Disney Enterprises, Inc. and Marvel Characters, Inc. v. Greg Bienstock / Scott Stock / Scott Bienstock
Claim Number: FA1212001475077
Complainant is Disney Enterprises, Inc. and Marvel Characters, Inc. (“Complainant”), represented by J. Andrew Coombs of J. Andrew Coombs, A Professional Corporation, California, USA. Respondent is Greg Bienstock / Scott Stock / Scott Bienstock (“Respondent”), represented by Bruce J. Koch of Schmidt LLC, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <aladdinonbroadway.com>, <aladdinthemusical.com>, <aladdinmusical.com>, <disneymeetup.com>, <disneyonbroadway.net>, <disneythemusical.com>, <mickeymouseonbroadway.com>, <spider-manonbroadway.com>, <spider-manthemusical.com>, <spidermanonbroadway.net>, <tangledonbroadway.com>, <thedisneydream.com>, and <thedisneyfantasy.com>, registered with Godaddy.com, LLC.
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.
Hon. Sir Ian Barker QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 10, 2012; the National Arbitration Forum received payment on December 10, 2012.
On December 11, 2012, Godaddy.Com, Llc confirmed by e-mail to the National Arbitration Forum that the <aladdinonbroadway.com>, <aladdinthemusical.com>, <aladdinmusical.com>, <disneymeetup.com>, <disneyonbroadway.net>, <disneythemusical.com>, <mickeymouseonbroadway.com>, <spider-manonbroadway.com>, <spider-manthemusical.com>, <spidermanonbroadway.net>, <tangledonbroadway.com>, <thedisneydream.com>, and <thedisneyfantasy.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 December 17, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 28, 2013 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@aladdinonbroadway.com, postmaster@aladdinthemusical.com, postmaster@aladdinmusical.com, postmaster@disneymeetup.com, postmaster@disneyonbroadway.net, postmaster@disneythemusical.com, postmaster@mickeymouseonbroadway.com, postmaster@spider-manonbroadway.com, postmaster@spider-manthemusical.com, postmaster@spidermanonbroadway.net, postmaster@tangledonbroadway.com, postmaster@thedisneydream.com, and postmaster@thedisneyfantasy.com. Also on December 17, 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.
A timely Response was received and determined to be complete on January 28, 2013.
Additional Submissions from Complainant on February 4, 2013 and from the Respondent on February 12, 2013. Both have been determined to be compliant with The Forum’s Supplemental Rule #7.
On February 7, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Sir Ian Barker QC 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
The Complainants, Disney Enterprises Inc. and Marvel Characters Inc. are affiliated companies and should be considered as a single entity for the purposes of the dispute. Both are owned by the Walt Disney Company. The named Respondent, Greg Bienstock and Scott Bienstock and Scott Stock should be considered as a single entity for the purposes of the dispute. The contact information for each is the same. The Complainant alleges that the variation in Respondent identity is a device to avoid responsibility.
For the sake of convenience, the parties on each side shall be referred to as “the Complainant” and “the Respondent”.
The Complainant owns registered trademarks in the United States as follows:
i. DISNEY (Reg. No. 1,162,727 registered Jul. 28, 1981);
ii. MICKEY MOUSE & Design (Reg. No. 247,156 registered Sep. 18, 1928);
iii. DISNEY DREAM (Reg. No. 3,951,384 filed Mar. 10, 2009; registered Apr. 26, 2011);
iv. DISNEY FANTASY (Reg. No. 4,161,559 filed Mar. 10, 2009; registered Jun. 19, 2012);
v. ALADDIN’S MAGIC CARPET RIDE mark (Reg. No. 2,391,940 registered October 3, 2000);
vi. TANGLED mark (Reg. No. 4,222,266 filed Feb. 12, 2010; registered Oct. 9, 2012); and
vii. SPIDER-MAN mark (Reg. No. 3,553,440 filed May 2, 2008; registered Dec. 30, 2008).
The Complainant contended in its original Complaint that it has an additional trademark registration for the SPIDER-MAN mark (Reg. No. 959,887 registered May 29, 1973) but the Complainant did not provide evidence such as a copy of the registration document in the original Complaint.
