Disney Enterprises, Inc. v. Cyber Domain Services Pvt.Ltd.
Claim Number: FA1012001365612
Complainant is Disney Enterprises, Inc. (“Complainant”), represented by J. Andrew Coombs of J. Andrew Coombs, A Professional Corporation, California, USA. Respondent is Cyber Domain Services Pvt.Ltd. (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <waltdisneyswan.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 30, 2010; the National Arbitration Forum received payment on December 30, 2010.
On January 4, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <waltdisneyswan.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 January 6, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 26, 2011 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@waltdisneyswan.com. Also on January 6, 2011, 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 January 25, 2011.
A Supplemental Submission was received from Complainant on February 1, 2001.
On January 27, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that the domain name <waltdisneyswan.com should be transferred to it because it can make out each of the three criteria prescribed under paragraph 4(a)(i)-(iii) of the Policy. Complainant maintains, first, that the domain name <waltdisneyswan.com> is confusingly similar to Complainant’s many registered trademarks for DISNEY registered with the United States Patent and Trademark Office (“USPTO”) and internationally (“the DISNEY mark”). Complainant contends that the domain name is confusingly similar to the DISNEY mark because the disputed domain name combines Complainant’s DISNEY mark with the descriptive terms “walt” and “swan,” which refer to the name of one of Complainant’s resorts, and the generic top-level domain (“gTLD”) “.com.”
Complainant then argues that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the name <waltdisneyswan.com>, has not used the domain name in connection with a bona fide offering of goods or services, is not making a non-commercial or fair use of the domain name, and has not used it for any legitimate purpose.
Thirdly, Complainant contends that the disputed domain name was registered and is being used in bad faith because the presence of Complainant’s DISNEY mark in the <waltdisneyswan.com> domain name and the related links on the resolving websites aims to attract Internet users seeking Complainant to Respondent’s website. Complainant asserts that the misappropriation of its mark creates a likelihood of confusion as to the source, sponsorship or affiliation of Respondent’s resolving website. Complainant alleges that Respondent profits through this scheme from the pay-per-click links that generate revenue for Respondent.
B. Respondent
Respondent denies the allegations of Complainant and also denies that Complainant has established by evidence the constituent elements of the claim that it must establish. However, the main contention advanced by Respondent is that it has a right or legitimate interest in the disputed domain name because of a decision from the U.S. District Court for the Eastern District of Virginia, Warren Weitzman v. Lead Networks Domains Pvt., Ltd., Case No. 1:09-cv-01141 (CMH/IDD), that Respondent argues acknowledges that a domain name registrant has common law rights in its registered domain names.
C. Supplemental Submission
On January 31, 2011, the Forum received a Supplemental Submission from Complainant which was timely and which the Panel has taken into account in reaching its decision.
In the Supplemental Submission Complainant contended that the decision cited by Respondent, Warren Weitzman v. Lead Networks Domains Pvt., Ltd., Case No. 1:09-cv-01141 (CMH/IDD) should not be relied on by the Panel as it did not involve the Complainant, the Respondent, or the domain name in the present proceeding, was a default decision and therefore of little weight and was a decision under the Anticybersquatting Consumer Protection Act ( ACPA) 15 U.S.C. Policy ¶1125 which is concerned with different principles than those in the Policy. Accordingly, Complainant submitted that Respondent had not shown that it had a right or legitimate interest in the domain name.
(1) the domain name registered by Respondent is confusingly similar to the DISNEY mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name was registered and is being used by Respondent in bad faith.
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."
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.
The Panel finds that Complainant has rights in the DISNEY mark by virtue of its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,162,727 issued July 28, 1981). In this regard, a USPTO trademark is sufficient to prove Complainant’s rights in the DISNEY mark, even although Respondent lives or operates in a country other than the U.S. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
The Panel also finds that Respondent’s <waltdisneyswan.com> domain name is confusingly similar to Complainant’s DISNEY mark because the disputed domain name combines Complainant’s mark with the words “walt” and “swan,” the former of which is a well-known given name long associated with the name DISNEY and the latter of which is a descriptive word that refers to the name of one of Complainant’s resorts, namely the Walt Disney World Swan Resort and the generic top-level domain (“gTLD”) “.com.” The Panel finds that adding descriptive and similar terms to Complainant’s mark fails to prevent a finding of confusing similarity according to Policy ¶ 4(a) (i), if confusing similarity is otherwise present, which in this proceeding it is. Indeed, adding the words in this case simply increases the likelihood of such confusion. In any event, the domain name is also confusingly similar to at least one other of Complainant’s trademarks established on the evidence, namely WALT DISNEY. See Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Nat. Arb. Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was confusingly similar to the complainant’s MILLER mark, because “[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity with regard to Policy ¶ 4(a) (i).”); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity). The Panel may also find that appending the gTLD “.com” does not differentiate the disputed domain name from Complainant’s mark. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). Thus, the Panel finds that Respondent’s <waltdisneyswan.com> domain name is confusingly similar to Complainant’s DISNEY mark pursuant to Policy ¶ 4(a)(i).
