national arbitration forum

 

DECISION

 

Disney Enterprises, Inc. v. dns admin

Claim Number: FA1310001526979

 

PARTIES

Complainant is Disney Enterprises, Inc. (“Complainant”), represented by J. Andrew Coombs of J. ANDREW COOMBS, A Professional Corporation, California, USA.  Respondent is dns admin (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <chasedisney.com>, registered with MONIKER.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electron-ically on October 28, 2013; the National Arbitration Forum received payment on October 28, 2013.

 

On October 30, 2013, MONIKER confirmed by e-mail to the National Arbitration Forum that the <chasedisney.com> domain name is registered with MONIKER and that Respondent is the current registrant of the name.  MONIKER has veri-fied that Respondent is bound by the MONIKER 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 October 31, 2013, the Forum served the Complaint and all Annexes, includ-ing a Written Notice of the Complaint, setting a deadline of November 20, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all en-tities and persons listed on Respondent’s registration as technical, administrat-ive, and billing contacts, and to postmaster@chasedisney.com.  Also on October 31, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses 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.

 

The National Arbitration Forum has not received from Respondent a response meeting the requirements of the Policy and its accompanying Rules.  The Nation-al Arbitration Forum has therefore transmitted to the parties a Notification of Respondent Default.

 

However, the Forum has received from Respondent a non-compliant e-mail mes-sage reciting its position as to the ultimate disposition of this proceeding, which is discussed below.

 

On November 25, 2013, pursuant to Complainant's request to have the dispute decided 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 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

Complainant is a leading producer and marketer of children’s entertainment goods and services worldwide.

 

Complainant has a commercial relationship with Chase Bank through which it offers to consumers its Disney Premier Visa or Disney Rewards Visa cards, which allow consumers to accrue points and redeem them for towards the purchase of Complainant’s goods and services.

 

Complainant has rights in the DISNEY trademark, used in connection with the marketing of children’s entertainment goods and services.

 

Complainant holds registrations for the DISNEY trademark, on file with the United States Patent and Trademark Office (“USPTO”) (including Registry No. 1,162,727, registered July 28, 1981).

Respondent registered the <chasedisney.com> domain name on July 27, 2008.

 

The domain name is confusingly similar to Complainant’s DISNEY mark.

 

Respondent has not been commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its DISNEY mark in any way.

 

The domain name resolves to a website featuring a “Special Notice for Chase Customers” and a link to another website offering a credit score monitoring service.

 

Respondent does not have any rights to or legitimate interests in the contested domain name.

 

Respondent has established a pattern of creating domain names derived from other famous trademarks, including “Pepsi,” “Sprint PCS,” and “Boost Mobile.”

 

Respondent employs the contested domain name to attract Internet users by creating a likelihood of confusion with Complainant’s DISNEY mark.

 

It may be presumed that Respondent receives click-through revenue from the operation of the link displayed on the resolving website.

 

Respondent knew of Complainant and its DISNEY mark prior to registering the <chasedisney.com> domain name.

 

Respondent registered and uses the domain name in bad faith.

 

 

 

B. Respondent

Respondent failed to submit a Response in this proceeding which in compliance with the requirements of the Policy and its accompanying Rules.  However, in an e-mail message addressed to the National Arbitration Forum, Respondent has recited as follows: 

My understanding is that you would like the domain transfered [sic] to you.  I would agree to do that immediately if you were willing to release us of any further liability…. Hope we can resolve this quickly and amicably [.]                                                                                     

 

DISCUSSION

Paragraph 4(a) of the Policy requires that, in the ordinary course, Complainant must prove each of the following in order to obtain from a Panel an order that a domain name be transferred:

 

i.      the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

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.

 

Notwithstanding the foregoing, Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accord-ance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

 

Further, Policy ¶ 3(a) provides for the transfer of a domain name registration upon the written instructions of the parties to a UDRP proceeding without the need for otherwise required findings and conclusions (see, for example, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat. Ar. Forum Jan. 13, 2004;  to the same effect, see also Disney Enterprises, Inc. v. Morales, FA 475191 (Nat. Arb. Forum Jun. 24, 2005)). 

 

DECISION

Respondent’s non-compliant e-mail message does not contest the material alle-gations of the Complaint, and, in particular it does not contest Complainant’s request that the disputed domain name be transferred to Complainant.  Rather, it expresses a willingness to have the domain name transferred to complainant.  Thus the parties have effectively agreed in writing to a transfer of the subject domain name from Respondent to Complainant without the need for further proceedings.

 

Accordingly, it is hereby Ordered that the <chasedisney.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  December 5, 2013