Disney Enterprises, Inc. v. The Imagination Expert . com
Claim Number: FA1110001412129
Complainant is Disney Enterprises, Inc. (“Complainant”), represented by J. Andrew Coombs of J. Andrew Coombs, A Professional Corporation, California, USA. Respondent is The Imagination Expert . com (“Respondent”), represented by Khevin Barnes, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <disneylecture.com>, registered with GoDaddy.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.
Nathalie Dreyfus as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 19, 2011; the National Arbitration Forum received payment on October 19, 2011.
On October 19, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <disneylecture.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.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 October 19, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 8, 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@disneylecture.com. Also on October 19, 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 November 7, 2011.
On November 10, 2011, an Additional Submission was received from Complainant and found to be timely and complete pursuant to the National Arbitration Forum’s Supplemental Rule 7.
On November 15, 2011, an Additional Submission was received from Respondent and found to be timely and complete pursuant to the National Arbitration Forum’s Supplemental Rule 7.
On November 11, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Nathalie Dreyfus as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes inter alia the following assertions:
1. Respondent’s domain name <disneylecture.com> is confusingly similar to Complainant’s DISNEY mark.
§ This domain name fully incorporates Complainant’s famous, long standing and widely registered trademarks.
2. Respondent has no legitimate interest in the domain name <disneylecture.com>.
§ Respondent is not authorized by Complainant to use the domain name. Respondent registered and use the domain name to infringe Complainant’s rights and trade off Complainant’s goodwill;
§ The services offered by Respondent compete with Complainant’s services. Such services thus do not constitute a bona fide offering of goods and services;
§ Respondent is not commonly known by the Domain Name.
3. Respondent has registered and used the domain name <disneylecture.com> in bad faith.
§ Respondent must have known or knew Complainant’s trademark at the time prior to the Domain name registration which is an evidence of bad faith;
§ Bad faith may be found as Respondent failed to check whether Complainant’s Trademarks were registered prior to his registration of the Domain Name;
§ Respondent is intentionally using the Domain Name to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant’s mark while offering Complainant’s related services through the website;
§ Respondent is using the Domain Name which is confusingly similar to Complainant’s mark to redirect Internet users to Respondent’s commercial website that features services that directly compete with Complainant’s business;
§ Respondent has established a pattern of conduct by registering multiple domain names infringing the same mark, some of which Respondent has turned over to Complainant;
§ Respondent did not cease using the Domain Name after being notified by Complainant of his wrongful use.
B. Respondent makes inter alia the following assertions
1. He has had a passion for the stories and life of Walt Disney since his childhood;
2. He has worked for the Walt Disney Company in the past;
3. He did not make any profits on his lectures;
4. He has been delivering programs about Walt Disney for 10 years;
5. He is making a legitimate and bona fide offering of services;
6. The domain name is a necessary description of what Respondent does;
7. The domain name is not identical or confusingly similar to Complainant’s trademark. There is no way to identify what Respondent does without using the name of Disney;
8. He has been commonly known as the Disney Lecturer long before the dispute;
9. He has placed a disclaimer on his website;
10. He has voluntarily deleted any and all other domain names pointing to his lecture program;
11. He does not believe anyone could misinterpret his intention or integrity;
12. There is no intent to deceive, to benefit financially, to mislead or confuse the public or to degrade, disrupt or deny the Walt Disney Company.
C. In his Additional submission, Complainant makes inter alia the following assertions:
§ Respondent did not provide evidence or substantiation the domain name is not identical or confusingly similar to Complainant’s trademark;
§ The test of confusing similarity is limited solely to a consideration of whether the disputed domain name incorporates the trademark or a confusing similarity thereof;
§ The domain name is confusingly similar to Complainant’s trademark;
§ Respondent possesses no legitimate interest in the domain name;
§ Respondent admits he used the domain name for commercial purposes trading off Complainant’s business and its founder;
§ Complainant provides lecture services;
§ There is no nominative fair use of the domain name because it suggests sponsorship or endorsements by Complainant;
§ Respondent has engaged in bad faith in its registration and use of the domain name;
§ Respondent acknowledges he was aware of the Disney trademark;
§ Respondent is using the domain name for commercial purposes for activities that compete with Complainant’s activities and generates revenues;
§ The presence of a disclaimer on the website cannot prevent a finding of bad faith.
