national arbitration forum

 

DECISION

 

Disney Enterprises, Inc. v. Nick Zammit

Claim Number: FA1011001357814

 

PARTIES

 Complainant is Disney Enterprises, Inc. (“Complainant”), represented by J. Andrew Coombs of J. Andrew Coombs, A Professional Corporation, California, USA.  Respondent is Nick Zammit (“Respondent”), United Kingdom.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <disneylandchina.com>, <disneyland2010.com>, <disneylandgermany.com>, and <disneylandengland.com>, registered with Tucows 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.

 

Kendall C. Reed as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 11, 2010; the National Arbitration Forum received payment on November 11, 2010.

 

On November 12, 2010, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <disneylandchina.com>, <disneyland2010.com>, <disneylandgermany.com>, and <disneylandengland.com> domain names are registered with Tucows Inc. and that Respondent is the current registrant of the names.  Tucows Inc. has verified that Respondent is bound by the Tucows 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 15, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 6, 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@disneylandchina.com, postmaster@disneyland2010.com, postmaster@disneylandgermany.com, and postmaster@disneylandengland.com.  Also on November 15, 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.

 

A timely Response was received and determined to be complete on November 16, 2010.

 

On November 23, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Kendall C. Reed as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <disneylandchina.com>, <disneyland2010.com>, <disneylandgermany.com>, and <disneylandengland.com> domain names are confusingly similar to Complainant’s DISNEYLAND mark.

 

2.      Respondent does not have any rights or legitimate interests in the <disneylandchina.com>, <disneyland2010.com>, <disneylandgermany.com>, and <disneylandengland.com> domain names.

 

3.      Respondent registered and used the <disneylandchina.com>, <disneyland2010.com>, <disneylandgermany.com>, and <disneylandengland.com> domain names in bad faith.

 

B.  Respondent made no substantive claims in the Response, but instead argued that the Complainant should be made to purchase the domain names if it wants them.

 

FINDINGS

Complainant, Disney Enterprises, Inc., owns trademark registrations in the DISNEYLAND mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 857,667 issued September 24, 1968). Complainant uses the mark in connection with the operation of an amusement park.

 

Respondent, Nick Zammit, registered the <disneylandchina.com>, <disneyland2010.com>, <disneylandgermany.com>, and <disneylandengland.com>  domain names on August 28, 2007. Respondent’s disputed domain names resolve to inactive websites.

 

DISCUSSION

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 substantive 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.

 

Preliminary Issue: Nonsubstantive Response

 

In Respondent’s response, Respondent’s only contention is that it should be allowed to sell the disputed domain names to Complainant.  The Panel finds that there is no requirement in the UDRP that a trademark holder buy an infringing domain name from a  respondent.See CBS Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000) (“There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent”).  Moreover, the Panel determines that Respondent offers no further substantive arguments relating to Respondent’s registration and use of the disputed domain names.

 

Identical and/or Confusingly Similar

 

Complainant has registered its DISNEYLAND mark with the USPTO (Reg. No. 857,667 issued September 24, 1968). The Panel finds Complainant has rights in its DISNEYLAND mark pursuant to Policy ¶ 4(a)(i).  See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).

 

Complainant asserts that Respondent’s <disneylandchina.com>, <disneylandgermany.com>, and <disneylandengland.com> domain names are confusingly similar to its mark. Complainant argues that the disputed domain names merely add a geographic term (“china,” “germany,” or “england”) and the generic top-level domain (“gTLD”) “.com.” The Panel finds that such additions do not sufficiently distinguish the disputed domain names from Complainant’s mark.  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geographic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Skype Ltd. v. Sacramento, FA 747948 (Nat. Arb. Forum Aug. 30, 2006) (“The addition of the geographic term [“Brasil”] does not avoid confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel finds that Respondent’s <disneylandchina.com>, <disneylandgermany.com>, and <disneylandengland.com> domain names are confusingly similar to Complainant’s DISNEYLAND mark pursuant to Policy ¶ 4(a)(i).

 

