Disney Enterprises, Inc. v. Intec Solutions OU
Claim Number: FA1305001500886
Complainant is Disney Enterprises, Inc. (“Complainant”), represented by J. Andrew Coombs of J. ANDREW COOMBS, A Professional Corporation, California, United States. Respondent is Intec Solutions OU (“Respondent”), Estonia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <disneymusicals.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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 20, 2013; the National Arbitration Forum received payment on May 20, 2013.
On May 22, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <disneymusicals.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 23, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 12, 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@disneymusicals.com. Also on May 23, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 19, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Policy ¶ 4(a)(i)
i. Complainant, Disney Enterprises, Inc., is a producer of entertainment goods and services such as movies, television programs, musicals, cruise lines, and merchandise.
ii. Complainant owns rights in the trademark DISNEY through ownership of registrations with the United States Patent and Trademark Office (“USPTO”) for the DISNEY mark (Reg. No. 1,162,727, registered July 28, 1981). See Complainant’s Exhibit F.
iii. Complainant is the owner of domain names: <disney.com>, <disneyonbroadway.com>, and <disneymusic.com>.
iv. Complainant previously owned the at-issue domain name, <disneymusicals.com>, from August 16, 2007 to August 16, 2012, until Complainant inadvertently failed to renew its registration.
v. Respondent’s disputed domain name is confusingly similar to Complainant’s DISNEY mark.
2. Policy ¶ 4(a)(ii)
i. Respondent’s domain name uses Complainant’s DISNEY mark without authorization from Complainant.
ii. The disputed domain name is being passively held by the Respondent, which shows Respondent does not have rights or legitimate interests in the domain name.
iii. Complainant once held the disputed domain name, but when Complainant inadvertently allowed the domain name to lapse, Respondent registered the domain name for itself.
3. Policy ¶ 4(a)(iii)
i. Respondent has demonstrated a pattern of bad faith by registering multiple domain names that appear to infringe on famous trademarks such as “eBay” and “Facebook.”
ii. Respondent had actual and constructive notice of Complainant’s DISNEY mark at the time the disputed domain name was registered.
iii. Since Respondent registered the at-issue domain name on November 3, 2012, Respondent has failed to make active use the domain name, because the domain name resolves to a page which states, “Notice: This domain has been redirected.” This inactive use evidences bad faith.
iv. Respondent opportunistically registered the disputed domain name around three months after Complainant inadvertently failed to renew its registration. See Exhibit C (Respondent registered the at-issued domain name on November 3, 2012); see also Complainant’s Exhibits J & K (Disney Enterprises’ registration of the at-issue domain name expired August 16, 2012).
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its DISNEY mark.
2. Respondent’s <disneymusicals.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name 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 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.”).
Complainant asserts that it is the owner of a trademark registration for the DISNEY mark (e.g., Reg. No. 1,162,727, registered July 28, 1981) with the USPTO. See Complainant’s Exhibit F. The Panel notes that Complainant appears to reside in the United States. Accordingly, the Panel finds that Complainant’s registraton of the DISNEY mark with the USPTO sufficiently demonstrates its rights in the mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant argues that Respondent’s <disneymusicals.com> domain name is confusingly similar to the DISNEY mark, because it fully incorporates the mark and the added word “musicals” does nothing to distinguish the Respondent’s domain name from Complainant’s mark. Panels have previously found that the addition of a generic term to a mark in a domain names does not negate a finding of confusing similarity. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).
