Disney
Enterprises, Inc. v. Dot Stop
Claim
Number: FA0302000145227
Complainant is
Disney Enterprises, Inc., Burbank, CA (“Complainant”) represented
by J. Andrew Coombs, of J. Andrew Coombs, A Professional Corporation.
Respondent is Dot Stop, Mahopac, NY (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <disneycard.com> and <disneymovie.com>,
registered with Bulkregister.Com, Inc.
The
undersigned certifies that he has acted independently and impartially and, to
the best of his knowledge, has no known conflict in serving as Panelist in this
proceeding.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on February 10, 2003; the Forum received a hard copy of the
Complaint on February 10, 2003.
On
February 10, 2003, Bulkregister.Com, Inc. confirmed by e-mail to the Forum that
the domain names <disneycard.com> and <disneymovie.com>
are registered with Bulkregister.Com, Inc. and that Respondent is the current
registrant of the names. Bulkregister.Com,
Inc. has verified that Respondent is bound by the Bulkregister.Com, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On
February 13, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 5, 2003 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical, administrative
and billing contacts, and to postmaster@disneycard.com and
postmaster@disneymovie.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
March 11, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed the Honorable Charles K.
McCotter, Jr. (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 <disneycard.com> and
<disneymovie.com> domain names are confusingly similar to
Complainant’s DISNEY mark.
2. Respondent does not have any rights or
legitimate interests in the <disneycard.com> or <disneymovie.com>
domain names.
3. Respondent registered and used the <disneycard.com>
and <disneymovie.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
holds numerous trademark registrations with the United States Patent and Trademark
Office (“USPTO”) for its DISNEY mark, including Reg. No. 1,162,727 (registered
July 28, 1981) related to children’s storybooks and a newspaper. Complainant also holds a trademark for
DISNEY.COM in relation to providing a wide variety of information in the fields
of entertainment, education, news, weather, sports, recreation and games via
multi-user global computer information networks.
Respondent
registered the <disneycard.com> domain name on April 18,
2001. Respondent is using the disputed
domain name to divert Internet traffic to a commercial search engine,
<dotstop.com>, which links to various sites that offer free Disney
movies, breast enhancement and online gambling. Respondent registered the <disneymovie.com> domain
name on April 15, 2001. Respondent is
using this disputed domain name to redirect Internet users to a website that
provides links to Complainant’s “Disney Movie Club” website and Respondent’s
<dotstop.com> 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.
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 has established
that it has rights in the DISNEY mark through a number of trademark
registrations with the USPTO.
Respondent’s <disneycard.com>
and <disneymovie.com> domain names are confusingly similar to
Complainant’s famous DISNEY mark because the disputed domain names incorporate
Complainant’s entire mark and simply add the generic terms “card” and “movie”
to the end of Complainant’s mark.
Panels have consistently held that the addition of a generic term to a
famous mark does not sufficiently distinguish disputed domain names to survive
a confusing similarity challenge. 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 Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied).
Thus, the Panel
finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
not filed a Response. Therefore, the
Panel is permitted to make reasonable inferences in favor of Complainant and to
accept the allegations in the Complaint as true. See 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”); see also Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum
July 31, 2000) (holding that Respondent’s failure to respond allows all
reasonable inferences of fact in the allegations of Complainant to be deemed
true).
Furthermore, the
Panel may presume that Respondent lacks any rights or legitimate interests in
the disputed domain names based on Respondent’s failure to respond. See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that once Complainant asserts that Respondent has no rights or legitimate
interests with respect to the domain, the burden shifts to Respondent to
provide credible evidence that substantiates its claim of rights and legitimate
interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9,
2000) (finding that by not submitting a Response, Respondent has failed to
invoke any circumstance that could demonstrate any rights or legitimate
interests in the domain name).
Respondent is
using the <disneycard.com> and <disneymovie.com>
domain names to divert Internet users to its commercial website. The use of a confusingly similar domain name
to redirect Internet traffic for Respondent’s profit is neither a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Big Dog Holdings, Inc. v. Day, FA 93554
(Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was
diverting consumers to its own website by using Complainant’s trademarks); see
also Kosmea Pty Ltd. v. Krpan,
D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where
Respondent has an intention to divert consumers of Complainant’s products to
Respondent’s site by using Complainant’s mark).
Respondent has
not come forward with any evidence to establish that it is commonly known by
DISNEYCARD, DISNEYMOVIE, <disneycard.com> or <disneymovie.com>. Moreover, Respondent would be hard pressed
to establish that it is commonly known by the disputed domain names because of
the fame of Complainant’s DISNEY mark. As a result, the Panel infers that
Respondent has no rights or legitimate interests in the disputed domain names
pursuant to Policy ¶ 4(c)(ii). See
Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28,
2001) (finding sufficient proof that Respondent was not commonly known by a
domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because
of Complainant’s well-established use of the mark).
Thus, the Panel
finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <disneycard.com> and <disneymovie.com>
domain names to divert Internet users to its commercial website. The Panel may infer that Respondent is
making a profit from the Internet traffic that is diverted to Respondent’s
website. Respondent is therefore using
confusingly similar domain names to create Internet-user confusion for its own
commercial benefit, which is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that
Respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to
attract Internet users to its commercial website); see also State Fair of Texas v. Granbury.com, FA
95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent
registered the domain name <bigtex.net> to infringe on Complainant’s
goodwill and attract Internet users to Respondent’s website).
Moreover,
Respondent’s registration of two domain names that are confusingly similar to
Complainant’s DISNEY mark establishes a pattern of registering domain names to
prevent Complainant from reflecting its mark in a corresponding domain name,
which is evidence of bad faith registration and use pursuant to 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 Respondent's registration of two
domain names incorporating Complainant's YAHOO! mark); see also Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000)
(finding that registering multiple domain names in a short time frame
indicates an intention to prevent the mark holder from using its mark and
provides evidence of a pattern of conduct).
Thus, the Panel
finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <disneycard.com> and <disneymovie.com>
domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
March 17, 2003
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