The Complainant is a leading producer of entertainment goods and services such as music, movies, television programs, Broadway musicals, cruise lines, books and merchandise. It uses its marks in association with these offerings. The Complainant owns numerous domain name registrations incorporating these trademarks. The trademarks have acquired a secondary meaning as being associated with the Complainant.
The disputed domain names are confusingly similar to the Complainant’s marks.
The Respondent has no rights or legitimate interests in any of the disputed domain names. The Complainant gave him none. Nor is the Respondent commonly known by the disputed domain name.
All the disputed domain names except <aladdinthemusical.com> currently resolve to landing pages which have links to sites both related to the Complainant’s products and services and to unrelated third party websites. The disputed domain names <aladdinthemusical.com> and <aladdinmusical.com> currently resolve to social networking pages unrelated to the Complainant.
The Respondent’s use of the disputed domain names does not and cannot constitute a bona fide offering of goods or services, given the fame of the Complainant’s trademarks worldwide.
The Respondent has established a pattern of bad faith registration by registering multiple domain names infringing upon the same marks of the same complainant. All the disputed domain names feature goods and services that compete with the Complainant’s business thus disrupting the Complainant’s business and indicating bad faith.
The Respondent’s use of the disputed domain names is intentionally to attract internet users and to profit from receipt of “click-through” fees, thereby creating a strong likelihood of confusion with the Complainant’s marks. Therefore, there is evidence of bad faith under Paragraph 4(b)(iv) of the Policy. Furthermore, the Respondent has not made active use of the disputed domain names.
The Respondent shows bad faith by failing to respond to a ‘cease and desist’ letter.
Given the fame and widespread marketing of the Complainant’s marks, the Respondent must have had notice of the Complainant’s rights when registering the disputed domain names. The marks are internationally distinctive and famous and the Respondent must have known of the marks prior to registration.
Accordingly, for the above reasons, the disputed domain names were registered and are being used in bad faith.
B. Respondent
The Complainants are improperly joined. There is insufficient evidence to demonstrate a connection between the Complainants. There is a general summary of The Walt Disney Company which is not one of the Co-Complainants. Exhibit K (“the Summary”) to the Complaint fails to give any evidence of where Disney Enterprises Inc. fits into the corporate structure of The Walt Disney Company and does not say anything about Disney Enterprises Inc.’s use of the trademarks in issue. The Walt Disney Company is not a complainant. The summary fails to give any information regarding the Co-Complainant, Marvel Characters Inc.
The Respondent has been active in the entertainment business for many years. His first involvement was with a Broadway musical called ‘The People of Godspell’. Since 2007, he has been trying to write and produce shows, including one based on the story of Alladin.
The Respondent registered the disputed domain names in connection with contemplated or actual business ventures including writing, producing and organizing theatrical shows and movies, fan meet-up websites and travel-related ventures. The Respondent filed an affidavit to support his contentions.
The disputed domain names were registered as follows:
i. The <aladdinonbroadway.com> domain name on January 26, 2012;
ii. The <aladdinthemusical.com> domain name on November 4, 2007;
iii. The <aladdinmusical.com> domain name on November 4, 2007;
iv. The <disneymeetup.com> domain name on January 6, 2008;
v. The <disneyonbroadway.net> domain name on May 23, 2007;
vi. The <disneythemusical.com> domain name on February 8, 2008;
vii. The <mickeymouseonbroadway.com> domain name on May 23, 2007;
viii. The <spider-manonbroadway.com> domain name on May 22, 2012;
ix. The <spider-manthemusical.com> domain name on May 22, 2012;
x. The <spidermanonbroadway.net> domain name on May 23, 2007;
xi. The <tangledonbroadway.com> domain name on November 22, 2010;
xii. The <thedisneydream.com> domain name on January 10, 2010; and
xiii. The <thedisneyfantasy.com> domain names on January 26, 2012.
The Respondent typically registered variations of the same domain name because it is unknown at the inception of any business which domain name will be best remembered by internet users.
