Disney Enterprises, Inc. v. John Johnson
Claim Number: FA1005001324685
Complainant is Disney
Enterprises, Inc. (“Complainant”), represented by J. Andrew Coombs, of J. Andrew Coombs, A Professional
Corporation,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <disneymoviesonline.com>, <bestdisneymovies.com>, <newdisneymovies.com>, <officialdisneymovies.com>, and <thedisneymovies.com>, registered with Godaddy.com, Inc.
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 May 14, 2010.
On May 17, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <disneymoviesonline.com>, <bestdisneymovies.com>, <newdisneymovies.com>, <officialdisneymovies.com>, and <thedisneymovies.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. 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 May 21, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 10, 2010 by which Respondent could file a response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@disneymoviesonline.com, postmaster@bestdisneymovies.com, postmaster@newdisneymovies.com, postmaster@officialdisneymovies.com and postmaster@thedisneymovies.com. Also on May 21, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 14, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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" through submission of a Written Notice, as defined in Rule 1. 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <disneymoviesonline.com>, <bestdisneymovies.com>, <newdisneymovies.com>, <officialdisneymovies.com>, and <thedisneymovies.com> domain names are confusingly similar to Complainant’s DISNEY mark.
2. Respondent does not have any rights or legitimate interests in the <disneymoviesonline.com>, <bestdisneymovies.com>, <newdisneymovies.com>, <officialdisneymovies.com>, and <thedisneymovies.com> domain names.
3. Respondent registered and used the <disneymoviesonline.com>, <bestdisneymovies.com>, <newdisneymovies.com>, <officialdisneymovies.com>, and<thedisneymovies.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Disney Enterprises, Inc., is a producer of children’s entertainment goods and services, such as movies, television programs, books, and merchandise. Complainant owns hundreds of trademark registrations for the DISNEY marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,162,727 issued July 28, 1981) and in countries around the world.
Respondent, John Johnson, registered the <disneymoviesonline.com>, <bestdisneymovies.com>, <newdisneymovies.com>, <officialdisneymovies.com>, and<thedisneymovies.com> domain names on December 31, 2006. Respondent’s disputed domain names resolve to directory websites featuring links to both competing and unrelated third-party websites.
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 owns hundreds of trademark registrations for the DISNEY marks with the USPTO (e.g., Reg. No. 1,162,727 issued July 28, 1981) and in countries around the world. Evidence of extensive trademark registration with the USPTO conclusively establishes Complainant’s rights in the DISNEY mark for the purposes of Policy ¶ 4(a)(i). See UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO); see also Enterprise Rent-a-Car Co. v. BGSvetionik, FA 925273 (Nat. Arb. Forum Apr. 11, 2007) (finding that the complainant’s timely registration with the USPTO and “subsequent use of the ENTERPRISE mark for over 20 years sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Complainant alleges that Respondent’s <disneymoviesonline.com>, <bestdisneymovies.com>, <newdisneymovies.com>, <officialdisneymovies.com>, and<thedisneymovies.com> domain names are all confusingly similar to Complainant’s DISNEY mark because each one includes Complainant’s DISNEY mark combined with the descriptive term “movies” and one of the following generic terms: “online,” “best,” “new,” “official,” and “the.” Each disputed domain name also adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of generic or descriptive terms to Complainant’s mark will not prevent a finding of confusing similarity under Policy ¶ 4(a)(i). See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the <theotheraol.com> and <theotheraol.net> domain names were confusingly similar to the AOL mark, as the addition of common terms to a mark does not distinguish the domain names from the mark).
The Panel also finds that the appended gTLDs do not
differentiate the disputed domain names from Complainant’s mark. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb.
Forum Sept. 27, 2002) (“[I]t is a well established principle that generic
top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Accordingly, the Panel finds that
Respondent’s <disneymoviesonline.com>,
<bestdisneymovies.com>, <newdisneymovies.com>, <officialdisneymovies.com>,
and<thedisneymovies.com> domain names are confusingly similar to
Complainant’s DISNEY mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds
Policy ¶ 4(a)(i) has been satisfied.
Complainant argues that Respondent does not possess rights and legitimate interests in the disputed domain names. Policy ¶ 4(a)(ii) requires that Complainant establish a prima facie case against Respondent in support of this assertion. The Panel finds that Complainant has met its burden in setting forth a prima facie case. As the burden shifted to Respondent to demonstrate its rights and legitimate interests after Complainant’s presentation of a prima facie case, the Panel finds that Respondent’s silence does not satisfy this burden. As a result, the Panel infers that Complainant’s allegations are true and that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint). In order to make an independent determination on the issue, however, the Panel elects to consider the evidence presented in light of the Policy ¶ 4(c) factors.