D. In his Additional submission Respondent is inter alia making the following assertions:
§ There is no links between his activities and Complainant’s activities;
§ He is not using the domain name in bad faith;
§ The addition of the term “lecture” in the disputed domain name is not a minor addition. The descriptive use of the name Disney cannot be denied or omitted;
§ Most of his work has been donated. 95% of his Disney lectures has been donated for no fee;
§ Nothing in the website at issue indicates a link with Complainant. The website includes a disclaimer;
§ He is making a legitimate use of the domain name;
§ The fact he is aware of the trademark DISNEY does not evidence his bad faith.
The Panel finds that: (1) the disputed domain name in confusingly similar to a mark in which Complainant has rights; (2) Respondent has no rights or legitimate interests in the domain name; and (3) the domain name was registered and is being used 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.
Complainant presents evidence that it owns numerous trademark registrations with the United States Patent and Trademark Office ("USPTO") which contain its DISNEY mark (e.g., Reg. No. 1,162,727 registered July 28, 1981). The Panel finds that through such trademark registrations, Complainant has established Policy ¶ 4(a)(i) rights in the DISNEY mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also 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)).
Complainant alleges that Respondent’s <disneylecture.com> domain name is confusingly similar to its DISNEY mark. Complainant notes that the domain name contains its DISNEY mark in addition to the generic term “lecture” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that such additions to Complainant’s mark do not remove the domain name from the realm of confusing similarity under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds Policy Paragraph 4(a)(i) has been satisfied.
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.”).
Complainant alleges that Respondent has not been commonly known as the disputed domain name and is not authorized to use Complainant’s mark in any way. The Panel notes that the WHOIS information identifies “The Imagination Expert . com” as the domain name registrant. Respondent asserts he has been known as the Disney Lecturer long before the dispute but does not substantiate this assertion. The Panel thus finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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); see also 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).
The Panel finds that Respondent’s use of the disputed domain name to offer a lecture series about Complainant’s founder, may compete with Complainant’s offerings of the same. The Panel notes that 95% of Respondent’s Disney Lecture were donated for free which suggests 5% generated revenues. The Panel finds this is 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 Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”); see also eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use).
The Panel further finds that Respondent’s disclaimer that it has posted on its website does not mitigate a finding that Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii). See AltaVista Co. v. AltaVisa, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant).
The Panel finds Policy Paragraph 4(a)(ii) has been satisfied.
The Panel notes that Respondent had also previously registered fourteen other domain names containing Complainant’s marks, and further relinquished all of the other domain names prior to this dispute. In view of the registration of multiple domain names containing Complainant’s marks at one time, the Panel finds bad faith registration and use under Policy ¶ 4(b)(ii). See 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)).
Respondent is using the disputed Domain Name for services that compete with Complainant’s services. Such use diverts Internet users looking for Complainant’s services, and disrupts the business of Complainant. See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Further, Complainant alleges that Respondent’s “registration and use of the Domain Name also meets the bad faith elements set forth in Section 4(b)(iv) of the UDRP because Respondent is intentionally using the Domain Name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the website, while offering Complainant-related services through the website.” The Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Lastly, Complainant contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the DISNEY marks. In view of the other circumstances of this case, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) as Respondent is found to have had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); 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).
The Panel also finds that the disclaimer mentioned by Respondent under Policy ¶ 4(a)(ii) does not operate to mitigate a finding of bad faith registration and use under Policy ¶ 4(a)(iii). See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does not mitigate a finding of bad faith under Policy ¶ 4(a)(iii) “); see also Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.”).
The Panel finds Policy Paragraph 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 <disneylecture.com> domain name be TRANSFERRED from Respondent to Complainant.
Nathalie Dreyfus, Panelist
Dated: November 24, 2011
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