Disney Enterprises, Inc. v.
HB Concepts LLC
Claim Number: FA0901001241904
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@disneyworld-rental-home.com
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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
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
the
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.
B. Respondent
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.
FINDINGS
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.
DISCUSSION
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).
DECISION
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