The disputed domain names are not confusingly similar to the Complainant’s trademarks. In particular, the disputed domain names: <aladdinonbroadway.com>, <aladdinthemusical.com> and <aladdinmusical.com> are not confusingly similar to the Respondents mark “ALADDINS MAGIC CARPET RIDE”. There are 219 United States trademark applications which include the word “Aladdin”.The disputed domain name <disneymeetup.com> is not confusingly similar to the Disney mark since all internet users recognize this is a fan site.
The remaining disputed domain names are not confusingly similar since all add distinctive words to the mark which prevents a finding of confusing similarity.
The Complainant did not satisfy its burden as it made no analysis to show how any of the disputed domain names are confusingly similar.
The Respondent has rights and legitimate interests in all the disputed domain names. They do not infringe the Complainant’s trademarks and therefore the Respondent does not need the Complainant’s permission to register them. The disputed domain names currently resolve to pages that contain links to advertisements provided by GoDaddyLLC and the Respondent has nothing to do with the content of those pages. The Respondent receives only nominal compensation.
The Respondent has a full-time job and limited financial means. His business ventures associated with the disputed domain names are “works in progress”. The Respondent had been trying to organise a stage version of Alladin prior to the Complainant’s stage version, thus demonstrating the Respondent’s rights in the Alladin disputed domain names. He has also been trying to organise various other theatrical productions demonstrating rights in domain names including “on broadway” and “the musical”. He has rights in <disneymeet.com> because fan sites are legitimate uses of domain names and he has already created a number of meet-up sites.
The fact that many of the disputed domain names are currently parked does not change the legitimate use of the disputed domain names.
The Respondent has not registered and is not using the disputed domain names in bad faith because none of the disputed domain names is co-extensive with any of the trademarks. He has no intent to sell the disputed domain names to the Complainant or a competitor. There is no pattern of bad faith registration. He has never been the subject of any proceeding under the Policy.
The Respondent’s business practice has been to register variations of the same second-level domain to find the one best remembered by internet users.
The disputed domain names contain official links from an entity of the Complainant itself for services related to the Complainant itself. The disputed domain names are not the same as the trademarks and the Respondent is not profiting from the disputed domain names. Operating domains to generate income through ‘click-through’ fees is not evidence of bad faith. There must be evidence the domains are confusingly similar and that the Respondent is using them to divert existing competitors.
The Respondent’s current passive use of the dispute domain names is not evidence of bad faith because the Respondent is attempting to develop the websites in connection with current conceived business endeavours.
The Respondent seeks a declaration of Reverse Domain Name Hijacking against the Complainant.
There can be no bad faith registration of <spidermanonbroadway.net> because it was registered on May 23, 2007 and the SPIDERMAN trademark was not registered until May 2, 2008.
C. Complainant’s Additional Submissions
The Complainants are appropriately joined in the dispute. Joinder is appropriate where there is a link between the two parties, including such relationships as those established by a licence, a partnership or an affiliation. These two Complainants have been properly joined in other disputes – see Disney Enterprises Inc. and Marvel Entertainment LLC v. The Real Deal LLC (NAF, July 18, 2002) (the ‘Real Deal’ case’). Moreover, the Respondent has shown no prejudice caused by the joinder.
The Complainant has rights in the SPIDER-MAN mark which was first registered on May 29, 1973. The Complainant has rights in a design mark ALADIN because of registration with the French trademark authority on March 30, 1993. The disputed domain names incorporating Alladin are confusingly similar to that mark.
The Respondent has no rights or legitimate interests in the disputed domain names. No evidence is offered of the purported music business ventures: there is no operational website for any of these projects, despite the fact that many of the disputed domain names have been registered for some years. Even if the Respondent is preparing to use the disputed domain names for a different purpose, the current competing use with the ‘click-through’ sites is not a bona fide offering of goods and services, nor a legitimate non-commercial or fair use.
The Respondent admits that he profits from the disputed domain names. The Complainant has not engaged in reverse domain name hijacking or initiated the dispute for an improper purpose. The trademarks clearly prevent the Respondent’s registration of the disputed domain names.
D. Respondent’s Additional Submissions
The Complainant’s additional submissions should be rejected because the Complainant has not shown exceptional circumstances warranting consideration of their additional submission by the Panel.
