Disney Enterprises, Inc. v. disneylifestyle.com Private Registrant
Claim Number: FA1101001365866
Complainant is Disney Enterprises, Inc. (“Complainant”), represented by J. Andrew Coombs of J. Andrew Coombs, A Professional Corporation, California, USA. Respondent is disneylifestyle.com Private Registrant (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <disneylifestyle.com>, registered with NEW DREAM NETWORK, LLC.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 3, 2011; the National Arbitration Forum received payment on January 3, 2011.
On January 6, 2011, NEW DREAM NETWORK, LLC confirmed by e-mail to the National Arbitration Forum that the <disneylifestyle.com> domain name is registered with NEW DREAM NETWORK, LLC and that Respondent is the current registrant of the name. NEW DREAM NETWORK, LLC has verified that Respondent is bound by the NEW DREAM NETWORK, LLC 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 7, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 27, 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@disneylifestyle.com. Also on January 7, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 1, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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 response by Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <disneylifestyle.com> domain name is confusingly similar to Complainant’s DISNEY mark.
2. Respondent does not have any rights or legitimate interests in the <disneylifestyle.com> domain name.
3. Respondent registered and used the <disneylifestyle.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Disney Enterprises, Inc., is an entertainment company and owner of the DISNEY trademark which is used by Complainant in connection with its entertainment based business. The trademark is registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,162,727 issued July 28, 1981).
Respondent registered the <disneylifestyle.com> domain name on February 14, 2010. The disputed domain name formerly resolved to a website displaying adult-oriented material and currently resolves to an inactive website.
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 alleges it has established rights in the DISNEY mark based on its registration of the mark with the USPTO (e.g., Reg. No. 1,162,727 issued July 28, 1981). Previous panels have determined that registration of a mark with a federal trademark authority is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See 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)); see also SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his trademark registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”). Thus, the Panel concludes Complainant has established rights in the DISNEY mark under ¶ 4(a)(i) of the Policy.
Complainant contends Respondent’s <disneylifestyle.com> domain name is confusingly similar to its DISNEY mark. Respondent’s disputed domain name incorporates Complainant’s entire mark and merely adds the generic term “lifestyle” and generic top-level domain (“gTLD”) “.com” to Complainant’s mark. The Panel concludes that adding generic terms and a gTLD to an established mark fails to distinguish the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the 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 concludes Respondent’s <disneylifestyle.com> domain name is confusingly similar to Complainant’s DISNEY mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been established.
Complainant has the responsibility of putting forth a prima facie showing that Respondent does not have rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Once Complainant meets that requirement, the burden of proof shifts to Respondent to show that it has rights or legitimate interests in the disputed domain name. The Panel concludes that Complainant has made a prima facie showing and, because Respondent failed to make a timely response, the Panel assumes Respondent does not have any rights or legitimate interests in the <disneylifestyle.com> domain name. However, the Panel chooses to examine the record under Policy ¶ 4(c) to determine whether Respondent has any rights or legitimate interests in the disputed domain name. See 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.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Respondent failed to respond to Complainant’s allegation that Respondent is not commonly known by the disputed domain name and that it is not authorized to use the DISNEY mark. The Panel can find no evidence in the record that supports a finding that Respondent is commonly known by the <disneylifestyle.com> domain name. Furthermore, there is nothing in the WHOIS information that indicates Respondent is commonly known by the disputed domain name. These factors support the Panel’s finding that Respondent is not commonly known by 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 Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent previously used the <disneylifestyle.com> domain name to redirect unsuspecting Internet users to a webpage displaying adult-oriented material. Complainant alleges, and the Panel agrees, that using a confusingly similar disputed domain name to resolve Internet users to an adult-oriented webpage does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a noncommercial or fair use under Policy ¶ 4(c)(iii). See Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that the respondent’s use of its domain name to link unsuspecting Internet traffic to an adult orientated website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use); see also Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to a [adult-oriented] website did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)).
Furthermore, Respondent’s <disneylifestyle.com> domain name resolves to a website that is inactive. The posted webpage displays the words “Site coming soon!” which Complainant alleges is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a noncommercial or fair use under Policy ¶ 4(c)(iii). The Panel finds that Respondent’s use of the disputed domain name is not in connection with either a bona fide offering of goods or service or a noncommercial or fair use under ¶¶ 4(c)(i) and 4(c)(ii) of the Policy. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for 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)).
The Panel finds Policy ¶ 4(a)(ii) has been established.
Respondent previously registered and used the <disneylifestyle.com> domain name to redirect Internet users to a website displaying adult-oriented material in addition to offering services and merchandise that are unrelated to Complainant. Complainant alleges the disputed domain name is capable of causing confusion as to Complainant’s sponsorship and affiliation with the disputed domain name and resolving website. The Panel presumes that Respondent registered the disputed domain name intentionally to attract, for commercial gain, Internet users to its adult-oriented website by creating a likelihood of confusion with Complainant’s DISNEY mark. The Panel finds this to be evidence of bad faith registration and use to Policy ¶ 4(b)(iv). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)).
Lastly, Complainant alleges that Respondent’s failure to make an active use of the disputed domain name is evidence of bad faith registration and use. Respondent’s disputed domain name and resolving website currently displays the phrase, “Site Coming Soon.” The Panel finds that Respondent’s registration and inactive holding of the disputed domain name is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See 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); 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).
The Panel finds Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <disneylifestyle.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: February 10, 2011
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