Complainant asserts that Respondent’s <disneyland2010.com> domain name is confusingly similar to its mark. Complainant argues that the disputed domain name merely adds numbers (“2010”) and the gTLD “.com.”  Previous panels have held that the addition of numbers and a gTLD both fail to adequately distinguish a disputed domain name from a complainant’s mark.  See Omnitel Pronto Italia S.p.A. v. Bella, D2000-1641 (WIPO Mar. 12, 2001) (finding that the contested <omnitel2000.com> domain name is confusingly similar to the OMNITEL trademark); see also Nintendo of Am., Inc. v. Lizmi, FA 94329 (Nat. Arb. Forum Apr. 24, 2000) (finding that the respondent’s domain names <pokemon2000.com> and <pokemons.com> are confusingly similar to the complainant’s mark); see also Reese v. Morgan, supra; see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., supra. The Panel finds that Respondent’s <disneyland2010.com> domain name is confusingly similar to Complainant’s DISNEYLAND mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds Complainant has satisfied the elements of Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Pursuant to Policy ¶ 4(a)(ii), Complainant must make a prima facie case showing Respondent lacks rights or legitimate interests in the <disneylandchina.com>, <disneyland2010.com>, <disneylandgermany.com>, and <disneylandengland.com>  domain names. The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names. The Panel finds Complainant has established a prima facie case, shifting the burden to the Respondent. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights or legitimate interests in the disputed domain name. In light of Respondent’s failure to file a substantive Response to the proceedings, the Panel will proceed to analyze the record in light of Policy ¶ 4(c). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also 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.”).

 

Complainant contends that Respondent is not commonly known by the <disneylandchina.com>, <disneyland2010.com>, <disneylandgermany.com>, and <disneylandengland.com> domain names. The WHOIS information lists the registrant of the disputed domain names as “Nick Zammit,” which does not indicate Respondent is commonly known by the <disneylandchina.com>, <disneyland2010.com>, <disneylandgermany.com>, and <disneylandengland.com>  domain names. The Panel determines that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See Oakley, Inc. v. Watson, D2000-1658 (WIPO May 3, 2001) (“It is clear that the value in the Oakley name has been created by the commercial use and registrations of the Complainant and it is also clear . . . that Respondent is taking advantage of the value created by the Complainant.”); see also Nike, Inc. v. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing the complainant's distinct and famous NIKE trademark).

 

Complainant contends that Respondent’s disputed domain names do not resolve to an active website.  Complainant argues that Respondent’s failure to make an active use of the disputed domain names is evidence that the disputed domain names fail to make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and fail to make a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  The Panel holds that Respondent’s <disneylandchina.com>, <disneyland2010.com>, <disneylandgermany.com>, and <disneylandengland.com>  domain names do not make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and do not make a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also Beat the Bookstore, LLC v. May Enter., FA 589501 (Nat. Arb. Forum Dec. 19, 2005) (finding that the respondent’s “protracted period of inaction” in its development of the disputed domain name for over two years indicated that the respondent had no rights or legitimate interests in the disputed domain name).

 

The Panel finds Complainant has satisfied the elements of Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant asserts that Respondent’s registration of the <disneylandchina.com>, <disneyland2010.com>, <disneylandgermany.com>, and <disneylandengland.com>  domain names attempts to prevent Complainant’s reflection of its DISNEYLAND mark through a pattern of domain name registration confusingly similar to its mark. The Panel finds Respondent’s pattern of registration and use of the disputed domain names to constitute bad faith pursuant to Policy ¶ 4(b)(ii).  See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”); see also Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks).

 

Complainant alleges that Respondent fails to make an active use of the disputed domain names. Complainant contends Respondent’s <disneylandchina.com>, <disneyland2010.com>, <disneylandgermany.com>, and <disneylandengland.com>  domain names to resolve to inactive websites. The Panel finds that Respondent’s registration and use of the disputed domain names constitutes bad faith under Policy ¶ 4(a)(iii).  See Hewlett-Packard Co. v. Martineau, FA 95359 (Nat. Arb. Forum Aug. 30, 2000) (“Respondent’s failure to submit an assertion of good faith intent to use the domain name, in addition to the passive holding of the domain name, reveal that Respondent registered and uses the domain name in bad faith.”); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose).

 

Complainant contends that Respondent registered the <disneylandchina.com> and <disneyland2010.com> domain names after Complainant’s announcement of opening a theme park in China under its DISNEYLAND mark. The Panel finds that Respondent’s registration of the <disneylandchina.com> and <disneyland2010.com> domain names constitutes opportunistic bad faith pursuant to Policy ¶ 4(a)(iii).  See Neuberger Bernman Inc. v. Jacobsen, D2000-0323 (WIPO June 12, 2000) (finding that the <newbergerberman.com> domain name was too unique for the respondent to have registered it without already knowing about the complainant’s marks); see also Tech. Props., Inc. v. Hussain, FA 95411 (Nat. Arb. Forum Sept. 14, 2000) (“The Respondent took advantage of the public announcement that Tandy Corporation was changing its name to RadioShack by registering the domain names on the same day as a public announcement of a company’s name change.  This is also evidence of bad faith.”).

 

The Panel finds Complainant has satisfied the elements of Policy ¶ 4(a)(iii).

 

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 <disneylandchina.com>, <disneyland2010.com>, <disneylandgermany.com>, and <disneylandengland.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Kendall C. Reed, Panelist

Dated:  December 5, 2010

 

 

 

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