Forum Rule 7 allows the filing of an additional submission only where it reflects newly discovered evidence not reasonably available to the submitting party at the time of its original filing or where it rebuts arguments by the opposing party that the submitting party could not reasonably have anticipated. Where additional submissions are justified by newly discovered evidence or the need to rebut arguments not reasonably anticipated, the Panel should regard this additional submission only to the extent that it addresses those issues which should regard extraneous material in the submission.
The Complainant should have identified the exceptional circumstances warranting its additional submission. It made no attempt to do so. There is no newly-discovered evidence. The French design trademark for ALADIN depicting a boy in Middle-Eastern garb (registered 20 years before the Complaint was filed) was registered by The Walt Disney Company and transferred to the Complainant, Disney Enterprises Limited. Accordingly, the Complainant had knowledge of this French trademark and therefore the trademark can hardly be said to be newly-discovered evidence.
Regarding the SPIDER-MAN trademark which was filed in 1973, the Complainant did not supply a copy of the trademark registration documents with the Complaint and should not be allowed to make up for this error in the additional submission.
The Complainant’s additional submission does not rebut arguments that the Complainant could reasonably have anticipated. For example, the Complainant should have reasonably expected that the Respondent would allege that the disputed domain names are not confusingly similar to the ALLADIN’S MAGIC CARPET RIDE trademark.
The Complainant’s additional submission should be rejected because the Complainant purported to amend the Complaint by introducing the reference to the French trademark. The Complainant admits that its argument in Exhibit K in the Complaint did not satisfy the nexus requirement for Co-Complainants. The argument that Disney Enterprises Inc. and Marvel Entertainment LLC have been joined in other proceedings under the Policy fails because the Respondent did not defend in the Real Deal’ case. The Panel there was entitled to proceed on the basis of the statements in the Complaint being correct.
Here there is prejudice to the Respondent because the Complainant is trying to “muddle together” all the disputed domain names and to assert trademark rights without analysis in order to cover deficiencies in the evidence for certain domain names by referring to evidence solely related to other domain names. The bare assertion of a nexus for joinder backed does not provide correct evidence. This is symptomatic of the Complainant’s lack of good faith.
The Complainants believed they could “bully” a lone individual to transfer the domain through a threatening letter from the Complainant’s outside counsel and then “slapping together” a complaint with many deficiencies to coerce a transfer and by calling him a ‘cybersquatter’ in a pejorative manner.
When the Panel considers the Complainants’ Additional Submission, the evidence shows that the disputed domain names are not confusingly similar and that the Respondent has a legitimate interest in a number of the disputed domain names as registered or used in bad faith.
As far as the Alladin domain names are concerned, the Complainants have “desperately searched far and wide” and came up with a French design which is not confusingly similar. There is no evidence that the French design mark is “alive”. No new information exists after February 12, 2003. “Alladin” does not have a secondary meaning but is the subject of 219 United States trademarks, 19 of them consisting solely of the word “Alladin”. Therefore, the Complainants knew that they could not get a trademark in the United States for “Alladin”. The evidence alleged for a common-law mark is insufficient. The story of Alladin is hundreds of years old and is in the public domain and the Complainant does not have an absolute monopoly of works relating to Alladin merely based on a 1992 movie or a 1993 French design mark.
The domain name <disneymeetup.com> is not confusingly similar to the Complainant’s trademark. It is used by the Respondent for many social meetings. “Fan sites” by their very nature have to include in the domain name a word that will allow fans to recognize the type of fan-site. See 2001 White Castle Way Inc. v. Jacobs (WIPO D2004-0001), holding that the respondent had rights and legitimate interests in a domain name where the respondent was operating a fan website with information on the complainant, a recording artist.
The remaining domain names are not identical or confusingly similar because there is no analysis filed by the Complainant and the domain names add distinctive words to the trademark concerned.
The Respondent produced a further affidavit deposing to his long interest in the theatre in New York City; that he conceived and developed websites to service and host different interests and other business ventures. Contrary to the Complainant’s argument, he is not in direct competition with the Complainant’s own products and services, including musicals under the same name. He registered the “Alladin” domain names in 2007 and the Complainants have admitted they have only recently been working on a stage version of the motion picture Alladin.
