Disney Enterprises, Inc. v. Cynthia Harris
Claim Number: FA1308001513320
Complainant is Disney Enterprises, Inc. (“Complainant”), represented by J. Andrew Coombs of J. ANDREW COOMBS, A Professional Corporation, California, USA. Respondent is Cynthia Harris (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <disneyapps.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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 6, 2013; the National Arbitration Forum received payment on August 6, 2013.
On August 6, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <disneyapps.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 August 7, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 27, 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@disneyapps.com. Also on August 7, 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 September 4, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.
A. Complainant makes the following assertions:
1. Respondent’s <disneyapps.com> domain name, the domain name at issue, is confusingly similar to Complainant’s DISNEY mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has rights in the DISNEY mark, used in connection with children’s entertainment. Complainant owns registrations for the DISNEY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,162,727 registered May 5, 1981) and with Australia’s Department of Innovation, Industry, Science, Research and Tertiary Education (“DIISRTE”) (e.g. Reg. No. 198,329 registered Nov. 2, 1965).
Respondent’s <disneyapps.com> domain name is confusingly similar to Complainant’s DISNEY mark. The disputed domain name includes Complainant’s mark in its entirely, along with the term “apps,” which is an abbreviation for the term “applications,” referring to software applications. Further, the disputed domain name includes the generic top-level domain (“gTLD”) “.com.” Respondent has never been commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its DISNEY mark in any way. The disputed domain name resolves to a temporary “privacy statement” page, and the disputed domain name has been inactive for over four years. Respondent had knowledge of Complainant’s mark at the time Respondent registered the disputed domain name because Complainant’s mark is internationally distinctive and famous. Respondent has failed to make an active use of the disputed domain name for the past four years. Respondent registered the <disneyapps.com> domain name on April 12, 2009.
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 has rights in the DISNEY mark, used in connection with children’s entertainment, and owns registrations for the DISNEY mark with the USPTO (e.g., Reg. No. 1,162,727 registered May 5, 1981) and with Australia’s DIISRTE (e.g. Reg. No. 198,329 registered Nov. 2 1965). Therefore, Complainant has rights in the DISNEY mark pursuant to Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Respondent’s <disneyapps.com> domain name is confusingly similar to Complainant’s DISNEY mark. The disputed domain name includes Complainant’s mark in its entirely, along with the term “apps,” which is an abbreviation for the term “applications,” referring to software applications. Further, the disputed domain name includes the generic top-level domain (“gTLD”) “.com.” In Google, Inc. v. Moussaev, FA 1344102 (Nat. Arb. Forum Oct. 7, 2010), the panel found that the additions of the term “apps” and the gTLD “.com” to the complainant’s mark did not negate a finding of confusingly similarity. Therefore, Respondent’s <disneyapps.com> domain name is confusingly similar to Complainant’s DISNEY mark under Policy ¶ (a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent has never been commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its DISNEY mark in any way. The WHOIS record for the disputed domain name lists “Cynthia Harris” as the domain name registrant. Past panels have looked to the WHOIS record to determine whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Respondent was not authorized by Complainant to use the DISNEY mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <disneyapps.com> domain name under Policy ¶ 4(c)(ii).
The <disneyapps.com> domain name resolves to a temporary “privacy statement” page, and the disputed domain name has been inactive for over four years. Non-use of a disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Therefore, because Respondent failed to make an active use of the <disneyapps.com> domain name, Respondent has not made a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
The Panel may look outside the illustrations of bad faith listed in Policy ¶ 4(b), as those illustrations are not meant to be an exhaustive list. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence). Therefore, although Complainant’s contentions fall outside Policy ¶ 4(b), the Panel find still finds bad faith under Policy ¶ 4(a)(iii), because the Panel determines that Complainant’s contentions have merit.
Respondent had actual knowledge of Complainant’s mark at the time Respondent registered the <disneyapps.com> domain name because Complainant’s mark is and was internationally distinctive and famous. Past panels have found that that Complainant’s Disney mark is well known and famous. See, e.g., Disney Enterprises, Inc. v. Intec Solutions, FA 1500886 (Nat. Arb. Forum July 3, 2013) (finding that the respondent had knowledge of Complainant’s mark because it is “popular and well-known”). While constructive notice is sometimes regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Respondent has failed to make an active use of the <disneyapps.com> domain name for the past four years. In Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006), the panel found that non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii). Therefore, Respondent’s failure to make an active use of the <disneyapps.com> domain name constitutes bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <disneyapps.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 7, 2013
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