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and then the burden shifts to Respondent to show it does have rights or legitimate interests. 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.”).
The Panel finds that Complainant has made out a prima facie case as required and the question thus arises whether Respondent has rebutted that prima facie case. The Panel finds that Respondent has failed to do so. The reasons why that is so are as follows.
Complainant argues, and the Panel finds that it has been established on the evidence, that Respondent is not and has never been authorized by Complainant to use its DISNEY mark. Complainant also asserts that Respondent does not use its DISNEY mark to identify itself on the resolving website or for any other purpose. The WHOIS information for the <waltdisneyswan.com> domain name lists the registrant as “Cyber Domain Services Pvt.Ltd.,” which the Panel finds has no connection with the disputed domain name. The Panel therefore concludes that Respondent is not commonly known by the <waltdisneyswan.com> domain name and thus lacks rights and legitimate interests in the domain name according to Policy ¶ 4(c) (ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant also contends that Respondent’s <waltdisneyswan.com> domain name resolves to a generic pay-per-click links page filled with links relating to Complainant’s products and services, as well as unrelated products and services. The Panel finds that using the wrongly appropriated disputed domain name in connection with such a links directory does not comport with the requirements of a bona fide offering of goods or services under Policy ¶ 4(c) (i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c) (iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c) (i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c) (iii)).
Respondent also contended that it has rights and legitimate interests based on a decision from the U.S. District Court for the Eastern District of Virginia in Warren Weitzman v. Lead Networks Domains Pvt., Ltd., Case No. 1:09-cv-01141 (CMH/IDD), that Respondent argues acknowledges that a domain name registrant has common law rights in its registered domain names. The Panel appreciates that Respondent has taken some trouble to advance its argument based on the decision. On the other hand, Complainant has advanced some persuasive arguments in its supplemental submission as to why the decision should not be relied on and why, consequently, Respondent has not shown that it has a right or legitimate interest in the domain name. The Panel has given careful consideration to this issue and accepts the arguments advanced by Complainant. The Panel finds that the decision relied on addresses in substance a dispute between the registrant of domain names and the registrar, who allegedly took control of the domain names despite the plaintiff’s ownership. The case resulted in a default judgment against the defendant for the plaintiff and did not involve any dispute between trademark owners and the registrant of allegedly typosquatted domain names. The Panel therefore finds that the facts of the case and the principle emerging from it are entirely different from those in the present proceeding and that the case has no bearing on the dispute at issue here.
The Panel therefore finds that Respondent does not have a right or legitimate interest in the disputed domain name.
The Panel finds that the domain name was registered and has been used in bad faith under Policy ¶ 4(b) (iv). Complainant argues the presence of Complainant’s DISNEY mark in the <waltdisneyswan.com> domain name and the related links on the resolving websites aims to attract Internet users seeking Complainant to Respondent’s website. Complainant asserts that the misappropriation of its mark in this way creates a likelihood of confusion as to the source, sponsorship or affiliation of Respondent’s resolving website. Complainant also alleges that Respondent profits through this scheme from the pay-per-click links that generate revenue for Respondent.
The Panel accepts these submissions and finds that Respondent’s activities in connection with the disputed domain name thus show both bad faith registration and use. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to 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).
Complainant also alleges that Respondent had actual and/or constructive notice of Complainant and its rights in the DISNEY mark prior to the registration of the <waltdisneyswan.com> domain name. Constructive knowledge has generally not been held sufficient to support a finding of bad faith, but in the present case the Panel finds Respondent had actual knowledge of Complainant’s mark and the Panel therefore finds that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a) (iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <waltdisneyswan.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC, Panelist
Dated: 31 January 2011
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