Complainant contends that Respondent is not authorized or licensed to use Complainant’s DISNEY mark in the registration of the <disneymoviesonline.com>, <bestdisneymovies.com>, <newdisneymovies.com>, <officialdisneymovies.com>, and<thedisneymovies.com> domain names. The WHOIS information for the disputed domain names lists the registrant as “John Johnson.” The Panel finds that the failure of the WHOIS information to identify Respondent as the registrant of the disputed domain names indicates that Respondent is not commonly known by the disputed domain names according to Policy ¶ 4(c)(ii). The Panel also finds that as Respondent is neither commonly known by the disputed domain names nor authorized by Complainant to use Complainant’s mark in the disputed domain names, Respondent lacks rights and legitimate interests in the disputed domain names 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant alleges that all of Respondent’s disputed domain names resolve to generic sites featuring a variety of links to third-party websites, such as <disneymovieclub.com>, <www.ebay.com>, <bing.com/shopping>, and <www.cafemom.com>. Some of the linked websites advertised on Respondent’s resolving webpage compete with Complainant’s entertainment goods and services, while others are unrelated to Complainant’s business. The Panel finds that using the disputed domain to advertise such webpages does not constitute a bona fide offering of goods or services or the legitimate noncommercial or fair use required by Policy ¶¶ 4(c)(i) and 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 Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
Complainant asserts that Respondent has offered the <bestdisneymovies.com> and <newdisneymovies.com> domain names
for sale on eBay for $3 million each.
Complainant also asserts that Respondent offered the disputed domain
names for sale to Complainant after being contacted by Complainant and informed
of Respondent’s infringing use of Complainant’s mark. The Panel finds that Respondent’s willingness
and intent to sell the disputed domain names evidences a lack of rights and
legitimate interests according to Policy ¶ 4(a)(ii). See Drown
Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13,
2006) (“Moreover, the Panel interprets Respondent’s offer to sell the domain
name registration for $100,000 as evidence that Respondent lacks rights and
legitimate interests in the disputed domain name pursuant to Policy ¶
4(a)(ii).”); see also Skipton Bldg. Soc’y
v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain
name where the respondent offered the infringing domain name for sale and the
evidence suggests that anyone approaching this domain name through the
worldwide web would be "misleadingly" diverted to other sites).
The Panel finds Policy ¶ 4(a)(ii)
has been satisfied.
Complainant alleges that Respondent has offered the <bestdisneymovies.com> and <newdisneymovies.com> domain names
for sale on eBay for $3 million.
Complainant also alleges that Respondent offered the disputed domain
names for sale to Complainant and that Respondent indicated that he was not
using the disputed domain names in connection with any online content or
commercial venture. Complainant argues
that these facts support a finding that Respondent registered the disputed
domain names with the primary intent to sell the disputed domain names for profit. The Panel finds that Respondent’s willingness
and intent to sell the disputed domain names demonstrates bad faith
registration and use pursuant to Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that
the respondent registered and was using the <gwbakeries.mobi> domain name
in bad faith according to Policy ¶ 4(b)(i) where it
offered it for sale for far more than its estimated out-of-pocket costs it
incurred in initially registering the disputed domain name); see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc.,
FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell
a domain [name] bad faith is some accompanying evidence that the domain name
was registered because of its value that is in some way dependent on the
trademark of another, and then an offer to sell it to the trademark owner or a
competitor of the trademark owner").
Complainant asserts that
Respondent registered the five disputed domain names appropriating
Complainant’s mark all on the same date of December 31, 2006. The Panel finds
that registering multiple domain names infringing on another’s trademark
constitutes a pattern of bad faith registration and use according to Policy ¶
4(b)(ii). See EPA European Pressphoto
Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration
of the <epa-photo.com>, <epaphoto.com> and
<epaphotos.com> domain names was sufficient to constitute a pattern
pursuant to Policy ¶ 4(b)(ii)); see also Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept.
8, 2000) (finding that one instance of registration of several infringing
domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)).
Complainant contends that Respondent’s disputed domain names resolve to generic listings of both competing and unrelated links to websites offering Complainant’s movies, Complainant’s products, travel services, Filipino movies, and chat rooms, among others. The Panel finds that by advertising links to third-party websites that offer Complainant’s products or similar products that compete with Complainant’s goods, Respondent is using Complainant’s mark in the disputed domain names in order to disrupt Complainant’s business according to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also 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)).
Complainant asserts that Respondent’s disputed domain names
redirect Internet users away from authentic websites of Complainant to generic
websites featuring a list of various links to websites offering Complainant’s
movies or products, as well as other unrelated websites. As these links are presumably pay-per-click
links that generate revenue for Respondent, the Panel finds that Respondent’s
use of the disputed domain names to increase traffic to its directory sites
reveals an intent to attract Complainant’s consumers by creating confusion with
Respondent’s resolving websites for commercial gain. The Panel finds that Respondent’s activities
in this regard show bad faith registration and use under Policy ¶ 4(b)(iv). See
The Panel finds Policy ¶ 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 <disneymoviesonline.com>, <bestdisneymovies.com>, <newdisneymovies.com>, <officialdisneymovies.com>, and <thedisneymovies.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: June 16, 2010
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