Disney Enterprises, Inc. and Marvel Entertainment, LLC. V. The Real Deal LLC
Claim Number: FA1206001448223
Complainant is Disney Enterprises, Inc. and Marvel Entertainment, LLC. (“Complainant”), represented by J. Andrew Coombs of J. ANDREW COOMBS, A Professional Corporation, California, USA. Respondent is The Real Deal LLC (“Respondent”), Missouri, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <findingnemo3dmovie.com>, <frankenweeniemovie.com>, <ironman3dmovie.com>, <littlemermaid3dmovie.com>, <monsters3dmovie.com>, <monsters3movie.com>, <monstersinc3dmovie.com>, <monstersu3d.com>, <monstersumovie.com>, and <thelittlemermaid3dmovie.com>, registered with Godaddy.Com, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 11, 2012; the National Arbitration Forum received payment on June 11, 2012.
On June 12, 2012, Godaddy.Com, Llc confirmed by e-mail to the National Arbitration Forum that the <findingnemo3dmovie.com>, <frankenweeniemovie.com>, <ironman3dmovie.com>, <littlemermaid3dmovie.com>, <monsters3dmovie.com>, <monsters3movie.com>, <monstersinc3dmovie.com>, <monstersu3d.com>, <monstersumovie.com>, and <thelittlemermaid3dmovie.com> domain names are registered with Godaddy.Com, Llc and that Respondent is the current registrant of the names. 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 June 13, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 3, 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@findingnemo3dmovie.com, postmaster@frankenweeniemovie.com, postmaster@ironman3dmovie.com, postmaster@littlemermaid3dmovie.com, postmaster@monsters3dmovie.com, postmaster@monsters3movie.com, postmaster@monstersinc3dmovie.com, postmaster@monstersu3d.com, postmaster@monstersumovie.com, and postmaster@thelittlemermaid3dmovie.com. Also on June 13, 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 July 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <findingnemo3dmovie.com>, <frankenweeniemovie.com>, <ironman3dmovie.com>, <littlemermaid3dmovie.com>, <monsters3dmovie.com>, <monsters3movie.com>, <monstersinc3dmovie.com>, <monstersu3d.com>, <monstersumovie.com>, and <thelittlemermaid3dmovie.com> domain names are confusingly similar to Complainant’s marks.
2. Respondent does not have any rights or legitimate interests in the <findingnemo3dmovie.com>, <frankenweeniemovie.com>, <ironman3dmovie.com>, <littlemermaid3dmovie.com>, <monsters3dmovie.com>, <monsters3movie.com>, <monstersinc3dmovie.com>, <monstersu3d.com>, <monstersumovie.com>, and <thelittlemermaid3dmovie.com> domain names.
3. Respondent registered and uses the <findingnemo3dmovie.com>, <frankenweeniemovie.com>, <ironman3dmovie.com>, <littlemermaid3dmovie.com>, <monsters3dmovie.com>, <monsters3movie.com>, <monstersinc3dmovie.com>, <monstersu3d.com>, <monstersumovie.com>, and <thelittlemermaid3dmovie.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns trademark registrations with the USPTO for its FINDING NEMO (e.g., Reg. No. 3,403,724 registered March 25, 2008), IRON MAN (e.g., Reg. No. 2,442,890 registered April 10, 2001), THE LITTLE MERMAID (e.g., Reg. No. 4,119,509 filed January 27, 2011; registered March 27, 2012), MONSTERS, INC. LAUGH FLOOR (e.g., Reg. No. 3,446,040 registered June 10, 2008), and MONSTERS INC. MIKE & SULLEY TO THE RESCUE! (e.g., Reg. No. 3,206,861 registered February 6, 2007) marks.
Complainant owns common law rights in its FRANKENWEENIE and MONSTERS UNIVERSITY marks based on the fame of the marks world-wide.
Respondent registered the disputed domain names on February 1, 2012, and uses them to redirect users to its commercial website which features links to commercial sites related to Complainant’s products.
