Disney Enterprises, Inc. v. HB Concepts LLC
Claim Number: FA0901001241904
Complainant is Disney Enterprises, Inc. (“Complainant”), represented by J.
Andrew Coombs, of J. Andrew Coombs,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <disneyworld-rental-home.com>, registered with Network Solutions, 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.
Jeffrey M. Samuels, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 8, 2009; the National Arbitration Forum received a hard copy of the Complaint on January 9, 2009.
On January 9, 2009, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <disneyworld-rental-home.com> domain name is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 January 12, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 2, 2009 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 and determined to be complete on January 28, 2009.
An Additional Submission was received from Complainant on February 2, 2009 and found to be timely and complete pursuant to the National Arbitration Forum’s Supplemental Rule 7.
An Additional Submission was received from Respondent on February 2, 2009 and found to be timely and complete pursuant to the National Arbitration Forum’s Supplemental Rule 7.
On February 4, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant Disney Enterprises is a worldwide producer of children’s
entertainment goods and services, such as movies, TV programs, books, and
merchandise. Disney also owns and operates
theme parks in several countries, including the Walt Disney World theme park in
Disney contends that the disputed domain name <disneyworld-rental-home.com> is confusingly similar to its
marks because it incorporates Disney’s registered mark DISNEY WORLD® in its
entirety with only the minor addition of the generic phrase “-rental-home” and
the required “.com” top-level indicator.
Disney further contends that its marks “are so widely accepted in the
mind of the general public that the marks have become unquestionably famous and
distinctive and have acquired secondary meaning and distinctiveness throughout
Complainant maintains that Respondent has no rights or legitimate interests in the disputed domain name. Disney contends that Respondent is not authorized by Complainant to use the domain name. It also argues that Respondent’s use of the domain name does not constitute a bona fide offering of goods or services and that Respondent is not commonly known by the domain name. According to Complainant, “[g]iven the distinctiveness and fame of [its] Trademarks, specifically, there is no plausible explanation for the Respondent’s registration of the Domain Name other than to trade upon the goodwill the Complainant has developed in its marks.”
With respect to the issue of “bad faith” registration and use, Disney indicates that its marks are so internationally distinctive and famous that Respondent must have had actual knowledge of the marks prior to registering the disputed domain name. Disney further argues that by registering the domain name with actual knowledge of Complainant’s marks, Respondent acted in bad faith by breaching its service agreement with the registrar because Respondent falsely represented that the registration does not “infringe the legal rights of a third party.”
Disney also maintains that Respondent’s registration and use of the domain name meets the bad faith elements set forth in paragraph 4(b)(iv) of the Policy “because Respondent is intentionally using the Domain Name to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website, while offering non-Disney services through the website.” Disney notes that the disputed domain name, which was registered in August 2001, is used in connection with a commercial website that offers property near Complainant’s Florida theme park for vacation rental and that Disney owns marks registered and used in connection with real estate.
Finally, Disney maintains that Respondent evidences bad faith in its failure to cease and desist from wrongful use of the domain name after being notified by Complainant of the unauthorized use. See Complaint, Exhibit H, page 58.
In its Response, Respondent HB Concepts notes that it has registered and operated a rental home website from the domain name in question for nearly ten years and, during this period, no one has confused Respondent with Complainant. Respondent contends that Disney does not operate single family homes for short-term rental; “hence there can be no confusion as to the affiliation of the domain name and its use.” Respondent also notes that it now incorporates a disclaimer on its site indicating that it is not affiliated with Disney in any way.
According to Respondent, it is clear that the house it rents is a
single family home and is not located on Disney property, although, Respondent
notes, it is located within one mile of the Disney property in
Respondent argues that the area of central
Respondent asserts that it has never sought to sell the domain name for profit, although it admits that it did offer to sell the domain name to Disney, provided Disney compensated Respondent for the advertising dollars expended for the coming year and certain other costs which, in the aggregate, were estimated to be less than $1,000. Instead, according to Respondent, Disney offered only $99.95. Respondent indicates that if Disney is unwilling to compensate Respondent in the amount desired, Respondent will offer to cede the use of the domain name to Disney at the end of the 2009 advertising cycle.
C. Additional Submissions
In its Additional Submission, Disney contends that the presence of a disclaimer on Respondent’s site does not dispel confusion. It also points to numerous ICANN panel decisions that have rejected the contention that the term “Disney World” refers to the general area surrounding the Walt Disney World theme park.
In response to Respondent’s assertion that Complainant is not in the business of renting single family homes, Complainant notes that it is involved in the business of renting accommodations in the same general area of Respondent’s home and, thus, that the parties are competitors.
In its Additional Submission, Respondent takes issue with Complainant’s contention that Respondent admits that it selected the domain name in order to be associated with Complainant’s theme parks. The name was selected, Respondent asserts, only to represent that it is located in proximity to the Disney World theme park.
The Panel finds that: (1) the disputed domain name in confusingly similar to a mark in which Complainant has rights; (2) Respondent has no rights or legitimate interests in the domain name; and (3) the domain name was registered and is being used in bad faith.
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.
The Panel rules that the disputed domain name <disneyworld-rental-home.com> is confusingly similar to Complainant’s DISNEY®-related marks, including, in particular, DISNEY WORLD®. The domain name incorporates in full the DISNEY WORLD® mark. The addition of such a non-distinctive term as “rental-home” and of the top-level domain “.com” does not detract from the confusing similarity between the mark and the domain name.
Neither does the inclusion on Respondent’s site of a disclaimer stating that “disneyworld-rental-home.com is NOT affiliated with The Walt Disney Company in any way.” See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of a complainant’s well-known trademark, does not counter the expectation of internet users that the domain name is sponsored by complainant.).
The Panel further determines that Complainant has rights in DISNEY®-formative marks. Such rights are evidenced by Complainant’s longstanding use of, and registrations for, such marks.
The Panel concludes that Complainant has sustained its burden of establishing that Respondent has no rights or legitimate interests in the subject domain name.
Respondent’s principal contention appears to
be that it uses the term “disneyworld” fairly to describe the geographic
location in central
The Panel concludes that the domain name was registered and is being used in bad faith. The Panel finds that Respondent is intentionally using the domain name to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website and of the services offered at such site, within the meaning of paragraph 4(b)(iv) of the Policy. As noted above, the domain name and the DISNEY WORLD® mark are confusingly similar and both parties are engaged in the rental of lodging accommodations. Under such circumstances, Internet users, upon encountering Respondent’s domain name, would believe that such site contains information regarding the rental of a home at Complainant’s DISNEY WORLD theme park.
The Panel also takes note of the many ICANN panel decisions that, on facts similar to those presented here, have ordered the transfer of the domain name in issue. See, e.g., Disney Enterprises, Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finestdisneyhomes.com ordered transferred); Disney Enterprises, Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (disneyvacationvillas.com ordered transferred); Disney Enterprises, Inc. v. Shanadu Enterprises, Inc., et al., FA 1211219 (Nat. Arb. Forum Aug. 7, 2008) (disneylandhotels.com, hotels-by-disneyland.com, and hotels-nearby-disneyland.com ordered transferred).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <disneyworld-rental-home.com> domain name be TRANSFERRED from Respondent to Complainant.
Jeffrey M. Samuels, Panelist
Dated: February 16, 2009