Disney Enterprises, Inc. v. Volodymyr Miloserdov
Claim Number: FA1207001452770
Complainant is Disney Enterprises, Inc. (“Complainant”), represented by J. Andrew Coombs of J. ANDREW COOMBS, A Professional Corporation, California, USA. Respondent is Volodymyr Miloserdov (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <disneyworldjobsboard.com>, registered with Name.com.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on July 10, 2012; the National Arbitration Forum received payment on July 10, 2012.
On July 11, 2012, Name.com confirmed by e-mail message addressed to the National Arbitration Forum that the <disneyworldjobsboard.com> domain name is registered with Name.com and that Respondent is the current registrant of the name. Name.com has verified that Respondent is bound by the Name.com 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 July 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 1, 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 bil-ling contacts, and to postmaster@disneyworldjobsboard.com. Also on July 12, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail ad-dresses served and the deadline for a Response, was transmitted to Respond-ent via post and fax, to all entities and persons listed on Respondent’s registra-tion 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 August 7, 2012, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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, operating under the DISNEY trademark, is a leading producer of children’s entertainment goods and services, including movies, television pro-grams, books and other merchandise worldwide.
Complainant has registered the DISNEY trademark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,162,727, registered July 28, 1981).
The disputed domain name was registered on April 20, 2010.
Respondent’s <disneyworldjobsboard.com> domain name is confusingly similar to Complainant’s DISNEY mark.
Complainant has not authorized Respondent to use the DISNEY trademark.
Respondent has not been commonly known by the disputed domain name.
Respondent is not making a bona fide offering of goods or services by means of, or a legitimate noncommercial or fair use of, the disputed domain name.
The disputed domain name resolves to a website offering links to the websites of companies offering services that compete with Complainant’s business.
Respondent has no legitimate interest in the contested domain name.
Respondent’s employment of the disputed domain name disrupts Complainant’s business.
Respondent is attempting to employ Complainant’s DISNEY mark to attract Internet users to its website, and thereby to profit through the receipt of click-through fees, by creating a likelihood of confusion among users with respect to the possibility of Complainant’s association with the domain name.
Respondent had actual knowledge of Complainant’s rights in the DISNEY mark when Respondent registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Vert-ical 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 reason-able inferences of fact in the allegations of a UDRP 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.”
Complainant has rights in the DISNEY trademark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that a complainant’s registration of a trademark with the USPTO prior to a respondent’s registration of a disputed domain name is sufficient to prove that that complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction other than that of Respondent’s residence or place of business. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant under the Policy whether a com-plainant has registered its trademark in the country of a respondent’s residence).
Turning then to the central question under Policy ¶ 4(a)(i), we conclude from our review of the record that Respondent’s <disneyworldjobsboard.com> domain name is confusingly similar to Complainant’s DISNEY trademark. The disputed domain name includes the entire DISNEY mark, while adding the generic top-level domain (“gTLD”) “.com,” the generic terms “jobs” and “board,” and the de-scriptive term “world,” which is descriptive of Complainant’s Florida-based theme park, “Disney World.” These alterations of Complainant’s mark, made in forming the contested domain name, do not avoid a finding of confusing similarity as be-tween the domain name and the mark from which it was derived. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002):
[I]t is a well [-] established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
See also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001):
[T]he salient feature of the Domain Names… is identical to a mark in which Complainant has shown prior rights. The addition of the generic term … is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.
Further see Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding a respondent’s domain names confusingly similar to a complainant’s mark where, in creating the domain name, that respondent added common terms such as “buy” or “gear” at the end of the mark).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See, for example, Hanna-Barbera Prods., Inc. v. Entm’t Commen-taries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make a prima facie case that a respondent lacks rights to and legiti-mate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the bur-den shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent does not have rights or legitimate interestsin 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 has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent has not been commonly known by the disputed domain name, that it has not authorized Respondent to use the DISNEY mark in any way, and that Respondent has no legitimate interest in the contested domain name. More-over, the pertinent WHOIS information identifies the registrant of the disputed domain name only as “Volodymyr Miloserdov,” which does not resemble the con-tested domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in that domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names, and so had no rights to or legitimate interests in those domain names under Policy ¶ 4(c)(ii), where the relevant WHOIS information, as well as all other evidence in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not auth-orized that respondent to register a domain name containing its mark).
We next observe that Complainant asserts, without objection from Respondent, that Respondent is not be making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name, in that Re-spondent resolves the disputed domain name to a website offering links to the websites of companies that offer services in competition with Complainant’s bus-iness. Further, in the circumstances described, we may comfortably presume that Respondent profits from the operation of the resolving website in the manner alleged in the Complaint. This is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that a respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use where “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”); see also WeddingChan-nel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that a respondent’s use of a disputed domain name to redirect Internet users to web-sites unrelated to a complainant’s mark, websites from which that respondent presumably received a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(ii).
It is plain from the record that Respondent’s undenied use of the disputed do-main name as alleged in the Complaint disrupts Complainant’s business. This is evidence that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008):
Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to … products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
In addition, it appears from the record that Respondent attempts to attract Inter-net users to its website, and to profit through the receipt of click-through fees, by creating a likelihood of confusion with Complainant’s DISNEY mark via the creation and employment of a domain name which is confusingly similar to that mark. Complainant states that the disputed domain name resolves to a website offering links to Complainant’s competitors. This stands as evidence that Re-spondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent’s domain name resolved to a website with links to third-party websites that offered services similar to a complainant’s); see also Ass’n of Junior Leagues Int’l Inc. v. This Domain Name May Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that a respondent’s use of a disputed domain name to maintain a pay-per-click site displaying links unrelated to a complainant, and to generate click-through revenue, suggested bad faith registration and use of the domain name under Policy ¶ 4(b)(iv)).
Finally under this head of the Policy, we are persuaded from the evidence that Respondent knew of Complainant’s rights in the DISNEY mark when it registered the disputed domain name. This is further evidence that Respondent registered and uses the domain name in bad faith. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where a respondent was "well-aware of” a complainant's mark at the time of its domain name registration).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <disneyworldjobsboard.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 20, 2012
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