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.”).
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” The two Complainants in this matter are Disney Enterprises, Inc. and Marvel Entertainment, LLC. Complainants state that they are affiliate companies, both owned by the Walt Disney Company. Complainants further claim that they are well-known as leading producers of movies, television programs, books and merchandise. Complainants argue that they have continuously used their marks in correlation with their motion pictures and merchandise and have acquired registrations for many of their trademarks.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Organizing Comm. for the 2010 Olympic and Paralymic Games and Int’l Olympic Comm. v. Hardeep Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
Here, the Panel finds that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and will treat them all as a single entity in this proceeding.
The Panel finds that Complainant has rights in its FINDING NEMO, IRON MAN, THE LITTLE MERMAID, MONSTERS, INC. LAUGH FLOOR, MONSTERS INC. and MIKE & SULLEY TO THE RESCUE!, pursuant to Policy ¶ 4(a)(i) through its trademark registrations. 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 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). The Panel also finds that Complainant’s rights in the THE LITTLE MERMAID mark dates back to at least the filing date of January 27, 2011. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant claims that FRANKENWEENIE and MONSTERS UNIVERSITY marks hold secondary meaning and are famous and distinctive throughout the United States and the world. Previous UDRP cases have held that complainant need not own a valid trademark registration for its mark in order to demonstrate its rights in the mark under Policy 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Complainant alleges that they have common law rights in the United States in its FRANKENWEENIE and MONSTERS UNIVERSITY marks through widespread, continuous use of the mark and trade name in connection with Complainant’s business. Complainant submits evidence of filing trademark applications for FRANKENWEENIE (e.g., Serial Number 85,381,609 filed July 26, 2011), and MONSTERS UNIVERSITY (e.g., Serial Number 85,275,634 filed March 24, 2011). Complainant states that the FRANKENWEENIE mark was originally used in 1984 and has continuously been used since that time in connection with DVD and Blue-ray releases. Complainant also states that they will release a motion picture Frankenweenie in October 2012. Complainant presents evidence of use of the MONSTERS UNIVERSITY mark in production, presentation, distribution, and rental of motion picture films. Based on the evidence provided, the Panel finds that Complainant has common law rights in its FRANKENWEENIE and MONSTERS UNIVERSITY marks pursuant to Policy ¶ 4(a)(i). See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); see also Toyota Sunnyvale v. Adfero Publ’g Co., FA 921194 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the complainant’s TOYOTA SUNNYVALE mark had acquired secondary meaning sufficient for it to establish common law rights in the mark through continuous and extensive use of the mark since 2003 in connection with a car dealership under that mark).
Respondent’s <findingnemo3dmovie.com>, <frankenweeniemovie.com>, <ironman3dmovie.com>, <littlemermaid3dmovie.com>, <monsters3dmovie.com>, <monsters3movie.com>, <monstersinc3dmovie.com>, <monstersu3d.com>, <monstersumovie.com>, and <thelittlemermaid3dmovie.com> domain names are confusingly similar to Complainant’s FINDING NEMO, FRANKENWEENIE, IRON MAN, THE LITTLE MERMAID, MONSTERS, INC. LAUGH FLOOR, MONSTERS INC. MIKE & SULLEY TO THE RESCUE!, and MONSTERS UNIVERSITY marks. The disputed domain names incorporate the marks in their entirety and merely add generic terms that relate to Complainant’s business, along with generic top-level domain (“gTLD”) “.com.” These alterations are insufficient to differentiate the disputed domain names from Complainant’s marks. Therefore, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s FINDING