Disney Enterprises, Inc. v. Proconsult IT SRL
Claim Number: FA0908001280554
Complainant is Disney
Enterprises, Inc. (“Complainant”), represented by J. Andrew Coombs, of J. ANDREW COOMBS, A Professional Corporation,
The domain name at issue is <disneychannel.ro>, registered with Research Institute for Informatics, Romanian National R&D Computer Network RNC.ro.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 19, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 20, 2009. The Complaint was submitted in both Romanian and English.
RNC.ro 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 August 31, 2009, a Romanian language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 21, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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 Romanian 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 <disneychannel.ro> domain name is confusingly similar to Complainant’s DISNEY mark.
2. Respondent does not have any rights or legitimate interests in the <disneychannel.ro> domain name.
3. Respondent registered and used the <disneychannel.ro> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Disney Enterprises, Inc.,
is a worldwide leading producer of children’s entertainment goods and services
such as movies, television programs, books, and merchandise. Complainant has registered its DISNEY mark with
governmental trademark authorities in countries all over the world, including
the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No.
Respondent, Proconsult IT SRL, registered the <disneychannel.ro>
domain name on
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 submits evidence of over one-hundred
registrations for its DISNEY mark with governmental trademark authorities
throughout the world, including the USPTO (e.g., Reg. No. 1,162,727 issued
Complainant contends that Respondent’s <disneychannel.ro>
domain name is confusingly similar to its DISNEY mark under Policy ¶ 4(a)(i). The disputed
domain name incorporates Complainant’s entire DISNEY mark with the addition of
the descriptive term “channel” and the affixation of the Romanian country-code
top-level domain (“ccTLD”) “.ro.” The
degree of confusing similarity is heightened due to the popularity of
Complainant’s cable television station, “The Disney Channel.” The Panel finds that these alterations do not
sufficiently distinguish Respondent’s disputed domain name from Complainant’s
DISNEY mark. Therefore, the Panel
concludes that Respondent’s <disneychannel.ro> domain name is
confusingly similar to Complainant’s DISNEY mark under Policy ¶ 4(a)(i). See 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 See Diners Club Int’l Ltd. v. Weber & Partners Consult SRL,
FA 676676 (Nat. Arb. Forum
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have rights
or legitimate interests in the <disneychannel.ro> domain
name. Once Complainant makes a prima facie case in support of its
allegations, the burden then shifts to Respondent to show it does have rights
or legitimate interests under Policy ¶ 4(a)(ii).
The Panel finds that Complainant has established a prima facie case
pursuant to Policy ¶ 4(a)(ii). See
Respondent’s <disneychannel.ro> domain name
does not resolve to an active website.
Thus, the Panel finds that Respondent’s failure to make any active use
of the disputed domain name over a period of several years does not qualify as
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 under Policy ¶ 4(c)(iii). See Bloomberg
L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum
Furthermore, the pertinent WHOIS information identifies the
registrant of the <disneychannel.ro> domain name as “Proconsult IT
SRL.” There is nothing in the record,
including the WHOIS information, to suggest that Respondent is commonly known
by the disputed domain name. The Panel thus
finds that Respondent is not commonly known by the <disneychannel.ro>
domain name under Policy ¶ 4(c)(ii). See
Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the
respondent was not commonly known by the <lilpunk.com> domain name as
there was no evidence in the record showing that the respondent was commonly
known by that domain name, including the WHOIS information as well as the
complainant’s assertion that it did not authorize or license the respondent’s
use of its mark in a domain name); see
also America W. Airlines,
Inc. v. Paik, FA 206396 (Nat. Arb. Forum
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel notes that the categories of bad faith listed in Policy ¶ 4(a)(iii) are intended to be illustrative, and are not exhaustive. Thus, when conducting a Policy ¶ 4(a)(iii) analysis, the Panel is not limited only to the consideration of the enumerated factors in Policy ¶ 4(b). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
Respondent’s <disneychannel.ro> domain name,
which was registered on
The Panel finds 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 <disneychannel.ro> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 9, 2009
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