National Arbitration Forum

 

DECISION

 

Disney Enterprises, Inc. v. Take Stage

Claim Number: FA1003001310568

 

PARTIES

Complainant is Disney Enterprises, Inc. (“Complainant”), represented by J. Andrew Coombs, of J. Andrew Coombs, A Professional Corporation, California, USA.  Respondent is Take Stage (“Respondent”), California, USA.

 

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <disneysworldofcolor.com>, registered with Godaddy.com, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Flip Petillion as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 26, 2010; the National Arbitration Forum received a hard copy of the Complaint on March 2, 2010.

 

On March 1, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <disneysworldofcolor.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name.  Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 March 3, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 23, 2010 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@disneysworldofcolor.com by e-mail.

 

A timely Response was received and determined to be complete on March 23, 2010.

 

A timely Additional Submission from Complainant was received on March 29, 2010.

 

On April 6, 2010, a timely Additional Submission from Respondent was received.

 

On March 30, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Flip Petillion as Panelist.

 

RELIEF SOUGHT

Complainant requests that the disputed domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

Complainant contends that the disputed domain name is confusingly similar to its famous, long-standing and widely registered trademarks, as the disputed domain name fully incorporates a trademark in which Complainant claims to have rights. Complainant further claims that Respondent has no rights or legitimate interest in respect of the disputed domain name. According to Complainant, Respondent has not used the disputed domain name in connection with a bona fide offering of services or a legitimate non-commercial use. Also, Respondent has not been commonly known by the disputed domain name, according to Complainant. Finally, Complainant considers that the disputed domain name was registered and being used in bad faith.

 

In its additional submission, Complainant contends that Respondent admits that he was aware of the trademarks and specifically chose the disputed domain name in order to be associated with Complainant's intended water show at Disneyland.

 

Complainant further contends that the current use by the Respondent of the disputed domain name is of no relevance, but that the inactivity of the disputed domain name for over a year shows a lack of legitimate interest in the disputed domain name.

 

Finally, Complainant contends that Respondent’s admittance that it was aware of the trademarks as well as of Complainant’s announcement and intention to create a light show at its Disneyland theme park called "World of Color" evidence bad faith registration.  Complainant further claims that Respondent's argument that he included the notation that the website is "unofficial" and features a disclaimer does not aid in negating his bad faith.

 

B. Respondent

 

Respondent does not deny or challenge Complainant’s rights to its mark and contends that it used a similar name in order to maximize the opportunity to contact other fans. Respondent believes that its use of the disputed domain name benefits the Complainant.

 

Respondent further contends that it had a legitimate interest in the disputed domain name as it was in the process of preparing a fan site when it received a cease and desist notice from Complainant. Respondent also contends that it launched the fan site prematurely so it could prove a bona fide offering in good faith.

 

Finally, Respondent considers that the disputed domain name was not registered or used in bad faith as it claims that its website is profit-free and not commercial. Respondent also claims that it did not seek to disrupt the business of Complainant and that it has never and would never use the disputed domain name for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark of Complainant.

 

In its additional submission, Respondent contends that the purpose of the UDRP is not to prevent registrants from incorporating third parties’ trademarks into their domain names or even questionable cases of cyber squatting. Respondent claims that the Policy is only intended to combat abusive, bad faith cyber squatting. According to Respondent, there is no chance that internet users would be confused that its unofficial fan site is connected to Complainant.

 

Respondent further contends that the disputed domain name was only inactive for a short period of time, during which it was linked to a parked page containing ads outside of Respondent’s control. Respondent contends that he has never financially gained from the website.

 

Respondent also contends that he did not disrupt Complainant’s business or confused internet users as internet users will have no problem finding Complainant’s sites dedicated to the “Disney’s World of Color” show, using Google or Yahoo!.

 

Respondent finally claims to have been cooperative throughout this process and has not evidenced bad faith in registration or use and has not intention to do so.

 

FINDINGS

Complainant is a worldwide leading producer of children’s entertainment goods and services such as movies, television programs, books and merchandise. Complainant also owns and operates theme parks in several countries. In October 2007 and July 2009, Complainant’s plans to start a water show, called “World of Color” in its California Adventure theme park was announced in press articles.

 

Complainant is the holder of the DISNEY trademark, registered with the United States Patent and Trademark Office (Reg. No. 1,162,727 issued on July 28, 1981). This trademark is a world-wide well-known and famous trademark.

 

It is stated in the WHOIS records that the disputed domain name <disneysworldofcolor.com> was registered on 3 February 2009. The disputed domain name was registered on that date by Respondent.

