Disney Enterprises, Inc. v. Domain Mgr Trs Service c/o Vicky Laster
Claim Number: FA0911001292653
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 <disneychannnel.com>, registered with Enom373 Incorporated.
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.
Hon. Karl V. Fink (Ret) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 2, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 4, 2009.
On November 3, 2009, Enom373 Incorporated confirmed by e-mail to the National Arbitration Forum that the <disneychannnel.com> domain name is registered with Enom373 Incorporated and that Respondent is the current registrant of the name. Enom373 Incorporated has verified that Respondent is bound by the Enom373 Incorporated 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 November 9, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 29, 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@disneychannnel.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 4, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret) as Panelist.
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:
1. Respondent’s <disneychannnel.com> domain name is confusingly similar to Complainant’s THE DISNEY CHANNEL mark.
2. Respondent does not have any rights or legitimate interests in the <disneychannnel.com> domain name.
3. Respondent registered and used the <disneychannnel.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Disney Enterprises, Inc., produces children’s entertainment goods and services such as movies, television programs, books, and merchandise. Complainant also owns and operates a cable television station called “The Disney Channel.” Complainant uses the THE DISNEY CHANNEL mark to market its cable television station. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its THE DISNEY CHANNEL mark (Reg. No. 1,343,334 issued June 18, 1985).
Respondent registered the <disneychannnel.com> domain name on June 4, 2009. The disputed domain name resolves to a website featuring hyperlinks to Complainant and Complainant’s competitors in the children’s entertainment goods and services business.
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 has registered the THE DISNEY CHANNEL mark with the USPTO (Reg. No. 1,343,334 issued June 18, 1985). The Panel finds that Complainant has established rights in the THE DISNEY CHANNEL mark pursuant to Policy ¶ 4(a)(i) through its USPTO registration. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”).
Complainant alleges Respondent’s <disneychannnel.com>
domain name is confusingly similar to Complainant’s THE DISNEY CHANNEL
mark. The disputed domain name removes
the term “the” from Complainant’s mark, misspells the term “channel” in
Complainant’s mark, and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds the removal of a term,
misspelling a term, and the addition of a gTLD fail to adequately distinguish
the disputed domain name from Complainant’s mark. See Am.
Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005)
(finding the <americaneaglestores.com> domain name to be confusingly
similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark); see also Marriott
Int'l, Inc. v. Seocho, FA 149187 (Nat.
Arb. Forum Apr. 28, 2003) (finding that the respondent's
<marrriott.com> domain name was confusingly similar to the complainant's
MARRIOTT mark); see also Jerry Damson,
Inc. v.
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or legitimate interests in the <disneychannnel.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”).
Complainant asserts that Respondent is not authorized to use the THE DISNEY CHANNEL mark. Respondent failed to offer evidence, and there is no evidence on the record, showing Respondent is commonly known by the <disneychannnel.com> domain name. The WHOIS information identifies the domain name registrant as “Domain Mgr Trs Service c/o Vicky Laster.” Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
The disputed domain name resolves to a website featuring hyperlinks to Complainant and Complainant’s competitors in the children’s entertainment goods and services business.
Respondent uses the <disneychannnel.com> domain name to resolve to a website featuring links to Complainant and products and services that compete with Complainant in the children’s entertainment goods and services business. Respondent likely receives click through fees. The Panel finds Respondent’s use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s <disneychannnel.com> domain name resolves to a website featuring links to services and products competing with Complainant’s children’s entertainment goods and services business. Internet users may purchase products from Complainant’s competitors instead of from Complainant because of Respondent’s confusingly similar disputed domain name. The Panel finds this use of a disputed domain name, that is confusingly similar to Complainant’s THE DISNEY CHANNEL mark, disrupts Complainant’s children’s entertainment goods and services business, which evidences bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
The Panel presumes Respondent receives click-through fees for the use of the disputed domain name to redirect Internet users interested in Complainant to Respondent’s website containing links to competing products and services. Respondent is attempting to profit by creating a likelihood of confusion as to Complainant’s affiliation with the resolving website. Therefore, the Panel finds Respondent’s use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
The Panel finds ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <disneychannnel.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret), Panelist
Dated: December 18, 2009
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