As to the argument that the Respondent has not developed any of the disputed domain names, the Respondent has over 2,000 domain names and cannot be expected to develop all of them since he is a person with limited resources and has a full-time job. Delay in putting-up content does not necessarily show bad faith – see Edward Van Halen v. Deborah Morgan (WIPO D2000-1313). Fan sites are a legitimate use of a domain name.
The Respondent does not profit from the disputed domain names. He gets about 10 cents per month from the ‘click-through’ services. He did not registered the disputed domain names in bad faith. In particular, he could not have been expected to have known about the French design mark and could not reasonably be expected to search every trademark database in the world.
The Complainant did not produce the French design mark until it filed Additional Submissions. The uncontested fact is that there are 219 US trademarks which consist of or contain the word “Alladin”. A Google search for “Alladin” yielded about 91.8m hits. Even assuming knowledge of the Complainant’s trademarks before registration, the disputed domain names were not registered in bad faith because none of the names is confusingly similar to any of the trademarks because of the addition of non-generic words.
The Respondent has not used the disputed domain names in bad faith. They do not contain links to competitors’ products. The Alladin domain names resolve to social networking pages. The <disneymeetup.com> contains links to Disney Parks, Disneyland ticket deals, etc. which are official links to products related to Disney. They are not directing users to competitors. Passive use is not per se use in bad faith and bad faith must be proved.
There is no attempt by the Respondent to disrupt the business of a competitor. The Respondent’s current passive use is understandable. The Complainant’s categorization of the Respondent as a cybersquatter is defamatory. There is no evidence the Respondent has offered for sale the disputed domain names to the Complainant or any third party, or indeed, has ever offered to sell any of his domain names. Nor has he been the subject of a transfer order under the Policy.
The Respondent urges a finding of reverse domain name hijacking in respect of the Alladin domain names because the Complainant did not have the good faith basis to require a transfer. The trademark was weak and was only discovered by the Complainant in the submissions in reply. The ‘cease and desist’ letters sent by the Complainants’ outside counsel gave the Respondent only three days to comply.
(a) The disputed domain names <disneymeetup.com>, <disneyonbroadway.net>, <disneythemusical.com>, <mickeymouseonbroadway.com>, <spider-manonbroadway.com>, <spider-manthemusical.com>, <spidermanonbroadway.net>, <tangledonbroadway.com>, <thedisneydream.com>, and <thedisneyfantasy.com> are confusingly similar to trademarks in which the Complainant has rights.
(b) The aladdinonbroadway.com>, <aladdinthemusical.com>, <aladdinmusical.com> are not confusingly similar to trademarks in which the Complainant has rights.
(c) The Respondent has no legitimate rights or interests in the disputed domain names <disneymeetup.com>, <disneyonbroadway.net>, <disneythemusical.com>, <mickeymouseonbroadway.com>, <spider-manonbroadway.com>, <spider-manthemusical.com>, <spidermanonbroadway.net>, <tangledonbroadway.com>, <thedisneydream.com>, and <thedisneyfantasy.com>.
(d) The disputed domain names <disneymeetup.com>, <disneyonbroadway.net>, <disneythemusical.com>, <mickeymouseonbroadway.com>, <spider-manonbroadway.com>, <spider-manthemusical.com>, <spidermanonbroadway.net>, <tangledonbroadway.com>, <thedisneydream.com>, and <thedisneyfantasy.com> were registered and are being used in bad faith.
(e) There is no ground for a finding against the Complainant of Reverse Domain Name Hijacking.
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.
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:
(a) Disney Enterprises Inc.; and
(b) Marvel Characters Inc., which is an affiliate of Disney Enterprises, which is owned by The Walt Disney Ceompany. Marvel is the owner of multiple registrations and the Complainant alleges that there is a link between the two parties. It refers to the Real Deal case which provides a suitable precedent.
NAF Panels have interpreted Supplement 1(e) (to allow multiple parties to proceed as one when they can show a sufficient link). See, for example, American Family Health Services Group v Logan (NAF FA208854).
Although the Complainant should probably have provided more detail, it is averred that there is a sufficient nexus between the two Complainants.