 

The disputed domain name was first used as a parking page with commercial links in the period between the registration on February 3, 2009 and March 26, 2009.

 

As of February 3, 2010, the disputed domain name resolved to an inactive FTP site which linked to files not approved or licensed by the Complainant. Subsequent to Respondent’s receipt of cease and desist letters from Complainant, Respondent changed the webpage to which the disputed domain name resolved to a generic blog site without content. Afterwards, Respondent changed the website into a fan-site with content.

 

On February 26, 2010, Complainant submitted a Complaint to the National Arbitration Forum and asked for the transfer of the disputed domain name.

 

 

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.

 

Identical and/or Confusingly Similar

 

Complainant argues that it has rights in various DISNEY trademarks and shows to have rights in the DISNEY trademark by virtue of its trademark registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,162,727 issued July 28, 1981).  According to the Panel this trademark registration with the USPTO is sufficient to establish Complainant’s rights in the DISNEY trademark.  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).

 

Moreover, the DISNEY trademark is a is a world-wide well-known and famous trademark

 

Complainant alleges that Respondent’s <disneysworldofcolor.com> disputed domain name is confusingly similar to Complainant’s DISNEY trademark because Respondent’s disputed domain name incorporates Complainant’s DISNEY trademark, adding only an “s” to DISNEY, the descriptive terms “world of color” (referring to Complainant’s nighttime water show and or Complainant’s ), and the generic top-level domain (“gTLD”) “.com” to differentiate the two.  According to the Panel, adding an “s” and descriptive terms to Complainant’s mark are insufficient to distinguish the disputed domain name from Complainant’s mark.  See Disney Enterprises Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, D2001-0489 (WIPO June 19, 2001) (finding the <disneychanel.com>, <disneywallpaper.com>, <disneywold.com>, <disneywolrd.com>, <disneyworl.com> and <walddisney.com> domain names to be confusingly similar to the DISNEY trademark);  see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)).  Moreover, a gTLD is generally considered irrelevant to a Policy ¶ 4(a)(i) analysis.  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).   Accordingly, the Panel finds that Respondent’s disputed domain name <disneysworldofcolor.com> is confusingly similar to Complainant’s world-wide well-known and famous DISNEY trademark under Policy ¶ 4(a)(i).

 

 

Rights or Legitimate Interests

 

It is established case law that it is sufficient for the Complainant to make a prima facie showing that Respondent has no right or legitimate interest in the disputed domain name under Policy ¶ 4(a)(ii) in order to shift the burden of proof to the Respondent. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., D2003-0455 (WIPO August 26, 2003) (“Since it is difficult to prove a negative (i.e. that Respondent lacks any rights or legitimate interests in the mark) – especially where the Respondent, rather than the Complainant, would be best placed to have specific knowledge of such rights or interests – and since Paragraph 4(c) describes how a Respondent can demonstrate rights and legitimate interests, a Complainant’s burden of proof on this element is light. Hence, Complainant must make at least a prima facie showing that Respondent has no rights or legitimate interests in the mark. After Complainant has met its initial burden of proof, if Respondent fails to submit a response Complainant will be deemed to have satisfied Paragraph 4 (a) ii of the Policy.”); See also Belupo d.d. v. WACHEM d.o.o., D2004-0110 (WIPO April 14, 2004) (“While the overall burden of proof is on Complainant, the element of possible rights or legitimate interests of Respondent in the disputed domain name involves Complainant proving matters, which are peculiarly within the knowledge of Respondent. It involves the Complainant in the often impossible task of proving the negative. This should be approached as follows: Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, Respondent has no rights to the name of which he is aware, he has not given any permission to Respondent). Unless the allegation is manifestly misconceived, Respondent has to demonstrate his rights or legitimate interests in respect of the domain name under paragraph 4 (c) of the Policy.”);  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant asserts that Respondent is neither commonly known by the disputed domain name nor authorized to use Complainant’s mark in the disputed domain name.  The WHOIS information for the disputed domain identifies the registrant as “Take Stage,” a name that is not nominally associated with the disputed domain name.  Based on the WHOIS information and the lack of authorization from Complainant, the Panel finds that Respondent is not commonly known by the disputed domain name and accordingly possesses no rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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).

 

In Complainant’s Additional Submission, Complainant argues that Respondent’s disputed domain name initially resolved to a parked website displaying third-party links.  Complainant argues that Respondent was likely receiving compensation from these links in the form of “click-through” fees.  According to the Panel, such a parked website with third-party links is not bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii).  See Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).

