputed domain
name under Policy ¶ 4(a)(ii), and then the burden
shifts to Respondent to show it does have rights or legitimate interests.
See also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum
Aug. 18, 2006) (holding that a complainant must first make out a prima facie
case that a respondent lacks rights to or legitimate interests in a disputed
domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent
to show that it does have such rights or interests).
Complainant has established a prima facie case under this heading. Respondent’s failure to respond to the Complaint means that the Panel may presume that Respondent does not have rights to or legitimate interests in the disputed domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where a respondent fails to respond); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no right or interest was immediately apparent to the panel and a respondent did not come forward to suggest any right or interest it may have possessed).
However, we will nonetheless analyze the record before us to determine if there is any basis for concluding that Respondent has rights or interests in the disputed domain name cognizable under the Policy.
We begin by observing that Complainant alleges, and
Respondent does not deny, that Respondent’s domain name does not currently
resolve to an active webpage.
Respondent’s inactive use of the disputed domain name is evidence that its
domain name is not a being used in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the
domain name pursuant to Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13,
2000) (finding no rights or legitimate interests where a respondent failed to
submit a response to a complaint and made no use of the domain name there in issue);
see also AT&T Corp. v. Domains by
Brian Evans, D2000-0790 (WIPO Sept. 27, 2000) (finding no rights or legitimate
interests where a respondent did not provide any documentation of the existence
of its alleged company that might show what the company’s business was, or how
the company’s years of existence, if it ever existed, might mesh with a
complainant’s trademark claims).
We also note that Respondent’s
WHOIS registration shows that Respondent is not commonly known by the disputed
domain name <disneyshoping.com>. Rather the registrant is listed merely as “E
M.” On this record, Respondent cannot be
said to be commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb.
10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” is a factor in determining that Policy ¶ 4(c)(ii)
does not apply); 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.”
The Panel thus finds that Policy ¶
4(a)(ii) has been satisfied.
Respondent’s inactive use of the disputed domain name evidences bad faith registration and use of the domain pursuant to Policy ¶ 4(a)(iii). See 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 requirement of paragraph 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
In addition, it appears that Respondent registered the <disneyshoping.com>
domain name with at least constructive knowledge
of Complainant’s rights in the DISNEY trademark 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 <disneyshoping.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 24, 2008
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