Disney Enterprises, Inc. v. Peter Chan
Claim Number: FA 1356821
Complainant is Disney Enterprises, Inc. (“Complainant”), represented by J. Andrew Coombs of J. Andrew Coombs, A Professional Corporation, California, USA. Respondent is Peter Chan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <disneylandshanghai.com> and <shanghaidisneyland.com>, registered with REGISTER.COM, INC.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 5, 2010; the National Arbitration Forum received payment on November 5, 2010.
On November 8, 2010, REGISTER.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <disneylandshanghai.com> and <shanghaidisneyland.com> domain names are registered with REGISTER.COM, INC. and that Respondent is the current registrant of the names. REGISTER.COM, INC. has verified that Respondent is bound by the REGISTER.COM, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 29, 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@disneylandshanghai.com and postmaster@shanghaidisneyland.com. Also on November 8, 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 December 2, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <disneylandshanghai.com> and <shanghaidisneyland.com> domain names are confusingly similar to Complainant’s DISNEYLAND mark.
2. Respondent does not have any rights or legitimate interests in the <disneylandshanghai.com> and <shanghaidisneyland.com> domain names.
3. Respondent registered and used the <disneylandshanghai.com> and <shanghaidisneyland.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Disney Enterprises, is a producer of children’s entertainment goods and services. These goods and services include movies, television programs, books, and other merchandise. Complainant also operates the famous Disneyland Resort in California and the Walt Disney World Resort in Florida. Complainant is beginning development of another resort, in Shanghai, China in November 2010. Complainant has many DISNEY marks registered around the world. This includes the registration of the DISNEYLAND mark with the Trade Mark Registry of the Hong Kong, Intellectual Property Department (“IPD”) (e.g., Reg. No. 199705766 issued June 23, 1997).
Respondent, Peter Chan, registered <shanghaidisneyland.com> on October 27, 1999 and <disneylandshanghai.com> on January 3, 2005. The <disneylandshanghai.com> domain name does not currently resolve to an active website. On the other hand, <shanghaidisneyland.com> resolves to a links page offering links to related and unrelated 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 contends it has the necessary rights in the DISNEYLAND mark to proceed with this claim. To evidence this contention, Complainant has provided the mark’s registration with Hong Kong’s IPD (e.g., Reg. No. 199705766 issued June 23, 1997) along with many other registrations for its DISNEY family of marks. The Panel finds that this registration meets the requirements of Policy ¶ 4(a)(i). 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 Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world). Therefore, the Panel concludes that Complainant has rights in the DISNEYLAND mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that both of the disputed domain names are confusingly similar to its DISNEYLAND mark. The Panel agrees. Respondent has merely added the geographical qualifier “shanghai” and a generic-top-level domain “.com” to Complainant’s mark. There is little difference between the two domain names besides that the geographic descriptor comes before Complainant’s mark in one domain name and after in the other. Previous panels have found that merely adding a geographic qualifier and a gTLD render a mark confusingly similar. See VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between the complainant’s VERISIGN mark and the <verisignindia.com> and <verisignindia.net> domain names where the respondent added the word “India” to the complainant’s mark); see also Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”);. Therefore, the Panel finds that <disneylandshanghai.com> and <shanghaidisneyland.com> are confusingly similar to the DISNEYLAND mark pursuant to ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been proved.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <disneylandshanghai.com> and <shanghaidisneyland.com> domain names. The burden shifts to Respondent to prove that Respondent does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) once Complainant makes a prima facie case in support of its allegations. In light of the evidence provided, the Panel finds Complainant has made a sufficient prima facie case. Because Respondent has failed to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <disneylandshanghai.com> and <shanghaidisneyland.com> domain names. 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 Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant alleges that Respondent is not commonly known by the disputed domain names and therefore lacks rights and legitimate interests in the disputed domain names. The Panel finds that the evidence agrees with Complainant’s contentions. The domain names’ WHOIS information indicates that Respondent is known as “Peter Chan.” This, in combination with the fact that Respondent has not responded to refute this evidence, leads the Panel to find that Respondent is not commonly known by either domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant alleges that Respondent has no bona fide offering of goods or services and no noncommercial or fair use associated with its <shanghaidisneyland.com> domain name. After examining the evidence provided by Complainant on Respondent’s use of the disputed domain name, the Panel agrees. Respondent is using the website as a links page. The website offers no content outside of the listed links which redirect Internet users to third party websites. The Panel presumes that Respondent receives financial compensation for this use. Previous panels have found that similar uses did not amount to bona fide offerings of goods and services and a have no noncommercial or fair use. See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Therefore, the Panel finds Respondent’s use of the domain name <shanghaidisneyland.com> is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Regarding the other disputed domain name, <disneylandshanghai.com>, the Panel finds that Respondent has failed to make active use. The domain name resolves to a blank page. Complainant further alleges that Respondent has not used the domain name in five years. The Panel finds this to be evidence of a lack of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Broadcom Corp. v. Wirth, FA 102713 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to display an “under construction” page did not constitute a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (finding that the respondent’s non-use of the <abc7chicago.mobi> domain name since its registration provided evidence that the respondent lacked rights or legitimate interests in the disputed domain name).
The Panel finds that Policy ¶ 4 (a)(ii) has been proved.
The Panel finds Respondent’s use of the <shanghaidisneyland.com> domain name to be a use that disrupts Complainant’s business. The website resolves to a list of links that include competitors of Complainant. Using a domain name that is confusingly similar to a preexisting mark to host links to businesses that compete with products or services offered under that same preexisting mark is an indication of bad faith registration and use. 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 Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website). Therefore, the Panel finds that Respondent’s disrupting use is evidence of bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant alleges that Respondent is using the confusingly similar domain name <shanghaidisneyland.com> to attract Internet users to the domain name pursuant to Policy ¶ 4(b)(iv). Respondent has chosen the disputed domain name to confuse Internet users seeking to find the web presence of Complainant’s soon to be built resort. Respondent intends to create confusion regarding the affiliation of the website with Complainant’s new development. This confusion will lead to more Internet users finding the disputed domain name and thus more revenue for Respondent when these Internet users click on the displayed links. Accordingly, the Panel finds that Respondent intentionally attempted to attract Internet users to its domain name, for commercial gain, by creating a likelihood of confusion as to the source or sponsorship of the domain name. 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 The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)). Accordingly the Panel finds that this evidence weighs in favor of finding a bad faith registration and use pursuant to Policy ¶ 4(b)(iv). Therefore, the Panel finds that Respondent’s use of a confusingly similar domain name to attract Internet users is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).
The Panel notes that the examples of bad faith registration prescribed in Policy ¶ 4(b) are intended to be illustrative and not exaustive. 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). Thus, the Panel may find bad faith beyond the perimeters of Policy ¶ 4(b). See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0387 (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”).
Examining Respondent’s use of the disputed domain names beyond Policy ¶ 4(b), the Panel finds that Respondent fails to make an active use of the <disneylandshanghai.com> domain name. This disputed domain name resolves to a blank page. The Panel finds that Respondent’s failure to make and active use of the domain name is an indication of bad faith registration and use under 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 DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
The Panel finds that Policy ¶ 4 (a)(iii) has been proved.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <disneylandshanghai.com> and <shanghaidisneyland.com> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 14, 2010
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