 

Complainant contends that Respondent has no rights and legitimate interests in the disputed domain name because Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or 4(c)(iii).  Complainant alleges that Respondent failed to make active use of the disputed domain name between its use of a parked website up until it received Complainant’s cease-and-desist letter, which is evidence of a lack of rights and legitimate interests.  Complainant asserts that the disputed domain name initially resolved to an inactive FTP site without any content.  Subsequent to receiving the cease and desist letters from Complainant, Complainant asserts that Respondent modified the site to display a generic blog without substantive content.  These facts indicate a failure to make an active use of the disputed domain name by Respondent, supporting a conclusion that Respondent is not using the disputed domain name for a purpose in keeping with the requirements of Policy ¶ 4(c)(i) and Policy  ¶ 4(c)(iii) and accordingly has no rights and legitimate interests.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when the respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).”).

 

Respondent alleges it intended to use the disputed domain name to create a website.  However, Respondent’s stated and intended use of the disputed domain name in connection with a fan club website without further evidence of actual use for that purpose or preparations for actual use for that purpose, prior to any notice by the Complainant of the dispute is not sufficient to establish Respondent’s rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) according to the Panel.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when the respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”); see also Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the respondent had no rights or legitimate interests where he decided to develop the website for the sale of wall products after receiving the complainant’s “cease and desist” notice). 

 

In its additional submission, Respondent recognizes that the domain name was used as a parking page with commercial links in the period between the registration on February 3, 2009 and March 26, 2009, but claims that this was out of its control. According to Respondent, the domain name was used as a landing page as of March 26, 2009 until November 22, 2009 through which Respondent collected over 1000 names and email addresses of inter­ested parties.

 

After this period, the Domain Name resolved to an inactive FTP site which linked to files not approved or licensed by the Complainant, as of February 3, 2010.  Subsequent to Respondent’s receipt of cease and desist letters, Respondent changed the webpage to which the Domain Name resolved to a generic blog site without content. Afterwards, Respondent changed the website into a fan-site with content. However, Respondent passively held the website for over a year. According to the Panel, passive holding of the website for over a year evidences a lack of legitimate rights.  See Americor Mortgage, Inc. v. Bowman, FA 93548 (NAF April 22, 2002) (“Respondent's passive holding of the domain name demonstrates a lack of rights and legitimate interests”); See also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that Respondents have not established any rights or legitimate interests in the domain name); See also Bloomberg L.P. v. Sandhu, FA 96261 (NAF Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use disputed domain names in any way); Flor-Jon Films, Inc. v. Larson, FA 94974 (NAF July 25, 2000) (finding that Respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name); Am. Online, Inc. v. Kloszewski, FA 204148 (NAF Dec. 4, 2003) (“Respondent's passive holding of the <aolfact.com> domain name for over six months is evidence that Respondent lacks rights and legitimate interests in the domain name.”).  Respondent cannot claim legitimate rights in the Domain Name by simply putting up a generic blog site with no meaningful content upon notice of Disney’s intent to pursue transfer of this domain name.  See State Farm Mutual Automobile Insurance Company v. Dewey McKay d/b/a PMA Media Group, FA811699 (NAF Nov. 14, 2006) (finding no legitimate use for a blog site, noting “[i]t is easy to set up a web site to create a blog with no content… Without content that has any meaning…, it appears the blog is just being used as a subterfuge to show a bona fide use.  With all due respect, this Panel will not be so easily misled.”); see also Harrah’s License Company, LLC v. Poul Laurent c/o KRC Software Group, Inc., FA1119069 (NAF Jan. 15, 2008) (finding no legitimate use for a blog site); State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (NAF Sept. 27, 2000) (“The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”).

 

 

Registration and Use in Bad Faith

 

Registration in Bad Faith

 

In the instant case, Respondent must have had knowledge of Complainant’s rights in the DISNEY trademark at the moment he registered the disputed domain name, since Complainant’s trademark is a world-wide well-known and famous trademark. Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith at the moment of registration. See Nintendo v. Beijin, D2001-1070 (WIPO November 8, 2001) (finding where the word POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the Complainant suggested opportunistic bad faith); BellSouth Intellectual Property Corporation v. Serena, Axel, D2006-0007 (WIPO February 21, 2006) (finding, where it was held that Respondent acted in bad faith when registering the disputed Domain Name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix suggested knowledge of Complainant’s rights in the trademarks).

 

Since Respondent must have had knowledge of Complainant’s rights in the DISNEY trademark at the moment he registered the disputed Domain Name, and since Respondent had no legitimate interest in the disputed domain name, it is established that the domain name was registered in bad faith.