The application by the Respondent is without merit and it is hard to see what prejudice, if any, there has been to the Respondent by allowing the multiple Complainants to proceed. The trademarks are clearly all within the Disney empire. The Panel adopts the reasoning of the Panelist in the Real Deal case. The fact that that case had been undefended is not a ground of distinction from the present case since this is a jurisdictional point. The completely unmeritorious objection by the Respondent is dismissed.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
As far as the multiple Respondents are concerned, Mr Bienstock in his first affidavit indicates that he is known by each of the three names which, in fact, pertain to one and the same person. So the joinder of three Respondents was a wise precaution.
Respondent’s Objection to Complainant’s Additional Submission
Although in the experience of this Panel, a reasonably relaxed attitude has been taken by this Panelist and others to the filing of additional submissions, the Respondent clearly has a point in that the additional submissions should not be an excuse for a Complainant to make up for not providing information in the Complaint, as it should have done. There is no reason offered by the Complainant as to why it waited until the additional submissions and the receipt of a Response to file evidence of the French trademark back in 1993. Moreover, in its first Complaint, it referred to the 1973 US trademark for SPIDER-MAN but did not bother to provide the reference documents.
The Panel takes the view that it should allow both lots of additional submissions but it will not allow evidence on the 1993 French trademark for the word ALADIN. That should have been produced in the Complainant’s original filing. As it happens, even if the French mark were admitted, it would have made no difference to the Panel’s finding. As to the 1973 mark for SPIDER-MAN, there seems no doubt about it and its details so the Panel is prepared to consider it.
Before parting with this aspect of the dispute, the Panel notes that the Additional Submission of the Respondent was far too long and repetitive. It embellished many of the allegations made in the initial Response.
The Panel will consider the three Aladdin domain names and the <disneymeetup.com> domain name separately.
The remainder of the disputed domain names are clearly confusingly similar to registered trademarks in which the Complainant has rights. The disputed domain names which incorporate the word “Disney”, apart from the <disneymeetup.com> domain name clearly are generic add-ons to a well-known registered trademarks.
The trademark is the dominant feature of the disputed domain name. All the add-ons referring to “broadway”, “musical”, “dream” and “fantasy” enhance the concept conjured up by the trademarked words of DISNEY, Mickey Mouse, Spiderman and Tangled. Three of the trademarks refer to well-known shows which have played on Broadway. The addition of the words “onbroadway” really emphasis the trademark more than any non-generic add-ons. See the cases summarised in WIPO Overview of WIPO Panel Views on Selected UDRP Questions (Second Edition) (“WIPO Overview 2.0”) at paragraph 1.9.
The disputed domain name <disneymeetup.com> is allegedly the key to a fan site operated without any co-operation or input from the object of the fan site. Such a domain name can be confusingly similar to a trademark. The domain name certainly indicates to the internet user that it has some sort of endorsement from the Disney organisation. The threshold test for confusing similarity is a comparison between the trademark and the disputed domain name to determine likelihood of internet confusion. See WIPO Overview Paragraph 1.2.
See also WIPO Overview Paragraph 2.5 View 2. This Panelist adopts that view as noted and refers to the decisions there cited as authority. The basic reason is that even a ‘fan site’ prevents the trademark holder from exercising its rights to the mark and managing its presence on the internet.
As to the Respondent’s submission about the SPIDER-MAN trademark, the Panel accepts the existence of the Complainant’s 1973 trademark. Moreover, the application for the 2008 trademark predated the registration of the disputed domain name. Once registration was granted, the trademark’s force commenced at the date of application for registration.
It is clear that all the disputed domain names except for the three Aladdin ones are confusingly similar to the Complainant’s registered marks.
As for the three Aladdin domain names, the only trademark is ALADDIN’S MAGIC CARPET RIDE. The Panel has decided not to consider the French trademark for ALADDIN.
It must now be decided whether the disputed domain names are confusingly similar to the registered trademark ALADDIN’S MAGIC CARPET RIDE. The word “Aladdin” is a generic one in a sense in that it refers to the well-known children’s story of a Middle-Eastern boy, Aladdin, and his magic lamp. The Complainant’s evidence of a common-law trademark for the word comes nowhere near the standard required for proof of a common-law trademark and therefore cannot be taken into account. So the test is whether the words ‘MAGIC CARPET RIDE’ added to the word ‘ALADDIN’S’ is sufficient to show that the Alladin disputed domain names are confusingly similar to the sole trademark.
