Disney Enterprises, Inc. v. Marjan Mitkovski
Claim Number: FA1209001462705
Complainant is Disney Enterprises, Inc. (“Complainant”) of Burbank, California, USA, represented by J. Andrew Coombs of J. ANDREW COOMBS, A Professional Corporation, of Glendale, California, USA. Respondent is Marjan Mitkovski (“Respondent”) of Bitola, Macedonia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <disneygamesonline.biz>, <disneygamesonline.net>, and <disneyjuegos.biz> (the “Disputed Domain Names”), registered with Godaddy.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.
Douglas M. Isenberg as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 14, 2012; the National Arbitration Forum received payment on September 14, 2012.
On September 14, 2012, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <disneygamesonline.biz>, <disneygamesonline.net>, and <disneyjuegos.biz> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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 September 17, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 8, 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 billing contacts, and to postmaster@disneygamesonline.biz, postmaster@disneygamesonline.net, and postmaster@disneyjuegos.biz. Also on September 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 October 8, 2012.
On October 12, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Douglas M. Isenberg 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
In its Complaint, Complainant contends, in relevant part, as follows:
· Complainant “is a worldwide leading producer of children’s entertainment goods and services such as movies, television programs, books, and merchandise” and owns a variety of trademark registrations including the following registrations with the United States Patent and Trademark Office: Reg. No. 1,162,727 for the mark DISNEY for use in connection with “children's story books” (first used in commerce in 1974, registered on July 28, 1981); and Reg. No. 3,399,724 for the mark DISNEY'S GAME CAFE for use in connection with “entertainment services, namely, providing on-line computer games; providing a web site for downloading video games, computer games and interactive games” (first used in commerce on December 30, 2005; registered on March 18, 2008); and several registrations in Macedonia that consist of or contain the mark DISNEY. These trademarks are collectively referred to hereafter as the “Disney Trademark.”
· Annexes containing printouts of websites using the Disputed Domain Names show that they are being used in connection with games related to the DISNEY Trademark. Complainant alleges that these websites “make[…] available to play online pirated or unauthorized copies of current and discontinued flash games produced by Complainant” and “also include[…] links to other websites offering third-party games.”
· Complainant contacted Respondent about the domain name <disneygamesonline.biz> on July 11, 2012. In response thereto, Respondent said that he “bought” the domain name in a “legal way” from the Registrar. In a follow-up e-mail, Respondent stated, “You want to transfer the domain name from my name to your company, but do you have an offer for me to do it? I paid money for that site and who will bear the cost of all the time even I have this site?” In response thereto, Complainant wrote: “We can offer you USD$15 for the domain name,” but, apparently, Respondent did not reply.
· The Disputed Domain Names are confusingly similar to the DISNEY Trademark because they contain the mark “DISNEY” in its entirety plus “certain generic words, which relate to Complainant’s businesses.”
· Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because, inter alia, “Respondent is not authorized by Complainant” to use any of the Disputed Domain Names; “Respondent registered and uses the Domain Names to infringe Complainant’s rights in the Trademarks and to trade off of Complainant’s goodwill”; Respondent “attempt[ed] to sell the disputed domain name [<disneygamesonline.biz>] to Complainant”; and “Respondent is not and has not been commonly known by” any of the Disputed Domain Names.
· Respondent has registered and is using the Disputed Domain Names in bad faith because, inter alia, “[b]y using the disputed Domain Names and diverting Internet traffic to websites not owned or otherwise approved by Complainant, Respondent is trading on the value of the Trademarks established by Complainant”; “Respondent is using the Domain Names, which are confusingly similar to the [Disney] Trademarks, to redirect Internet users to Respondent’s commercial website that features goods and services that compete with Complainant’s business”; Respondent’s “websites feature infringing and pirated content not authorized by Complainant”; Respondent “attempt[ed] to sell the Domain Names”; “Respondent has established a pattern of conduct by registering multiple domain names infringing the same marks”; and Respondent refused to “transfer[…] the wrongfully acquired Domain Names after being notified by Complainant of the unauthorized use.”
B. Respondent
In its Response, Respondent states, in relevant part: “[<disneygamesonline.biz>], [<disneygamesonline.net>] and [<disneyjuegos.biz>], that I freely and legally bought from GoDaddy I no longer use and all data have been deleted. I didn’t bought [sic] these Domains with intention to sell them or for any other abuse. Transfer can therefore be made or to be removed from my account.”
The Panel finds that the Disputed Domain Names are confusingly similar to the DISNEY Trademark; that Respondent has no rights or legitimate interests in respect of any of the Disputed Domain Names; and the Disputed Domain Names were registered and are being used 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.