 

Moreover, the fact that Respondent registered the disputed domain name shortly after the announcement of the opening of Complainant’s new World of Color show indicates opportunistic bad faith on the part of Respondent.  According to the Panel, Respondent’s efforts to benefit from the notoriety of Complainant’s mark and announcements of a new attraction indeed support a conclusion of opportunistic bad faith under Policy ¶ 4(a)(iii).  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”).

 

 

Use in bad faith

 

In its Additional Submission, Complainant asserts Respondent’s disputed domain name previously resolved to a parked website.  This is recognized by Respondent, who claims that the use of the domain name as a parking page in the period from February 3, 2009 and March 26, 2009 was outside of its control.  According to Respondent, the domain name was used as a landing page as of March 26, 2009 until November 22, 2009 through which Respondent collected over 1000 names and email addresses of inter­ested parties.

 

After this period, the Domain Name resolved to an inactive FTP site which linked to files not approved or licensed by the Complainant, as of February 3, 2010.  Subsequent to Respondent’s receipt of cease and desist letters, Respondent changed the webpage to which the Domain Name resolved to a generic blog site without content. Afterwards, Respondent changed the website into a fan-site with content. However, Respondent passively held the website for over a year.

 

According to the Panel, Respondent’s prior use of the disputed domain name to resolve to a parked website is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). Respondent’s use of the disputed domain name to resolve to a landing page through which Respondent collected names and email addresses also evidences bad faith, as the collection of names and email addresses undoubtedly has a commercial value. According to the Panel, Respondent’s use of the domain name to collect names and email through a landing page must be seen as an attempt to attract Internet users to the Respondent’s website resolving from the confusingly similar disputed domain name for commercial gain. As the intentional attempt to attract Internet users for commercial gain to a domain name resolving from a confusingly similar domain name evidences bad faith under Policy ¶ 4(b)(iv), insofar a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on your web site or location is created, the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv).

 

Complainant alleges that Respondent’s intended use of the disputed domain name in connection with a fan site for Complainant’s World of Color show also indicates bad faith registration and use because Respondent admits it was aware of Complainant’s rights in the DISNEY mark and Complainant’s connection with the “World of Color” phrase that refers to Complainant’s new nighttime water show.  Complainant contends that registering the disputed domain name despite Respondent’s knowledge of Complainant’s rights in the mark and in breach of the registrar’s registration agreement is evidence of bad faith, notwithstanding a purpose to operate a fan website, because the disputed domain name creates confusion as to affiliation between Respondent’s disputed domain name and Complainant. According to the Panel, a fan site that uses a domain name that is confusingly similar to a trademark in which a complainant has rights, can indeed create confusion as to affiliation between the disputed domain name and the trademark holder. As a result, a domain name that is linked to a fan site can be registered and used in bad faith according to Policy ¶ 4(a)(iii).  See Harrison v. LOVEARTH.net, FA 97085 (Nat. Arb. Forum June 4, 2001) (“This Panel is persuaded . . . that the greater weight of authority and the better rule is to the effect that ‘fan sites’ . . . do cause confusion as to their source, sponsorship, affiliation, or endorsement vis-à-vis the celebrity.”); see also Spacey v. Alberta Hot Rods, FA 114437 (Nat. Arb. Forum Aug. 1, 2002) (finding bad faith registration and use of the <kevinspacey.com> domain name because the respondent lacked rights and authorization to use the complainant's name, “Kevin Spacey,” and where the respondent pointed the name to an unauthorized fan website). 

 

Respondent argues that he did not seek any likelihood of confusion as to affiliation between the disputed domain name and the trademark holder, as Respondent included the word “unofficial” in its website and a disclaimer. Nevertheless, the inclusion of a disclaimer and/or the word “unofficial” on the resolving website of the disputed domain name does not mitigate a finding of bad faith registration and use according to the Panel.  See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does note mitigate a finding of bad faith under Policy ¶ 4(a)(iii) “); see also Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith.  First, the disclaimer may be ignored or misunderstood by Internet users.  Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions.  Such confusion is a basis for finding a violation of Complainant’s rights.”).

 

Complainant alleges that Respondent’s failed to make active use of the disputed domain name between when it displayed a parked website until after receiving Complainant’s cease-and-desist letter.  The Panel may find that Respondent’s failure to make an active use of the disputed domain name supports a finding of bad faith registration and use according to Policy ¶ 4(a)(iii).  See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use). Regardless of when it was added, a disclaimer or the inclusion of the word “unofficial” does not mitigate confusion between the disputed domain name and Complainant’s mark. The domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she had the opportunity to see the disclaimer or the word “unofficial” See AltaVista Co. v. AltaVisa, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant).

 

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 <disneysworldofcolor.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Flip Petillion, Panelist
Dated: April 14, 2010

 

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