NEMO, FRANKENWEENIE, IRON MAN, THE LITTLE MERMAID, MONSTERS, INC. LAUGH FLOOR, MONSTERS INC. MIKE & SULLEY TO THE RESCUE!, and MONSTERS UNIVERSITY marks. See 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.”); see also Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name was confusingly similar to the complainant’s MINNESOTA STATE LOTTERY mark under Policy ¶ 4(a)(i)); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also m. Online, Inc. v. Tullo, FA 150811 (Nat. Arb. Forum Apr. 15, 2003) (finding that the <3daol.com> domain name is confusingly similar to the complainant’s AOL mark because “…the addition of the prefix ‘3d’ does nothing to ‘distinguish’ Respondent’s domain name from Complainant’s registered trademarks.”); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Memoirs, Inc. v. Patel, FA 98244 (Nat. Arb. Forum Aug. 28, 2001) (finding the domain name to be confusingly similar where a period was omitted from the I.MEMOIRS mark and the gTLD “.com” was added).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 states that Respondent is not commonly known by the <findingnemo3dmovie.com>, <frankenweeniemovie.com>, <ironman3dmovie.com>, <littlemermaid3dmovie.com>, <monsters3dmovie.com>, <monsters3movie.com>, <monstersinc3dmovie.com>, <monstersu3d.com>, <monstersumovie.com>, and <thelittlemermaid3dmovie.com> domain names. The WHOIS information lists “The Real Deal LLC” as the domain registrant, demonstrating no connection between Respondent and the <findingnemo3dmovie.com>, <frankenweeniemovie.com>, <ironman3dmovie.com>, <littlemermaid3dmovie.com>, <monsters3dmovie.com>, <monsters3movie.com>, <monstersinc3dmovie.com>, <monstersu3d.com>, <monstersumovie.com>, and <thelittlemermaid3dmovie.com> domain names. Thus, the Panel finds that Respondent is not commonly known by the <findingnemo3dmovie.com>, <frankenweeniemovie.com>, <ironman3dmovie.com>, <littlemermaid3dmovie.com>, <monsters3dmovie.com>, <monsters3movie.com>, <monstersinc3dmovie.com>, <monstersu3d.com>, <monstersumovie.com>, and <thelittlemermaid3dmovie.com> 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 Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Complainant claims that Respondent has no legitimate interest in the <findingnemo3dmovie.com>, <frankenweeniemovie.com>, <ironman3dmovie.com>, <littlemermaid3dmovie.com>, <monsters3dmovie.com>, <monsters3movie.com>, <monstersinc3dmovie.com>, <monstersu3d.com>, <monstersumovie.com>, and <thelittlemermaid3dmovie.com> domain names. Complainant asserts that Respondent is not authorized in any way by Complainant to use any of these domain names. Complainant also contends that Respondent is using the <findingnemo3dmovie.com>, <frankenweeniemovie.com>, <ironman3dmovie.com>, <littlemermaid3dmovie.com>, <monsters3dmovie.com>, <monsters3movie.com>, <monstersinc3dmovie.com>, <monstersu3d.com>, <monstersumovie.com>, and <thelittlemermaid3dmovie.com> domain names to redirect users to a website that display links to commercial sites related to Complainant’s business and unrelated to Complainant. The Panel notes that some of the links include: “Real Deal Movie Tickets,” “Media,” “Event Tickets,” “Joe’s Chili Bowl at The Terrace View,” “Fazoli’s,” “Sun for Less,” “Monster®-Official Site,” “Moshimonsters,” and “50% off in Los Angeles.” Complainant further contends that the <monstersu3d.com> domain name resolves to a page that is being passively held by Respondent. The Panel notes, however, that the resolving website still contains links to various other websites. The Panel presumes that these links are pay-per-click links from which Respondent benefits. Previous panels have found that using a confusingly similar domain name to profit from links for third parties related and unrelated to a complainant’s business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also 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)). Thus, the Panel finds that Respondent’s use of the disputed domain names to feature pay-per-click links for competing and unrelated businesses does not constitute a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial fair use under Policy ¶4(c)(iii).