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the DISNEY Trademark. This is consistent with previous decisions under the Policy. See, e.g., Disney Enterprises, Inc. v. personal, FA 1361730 (Nat. Arb. Forum Dec. 31 2010) (“trademark registrations with federal trademark authorities conclusively establish Complainant’s rights in its DISNEY mark under Policy ¶ 4(a)(i)”).
As to whether the Disputed Domain Names are identical or confusingly similar to the DISNEY Trademark, the relevant comparisons to be made are with the second-level portions of the domain names only (i.e., “disneygamesonline” and “disneyjuegos”), as it is well-established that the top-level domain names (i.e., “.biz” and “.net”) should be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Ed., paragraph 1.2 (“WIPO Overview 2.0”) (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”).
The addition of certain words, as here (that is, “game”, “online” and “juegos”[1]), do not necessarily negate a finding of confusing similarity. Indeed, “the addition of generic and descriptive terms do not remove the disputed domain name from the realm of confusing similarity.” Disney Enterprises, Inc. v. personal, FA 1361730 (Nat. Arb. Forum Dec. 31, 2010) (finding the domain name <watchdisneymoviesonline.com> confusingly similar to the DISNEY Trademark).
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
Complainant has argued that, inter alia, “Respondent is not authorized by Complainant” to use any of the Disputed Domain Names; “Respondent registered and uses the Domain Names to infringe Complainant’s rights in the Trademarks and to trade off of Complainant’s goodwill”; Respondent “attempt[ed] to sell the disputed domain name [<disneygamesonline.biz>] to Complainant”; and “Respondent is not and has not been commonly known by” any of the Disputed Domain Names.
Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Ed., paragraph 2.1.
Accordingly, as a result of Complainant’s allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has proven the second element of the Policy.
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy ¶ 4(b).
In this case, Complainant has stated that, “Respondent’s registration and use of the Domain Names meet the bad faith elements set forth in Section 4(b)(i) of the UDRP.” However, despite Complainant’s characterization of its own offer to purchase one of the Disputed Domain Names from Respondent for $15 as an “attempt[…] to sell” the Disputed Domain Names, the Panel finds this characterization inaccurate and misleading given that the exchange related to only one of the three Disputed Domain Names, the offer was made by Complainant, and there is no reason to think that the $15 price offered by Complainant is “for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name.”
The Panel also finds inaccurate and misleading Complainant’s statement that, “Respondent also evidences bad faith in its failure to cease and desist from wrongful use of the Domain Names by not transferring the wrongfully acquired Domain Names after being notified by Complainant of the unauthorized use,” given Complainant’s own citation to RRI Financial Inc. v. Ray Chen, D2001-1242. In that case, as summarized in Complainant’s own words: “a failure to respond to cease and desist demands is a factor supporting a finding of bad faith.” Here, however, Respondent did not fail to respond to Complainant’s communication regarding (only) one of the three Disputed Domain Names; in fact, Respondent engaged in multiple communications, stating his (albeit mistaken) belief that he was entitled to the relevant domain name because he “bought” the domain name in a “legal way” from the Registrar.
Despite the above concerns, the Panel finds that bad faith exists pursuant to paragraph 4(b)(iv) of the Policy. As numerous prior panels have found, using domain names under the circumstances present in this case, in connection with websites offering services that compete with Complainant, constitutes bad faith. See, e.g., The Am. Auto. Ass.’n, Inc. v. Emil Cohen, World Mktg., D2012-1638 (WIPO Oct. 5, 2012); Am. Auto. Ass’n Inc. v. Texas Int’l Prop. Assocs., D2007-0592 (WIPO Aug. 13, 2007) (finding bad faith where “Respondent offers on the website connected to the domain name products and services that compete directly with Complainant’s”); and Six Continents Hotels, Inc. v. Telmex Mgmt. Servs., D2001-0996 (WIPO March 14, 2002) (“The deliberate adoption of Complainant’s well-known trade marks without any apparent right or interest therein, raises a prima facie presumption of bad faith registration, and Complainant’s demonstrated use of the domain names to link to other [competing] service sites… demonstrates bad faith use”).
Accordingly, the Panel is satisfied that Complainant has proven the third element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <disneygamesonline.biz>, <disneygamesonline.net>, and <disneyjuegos.biz> domain names be TRANSFERRED from Respondent to Complainant.
Douglas M. Isenberg, Panelist
Dated: October 16, 2012
[1] Complainant failed to explain the meaning of “juegos” in the Complaint. The Panel has conducted independent research and believes this word is Spanish for “games.”
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