Complainant also acknowledges that the disputed domain name adds the generic top-level domain name (“gTLD”) “.com” to the mark. The Panel finds that the addition of a gTLD is irrelevant for the purpose of a Policy ¶ 4(a)(i) confusing similarity analysis. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Therefore, the Panel finds that the <disneymusicals.com> domain name is confusingly similar to the DISNEY mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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 asserts that it has never authorized Respondent to use its DISNEY mark. The Panel notes that the WHOIS information identifies “Intec Solutions OU” as the registrant of the disputed domain name. See Complainant’s Exhibit C. The Panel accordingly holds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant also suggests that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Specifically, Complainant contends that Respondent is inactively holding the domain name because the domain name resolves to a page which states, “Notice: This domain has been redirected.” In Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006), the panel held that the non-use of a domain name was not a use which falls within the protective scope of Policy ¶¶ 4(c)(i) and 4(c)(iii). Thus, the Panel finds that Respondent’s inactive use of the domain name is not a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Moreover, Complainant contends that it was the prior registrant of the disputed domain name. Complainant asserts that Respondent registered the domain name a short time after Complainant indavertently allowed its own reigstration of the domain name to lapse. Specifically, Complainant allowed its registration of the <disneymusicals.com> domain name to expire on August 16, 2012; Respondent registered the same domain name on November 3, 2012. In Clark v. HiNet, Inc., FA 405057 (Nat. Arb. Forum Mar. 4, 2005), the Panel found that the respondent lacked rights or legitimate interests in the domain name because it failed to respond to the complaint and it “opportunistically” registered the domain name when the complainant inadvertently allowed its own registration to lapse. Thus, because Respondent registered the disputed domain name shortly after the accidental lapse of registration by Complainant and did not respond to this Complaint, the Panel finds that Respondent opportunistically registered the domain name and lacks any rights or legitimate interests under Policy ¶4(a)(iii).
Complainant alleges that Respondent has registered multiple domain names which appear to infringe on well-known marks such as “Facebook” and “eBay.” See Complainant’s Exhibit I (listing domain names registered under the e-mail address of mandrik@gmail.com); see also Complainant’s Exhibit C (noting that Respondent’s administrative contact has the e-mail address mandrik@gmail.com). Complainant contends that the registration of these domain names tends to show that Respondent has established a pattern of bad faith under Policy ¶ 4(b)(ii). However, the Panel notes that the domain names listed in Complainant’s Exhibit I have not been the subject of adverse UDRP decisions and are in no way involved in the present dispute. Thus, the Panel chooses to disregard Complainant’s allegation under Policy ¶ 4(b)(ii).
Complainant contends that Respondent’s registration and use of the disputed domain name are a product of bad faith. While Policy ¶ 4(b) sets out four factors which a panel may consider in determining bad faith, this list was not meant to be exclusive. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). Therefore, the Panel determines bad faith based on the totality of the circumstances.
Complainant further contends that Respondent’s inactive holding of the domain name demonstrates bad faith, since it tends to show that Respondent had no purpose in registering the domain name other than to infringe on Complainant’s rights. The Panel notes that the disputed domain name resolves to a page which states, “Notice: This domain has been redirected.” Accordingly, the Panel holds that Respondent’s non-use of the domain name is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose).
Next, Complainant argues that Respondent’s opportunistic registration of the domain name less than three months after Complainant allowed its own registration of the domain name to lapse tends to show bad faith under Policy ¶ 4(a)(iii). Given the timing of Respondent’s registration, coupled with its incorporation of Complainant’s well-known mark, the Panel finds opportunistic bad faith under Policy ¶ 4(a)(iii). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”).
Finally, Complainant asserts that Respondent had actual and constructive knowledge of its DISNEY mark, since its mark is well-known, was registered with the USPTO, and has been used by the Complainant for decades. The Panel notes that a respondent’s constructive notice of a complainant’s ownership of a mark is insufficient to support a finding of bad faith under Policy ¶ 4(a)(iii). See Meredith Corp. v. CityHome, Inc., D2000-0223 (WIPO May 18, 2000) (finding that the respondent’s constructive notice of the complainant’s registered mark was insufficient to support a finding of bad faith registration). However, the Panel also notes that a respondent’s actual knowledge of a complainant’s ownership of a mark can be inferred based on the facts, and such an inference is sufficient to support a finding of bad faith under Policy ¶ 4(a)(iii). See Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (“The Panel also finds that there are reasonable grounds to infer that Respondent had actual notice of Complainant’s rights in the mark as well. Complainant’s Radio & Records Magazine is a leading business journal covering an industry towards which Respondent’s services are marketed. Therefore, the Panel finds that Respondent registered the <radioandrecordsmagazine.com> domain name despite having constructive and actual notice of Complainant’s rights in the RADIO & RECORDS mark. Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii).”) Here, because Complainant’s DISNEY mark is popular and well-known, and because Complainant registered its ownership of the mark with the USPTO, the Panel infers that Respondent had actual knowledge of Complainant’s rights in the DISNEY mark, and thus also infers that Respondent acted in bad faith under 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 <disneymusicals.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 3, 2013
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