Disney Enterprises, Inc. v. Gabriel Cano
Claim Number: FA1205001443902
Complainant is Disney Enterprises, Inc. (“Complainant”), represented by J. Andrew Coombs of J. ANDREW COOMBS, A Professional Corporation, California, USA. Respondent is Gabriel Cano (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <watchdisney.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 14, 2012; the National Arbitration Forum received payment on May 14, 2012.
On May 15, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <watchdisney.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 May 15, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 4, 2012 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@watchdisney.com. Also on May 15, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 June 8, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant is a worldwide leader in the production of children’s entertainment goods and services such as movies, television programs, books, and merchandise. Complainant Disney Enterprises, Inc., (and/or its affiliated companies), has been for many years the owner of hundreds of registrations for the DISNEY® trademark and other trademarks, in countries all over the world. For decades, Complainant, or its predecessor-in-interest, has continuously used and applied its trademarks for a variety of goods and services. Complainant’s registrations for the DISNEY mark include those with the United States Patent and Trademark Office (e.g., Reg. No. 1,162,727 registered July 28, 1981).
Respondent’s <watchdisney.com> domain name is confusingly similar to Complainant’s DISNEY mark.
Respondent is not authorized to use the DISNEY mark in any way and is not commonly known by the disputed domain name.
Respondent’s disputed domain name is being used to offer pirated or unauthorized copies of Complainant’s motion pictures for viewing. Respondent’s use of the disputed domain name is evidence of bad faith registration and use under both Policy ¶¶ 4(b)(iii) and 4(b)(iv).
Respondent has established a pattern of bad faith domain name registrations by registering multiple domain names containing the marks of other third-parties.
Respondent had constructive and actual knowledge of Complainant and its rights in the DISNEY mark.
In registering the domain name, Respondent falsely represented that the domain name would not be used to infringe the rights of another.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant had, and has, rights in its DISNEY mark at all times relevant to this proceeding.
Respondent registered the <watchdisney.com> domain name on July 24, 2009.
At the time the at-issue domain name was registered, Respondent had actual knowledge of Complainant’s rights in the DISNEY mark.
Respondent is not authorized to use Complainant’s mark in any capacity.
Respondent has registered other domain names that contain the trademarks of third-parties.
At the time the Complainant filled its complaint, the at-issue domain name resolved to a website that offered unauthorized copies of Complainant’s motion pictures for viewing online.
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.
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.”).
The at-issue domain name is confusingly similar to a mark in which Complainant has trademark rights.
Complainant owns multiple trademark registrations with the USPTO for the DISNEY mark (e.g., Reg. No. 1,162,727 registered July 28, 1981). Thereby Complainant shows that it has rights in the DISNEY mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <watchdisney.com> domain name is confusingly similar to Complainant’s DISNEY trademark. The at-issue domain name contains Complainant’s entire DISNEY mark while adding the prefix “watch,” a term that is suggestive of Complaint’s visually oriented products. To construct the at-issue domain name Respondent merely appended the generic top-level domain “.com” to “watchdisney.” Such additions to Complainant’s mark are insufficient to remove Respondent’s domain name from the realm of confusing similarity. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Respondent lacks rights and legitimate interests in respect of the at-issue domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie case acts conclusively.
There is nothing in the record indicating Respondent has rights or legitimate interest in respect of the domain name. No evidence controverts Complainant’s assertion that Respondent is not authorized to use Complaint’s trademark and so the assertion is taken as true. Relevant WHOIS information identifies “Gabriel Cano” as the registrant of the <watchdisney.com> domain name; clearly “Gabriel Cano” is in no way similar to the domain name. Therefore, given the foregoing, Respondent is neither authorized to use the DISNEY mark, or commonly known by the <watchdisney.com> domain name pursuant 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).
Furthermore, Respondent registered and used the disputed domain name to offer pirated and unauthorized versions of Complainant’s movies to Internet users for Respondent’s commercial benefit. Respondent’s use of the disputed domain name in this matter does not constitute 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 Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Mar. 6, 2001) (“bona fide use does not exist when the intended use is a deliberate infringement of another’s rights”).
Given Complainant’s undisputed evidence, Complainant satisfies its initial burden and conclusively demonstrates that Respondent lacks both rights and legitimate interests in respect of the at-issue domain name under Policy ¶4(a)(ii).
The Panel finds that Respondent registered and used the at-issue domain names in bad faith based on multiple independent grounds.
First, Complainant shows that Respondent has established a pattern of bad faith conduct by registering domain names that contain the trademarks of third-parties thereby demonstrating bad faith registration and use under Policy ¶ 4(b)(ii). See 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).
Second, as mentioned above Respondent has used the <watchdisney.com> domain name to offer Complainant’s motion picture works to the public without authorization. Such use disrupts Complainant’s business by diverting Internet users from Complainant to Respondent and is evidence of bad faith under Policy ¶ 4(b)(iii). See ALLDATA LLC v. Caiyong, FA 1118372 (Nat. Arb. Forum Jan. 17, 2008) (finding that where respondent’s domain name was used to offer pirated copies of complainant’s products that such use was evidence of bad faith registration and use under Policy ¶ 4(b)(iii)).
Third, Respondent’s use of its confusingly similar domain name in the manner discussed above indicates that Respondent commercially gains, or intends to commercially gain, by using the <watchdisney.com> referenced website to infringe Complainant’s works. Such use of the domain name is compelling evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Warner Bros. Entertainment Inc. v. Rana, Case No. FA304696 (Nat. Arb. Forum Sept. 21, 2004) (respondent’s reliance on confusion for commercial gain constitutes bad faith); see also Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”).
Fifth, Respondent's unauthorized commercial offering of Complainant's well known motion picture works on Respondent’s <watchdisney.com> website shows that Respondent had actual knowledge of Complainant's DISNEY mark and its rights therein prior to registering the at-issue domain name. Likewise, the fame and notoriety of the DISNEY mark also leads to the conclusion that Respondent must have been aware of Complainant’s DISNEY mark. Respondent’s registration of a domain name containing Complainant’s registered trademark, with actual knowledge of such trademark, evidences bad faith under the Policy. See Sun Chronicle v. Web Solutions Inc., FA 94895 (Nat. Arb. Forum Jul. 18, 2000) (holding that registering a well-known mark or failing to check whether the registration would infringe on rights held by another constitutes bad faith registration); See also, Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Finally, Respondent’s registration of the at-issue domain name with actual knowledge of Complainant’s DISNEY trademark shows that in accenting to the operative domain name registration agreement with registrar GoDaddy.com, LLC, Respondent falsely represented that the registration of <watchdisney.com> would not “infringe[s] on the intellectual property rights of another User or any other person or entity.” In fact, Respondent’s intent was precisely to use the at-issue domain name to infringe Complainant’s famous trademark. Such misrepresentation demonstrates bad faith registration. See Google Inc. v. wwwgoogle.com, D2000-1240 (WIPO Nov. 9, 2000) (finding Respondent’s false representation that its domain name did not infringe the rights of any third party as proof of bad faith).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <watchdisney.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 10, 2012
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