Disney Enterprises, Inc. v. Lorna Kang
Claim Number: FA0209000125375
Complainant is Disney Enterprises, Inc., Burbank, CA, USA (“Complainant”) represented by J. Andrew Coombs, of J. Andrew Coombs, A Professional Corporation. Respondent is Lorna Kang, Perak, MALAYSIA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <disneylandhotel.com>, registered with Dotregistrar.com.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 19, 2002; the Forum received a hard copy of the Complaint on September 23, 2002.
On September 24, 2002, Dotregistrar.com confirmed by e-mail to the Forum that the domain name <disneylandhotel.com> is registered with Dotregistrar.com and that Respondent is the current registrant of the name. Dotregistrar.com has verified that Respondent is bound by the Dotregistrar.com 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 27, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October, 15 2002 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 email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On September 19, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 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.
1. Respondent’s <disneylandhotel.com> domain name is confusingly similar to Complainant’s registered disney and DISNEYLAND marks.
2. Respondent does not have rights to or legitimate interests in the <disneylandhotel.com> domain name.
3. Respondent registered and used the <disneylandhotel.com> domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of numerous marks incorporating DISNEY. Both DISNEY and DISNEYLAND are registered with the United States Patent and Trademark Office (“USTPO”) on the Principle Register. Moreover, the DISNEY and other DISNEY-formative marks are registered in several other countries, including Malaysia, where the Respondent is listed as residing. Since Complainant’s inception in 1923, Complainant or its predecessors in interest, has continuously used and applied the DISNEY and subsequent DISNEYLAND mark continuously and has not given authorization either expressly or implied to Respondent.
Complainant is world renown for being a provider of a multitude of goods and services. Since Complainant’s early beginnings in 1923, it has expanded to an international business enterprise in the production and marketing of numerous goods and services. Over the past eight decades, Complainant has marketed and expanded its worldwide recognition to a point where the name DISNEY has become unquestionably distinctive.
Complainant also maintains the domain names <disney.com> and <disneyland.com>. These websites promote its products and services as well as the Disneyland amusement park. Both of these websites were registered prior to the registration of <disneylandhotel.com> on March 24, 2002.
Respondent’s domain name resolves to a pop-up screen that appears and states, “CONGRATULATIONS!!! YOU’VE WON VIRTUAL REALITY CASINO! Click on OK and get up to +100$ Bonus on your first deposit!” If a consumer clicks on “OK”, they are directed to <super-casino.com>, an online gambling site. However, if one chooses to click “CANCEL”, then they are directed to <vipfares.com>, an online travel service which offers hotels, flights and car rentals to various travel destinations.
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 the 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.
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 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.
Identical and/or Confusingly Similar
Complainant has established rights in the DISNEY and DISNEYLAND marks through registration with the USTPO and subsequent continuous use of the marks.
Respondent’s <disneylandhotel.com> is confusingly similar to Complainant’s DISNEY and DISNEYLAND marks. Respondent incorporates Complainant’s entire mark in its domain name. Given the fame and international recognition of Complainant’s mark, the mere addition of the generic word “hotel” is not adequate to create a distinct and unique domain name that is not confusingly similar. The mere addition of generic terms that refer to the business in which Complainant is associated with does not create a distinctive and dissimilar connotation. Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark); Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has thus been satisfied.
Rights or Legitimate Interests
Respondent has not submitted a reply to Complainant’s allegations, thereby permitting the Panel to conclude that all reasonable inferences made by Complainant are true and accurate unless there is evidence that is clearly contradictory. Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence). There is no evidence that contradicts the allegations of Complainant. Complainant has presented evidence that substantiates its claim that Respondent has no legitimate rights or interests in the contested domain name.
Respondent deliberately registered the disputed domain name to capitalize on Complainant’s commonly known mark. Moreover, it used Complainant’s mark to divert Internet consumers to either a gambling site or a travel site. There are no rights or legitimate interests when one tries to benefit from the unauthorized use of another’s mark by diverting Internet traffic to other websites pursuant to Policy ¶ 4(c)(i) and 4(c)(iii). Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).
There has been no evidence submitted to indicate that Respondent has a substantial affiliation with, or is known by the <disneylandhotel.com> name. On the other hand, Complainant has established itself as the sole possessor of all legitimate rights and interests in the name DISNEY and DISNEYLAND. Since Respondent has not come forward with a viable alternative rationalization for its use of the registered mark of Complainant, and uses a confusingly similar domain name to direct users to another site, it can be deduced that Respondent has no rights to the domain name according to Policy ¶ 4(c)(ii). Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question); Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has thus been satisfied.
Registration and Use in Bad Faith
Respondent has registered and is using the disputed domain name in bad faith. Complainant’s registered mark of DISNEY is registered in Malaysia, Respondent’s place of domicile. Respondent was placed on constructive notice by virtue of registration of Complainant’s mark with the Malaysian trademark authorities. Respondent’s registration of the disputed domain name thereafter, containing Complainant’s mark, is an indication of bad faith registration. Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith). Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072)
Complainant asserts a claim of bad faith under Policy ¶ 4(b)(i), arguing that Respondent registered the domain name primarily to sell, rent, or otherwise transfer it for valuable consideration in excess of Respondent’s out of pocket expenses (emphasis added). Essentially, Complainant reasons that by directly diverting Internet users to another website for profit, Respondent is “renting” the domain name. Although the Panel is permitted to conclude all uncontested reasonable assertions made by Complainant, there is not enough factual evidence to sustain an inquiry into this legal argument. Therefore, the Panel chooses to remain sub silentio on this issue, at this time, while concentrating on the other more persuasive legal arguments presented by Complainant.
As stated previously, Complainant is a well-known international business enterprise and its name and service marks are renown through extensive marketing and advertising. Respondent has capitalized on Complainant’s marks as well as reputation by registering and using domain names so similar to the registered marks. According to Policy ¶ 4(b)(iv), evidence of bad faith registration and use is shown when registration of a domain name occurs in order to utilize another’s well known reputation by attracting Internet users to a website, for commercial gain. Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has thus been satisfied.
Having established all three elements required under the ICANN Policy, the Panel hereby concludes that the requested relief shall be GRANTED.
Accordingly, it is ordered that the domain name <disneylandhotel.com> be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: November 18, 2002
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