In the Panel’s view, they are not because of the generic quality of the word Aladdin and the added words of the registered mark which seem to be directed towards a production bearing the rather lengthy name, ALADDIN’S MAGIC CARPET RIDE. The fact that there are many other trademarks not owned by the Complainant incorporating the word “ALADDIN” emphasises the generic quality of the word.
Accordingly, the Panel concludes that the three Aladdin disputed domain names <aladdinonbroadway.com>, <aladdinthemusical.com>, <aladdinmusical.com> are not confusingly similar to a mark in which the Complainant has rights and that the Complaint must fail in respect of those disputed domain names.
The Complainant must make out first a prima facie case that the Respondent lacks legitimate rights and interests in the disputed domain names. The burden then shifts to the Respondent to show that he does have rights and legitimate interests. Here, the Complainant has shown that it never authorised the Respondent to reflect any of its marks in the disputed domain names.
The Complainant points to the fact that these disputed domain names currently resolve to websites displaying links to both related and unrelated party websites. This does not give the Respondent rights or legitimate interests. The Panel adopts the views on ‘click sites’ summarised in WIPO Overview Paragraph 2.6 where such links are, as here they obviously are, based on the value of the trademarks. Such parking exercises with domains referring to the trademarks of others are unfair. A registrant must take responsibility for what is on his website.
The Respondent has failed to demonstrate that he comes within Paragraph 4(c)(i) of the Policy. Other than his say-so, there is little evidence of demonstrable preparations for legitimate use of the domain name. What has been provided falls short of satisfying the onus of proof on the Respondent. Delay in producing a website is a factor in reaching this conclusion. There is also no evidence, as is not infrequent, of instructions to a web designer, for example.
As far as bad faith is concerned, the fame of the DISNEY mark and the Disney Broadway productions indicate that anybody registering a name to reflect any of these concepts would know the Disney organisation would almost certainly have trademarks. Such a person should be put on some sort of notice because of the notoriety of the marks. Moreover, the Respondent claims familiarity with the theatre and musical shows. So it is simply unbelievable that he would have registered the disputed domain names in ignorance of the Complainant’s likely trademarks.
The fact that the domain names are passive and that a ‘click-through’ procedure is in place has the effect of seducing internet users into the belief that there is some sort of authorization or approval from the Disney organisation. That fact alone is sufficient to indicate continuing bad faith use.
The marks are so internationally distinctive that the Respondent must have had actual knowledge of them prior to registration. Using confusingly similar domain names in goods indicates that the Respondent is seeking to profit from their use.
The fact that the amounts received from the click-through sites are minimal is not a consideration. The Respondent bears the responsibility for what is on his website, even if it has been placed there without his express approval by a parking service.
Reverse Domain Name Hijacking
In the Panel’s view, this is not an appropriate case for a finding of reverse domain name hijacking. Although the Complainant can be criticized for coming up in its Additional Submission with a trademark which it should have mentioned earlier in its Additional Submission, this is not a case where the claim is virtually hopeless or made in bad faith such as would justify a finding of Reverse Domain Name Hijacking which is therefore rejected. See WIPO Overview Paragraph 4.17.
(1) Accordingly, it is Ordered that:
(a) the disputed domain names <disneymeetup.com>, <disneyonbroadway.net>, <disneythemusical.com>, <mickeymouseonbroadway.com>, <spider-manonbroadway.com>, <spider-manthemusical.com>, <spidermanonbroadway.net>, <tangledonbroadway.com>, <thedisneydream.com>, and <thedisneyfantasy.com> domain names be TRANSFERRED from Respondent to Complainant; and
(b) The disputed domain names <aladdinonbroadway.com>, <aladdinthemusical.com>, <aladdinmusical.com>, are ordered to remain with the Respondent.
(2) The Respondent’s application for a finding of Reverse Domain Name Hijacking is denied.
Hon. Sir Ian Barker QC Panelist
Dated: February 22, 2013
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