Complainant also asserts that Respondent attempted to sell the <findingnemo3dmovie.com>, <frankenweeniemovie.com>, <ironman3dmovie.com>, <littlemermaid3dmovie.com>, <monsters3dmovie.com>, <monsters3movie.com>, <monstersinc3dmovie.com>, <monstersu3d.com>, <monstersumovie.com>, and <thelittlemermaid3dmovie.com> domain names to Complainant, a further indication that Respondent does not have rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). Previous panels have held that attempting to sell the disputed domain name to a complainant further enforces that there are no rights or legitimate interests in the domain name. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”). Respondent does not make a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial fair use under Policy ¶4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent attempted to sell the <findingnemo3dmovie.com>, <frankenweeniemovie.com>, <ironman3dmovie.com>, <littlemermaid3dmovie.com>, <monsters3dmovie.com>, <monsters3movie.com>, <monstersinc3dmovie.com>, <monstersu3d.com>, <monstersumovie.com>, and <thelittlemermaid3dmovie.com> domain names to Complainant. Previous panels have found that offering to sell a domain name that is confusingly similar to a complainant’s mark is evidence of bad faith. See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"): see also Wrenchead.com, Inc. v. Hammersla, D2000-1222 (WIPO Dec. 12, 2000) (finding that offering the domain name for sale at an auction site is evidence of bad faith registration and use). The Panel finds that Respondent acted in bad faith pursuant to Policy ¶ 4(b)(i) when attempting to sell domain names that are confusingly similar to Complainant’s marks.
Complainant argues that Respondent has established a pattern of bad faith registration by registering multiple domain names infringing on Complainant’s marks. Previous panels have found that registration of multiple domain names in a single case satisfies the requirement of bad faith under Policy ¶4(b)(ii). See YAHOO! INC v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in the respondent's registration of two domain names incorporating the complainant's YAHOO! mark); see also Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (“Registration of more than one domain name that infringes on another’s registered mark(s) supports the inference that Respondent knew of Complainant’s marks upon registering the domain names . . . [and t]he registration of multiple domain names that infringe on Complainant’s trademarks is evidence of a pattern of conduct.”). Accordingly, the Panel finds that Respondent has engaged in a pattern of bad faith domain name registrations under Policy ¶ 4(b)(ii).
Respondent uses the confusingly similar domain names to divert and redirect Internet users to Respondent’s website featuring commercial goods and services competing with and disrupting Complainant’s business. Thus, the Panel finds that Respondent registered and uses the <findingnemo3dmovie.com>, <frankenweeniemovie.com>, <ironman3dmovie.com>, <littlemermaid3dmovie.com>, <monsters3dmovie.com>, <monsters3movie.com>, <monstersinc3dmovie.com>, <monstersu3d.com>, <monstersumovie.com>, and <thelittlemermaid3dmovie.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iii). See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent is intentionally using the confusingly similar domain names to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks. Previous panels have found bad faith registration under Policy ¶ 4(b)(iv) under these circumstances. See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant). Thus, the Panel finds that Respondent registered and uses the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant contends that, in light of the fame and notoriety of Complainant's FINDING NEMO, FRANKENWEENIE, IRON MAN, THE LITTLE MERMAID, MONSTERS, INC. LAUGH FLOOR, MONSTERS INC. MIKE & SULLEY TO THE RESCUE!, and MONSTERS UNIVERSITY marks, it is inconceivable that Respondent could have registered the <findingnemo3dmovie.com>, <frankenweeniemovie.com>, <ironman3dmovie.com>, <littlemermaid3dmovie.com>, <monsters3dmovie.com>, <monsters3movie.com>, <monstersinc3dmovie.com>, <monstersu3d.com>, <monstersumovie.com>, and <thelittlemermaid3dmovie.com> domain names without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel agrees and finds bad faith as a result of constructive knowledge. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <findingnemo3dmovie.com>, <frankenweeniemovie.com>, <ironman3dmovie.com>, <littlemermaid3dmovie.com>, <monsters3dmovie.com>, <monsters3movie.com>, <monstersinc3dmovie.com>, <monstersu3d.com>, <monstersumovie.com>, and <thelittlemermaid3dmovie.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 18, 2012
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