Disney Enterprises, Inc. v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1311001528183
Complainant is Disney Enterprises, Inc. (“Complainant”), represented by J. Andrew Coombs of J. Andrew Coombs, A Professional Corporation, California, USA. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chasedisneyrewards.com>, registered with INTERNET.BS CORP.
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.
Sandra J. Franklinas Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 4, 2013; the National Arbitration Forum received payment on November 4, 2013.
On November 10, 2013, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <chasedisneyrewards.com> domain name is registered with INTERNET.BS CORP. and that Respondent is the current registrant of the name. INTERNET.BS CORP. has verified that Respondent is bound by the INTERNET.BS CORP. 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 November 11, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 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@chasedisneyrewards.com. Also on November 11, 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 December 3, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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
1. Respondent’s <chasedisneyrewards.com> domain name is confusingly similar to Complainant’s DISNEY mark.
2. Respondent does not have any rights or legitimate interests in the <chasedisneyrewards.com> domain name.
3. Respondent registered and uses the <chasedisneyrewards.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns registrations for its famous DISNEY trademark and related trademarks with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,162,727 registered July 28, 1981.) Complainant owns registrations for its DISNEY REWARDS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,051,507 registered January 24, 2006) and the Panamanian Directorate General of the Industrial Property Registry (“DGIPR”). Through Complainant’s partnership with Chase Bank U.S.A., Complainant offers its Disney Visa rewards program.
Respondent registered the <chasedisneyrewards.com> domain name on January 25, 2008, and uses it to host links to Complainant’s goods and services, and links unrelated to Complainant.
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.”).
The Panel finds that Complainant has established rights in the DISNEY REWARDS mark pursuant to Policy ¶ 4(a)(i) through its registration with the USPTO, regardless of whether Complainant also registered the mark with the Panamanian DGIPR. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Respondent’s <chasedisneyrewards.com> domain name is confusingly similar to Complainant’s DISNEY REWARDS mark because the domain name merely adds the term “chase,” which is descriptive of Complainant’s DISNEY credit cards offered in partnership with CHASE bank. The disputed domain name eliminates the space in the DISNEY REWARDS mark and adds the generic top-level domain (“gTLD”) “.com.” These changes are insufficient to distinguish the disputed domain name from the Complainant’s mark under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Therefore, the Panel finds that the <chasedisneyrewards.com> domain name is confusingly similar to Complainant’s DISNEY REWARDS mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 states that it did not authorize Respondent to use the DISNEY REWARDS mark in a domain name and Respondent is not commonly known as <chasedisneyrewards.com>. Previous panels have held that a respondent is not commonly known by a disputed domain name pursuant to Policy ¶ 4(c)(ii) where there is no evidence in the record, including the WHOIS information, to suggest otherwise and the complainant alleges it did not authorize the respondent to use its mark in a domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The WHOIS information identifies the registrant of <chasedisneyrewards.com> as “Fundacion Private Whois / Domain Administrator,” which does not suggest that Respondent is commonly known as “Chase Disney Rewards.” Thus, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant next alleges that Respondent is using the disputed domain name to host links to Complainant’s own products as well as links to unrelated goods and services, which is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). The Panel notes that the <chasedisneyrewards.com> domain name resolves to a website that displays links entitled “Disney Reward Visa,” “Disney Credit Card Offers” and “Animal Kingdom Lodge Disney,” as well as links such as “Best Credit Card Rewards,” “Hotels Near Magic Kingdom,” “Airline,” “Laptops,” and “DUI Lawyers.” Previous panels have held that a respondent’s use of a disputed domain name is not protected under Policy ¶¶ 4(c)(i) or 4(c)(iii) where the resolving website promotes commercial links offering the complainant’s products, competing products, or unrelated products or services. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant). Accordingly, the Panel finds that Respondent’s use of the <chasedisneyrewards.com> domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
Complainant further alleges that website the resolving from <chasedisneyrewards.com> solicits offers to purchase the disputed domain name, which is further evidence that Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel notes screenshots provided by Complainant showing that Respondent’s website states “Chasedisneyrewards.com could be your domain name! Use the form below to make an offer,” and includes an offer form that potential purchases can submit electronically. See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name). Accordingly, the Panel finds that Respondent’s offering of the disputed <chasedisneyrewards.com> domain name for sale to the public is further evidence of Respondent’s lack of rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent has attempted to sell the disputed domain name, which demonstrates Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i)”); see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"). Thus, the Panel finds that Respondent has demonstrated bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(i).
The disputed domain name resolves to a website that promotes links to both Complainant’s DISNEY Premier Visa products as well as competing credit card products. It is routinely held that a respondent disrupts the complainant’s business in bad faith under Policy ¶ 4(b)(iii) where the disputed domain name resolves to a website that promotes links to the complainant and to the complainant’s competitors. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors). Accordingly, the Panel finds that Respondent has disrupted Complainant’s business, bad faith pursuant to Policy ¶ 4(b)(iii).
Respondent uses the disputed domain name to redirect Internet users to Respondent’s website, where Respondent is profiting in the form of referral fees. This constitutes bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”). Previous panels have presumed that a respondent commercially profits from its use of a disputed domain name where the resolving website promotes links to competing and non-competing commercial websites and the respondent is likely receiving referral fees in exchange for its promotion of such links. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). Thus, the Panel finds that Respondent has demonstrated bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv).
Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the DISNEY REWARDS mark, bad faith registration and use under Policy ¶ 4(a)(iii). Previous panel have found that a respondent demonstrates bad faith under Policy ¶ 4(a)(iii) by registering an infringing domain name with actual notice of the complainant and its rights in the mark appropriated by the domain name. See 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); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”). The Panel finds that there is a clear link between Complainant’s DISNEY REWARDS mark and the content promoted on the website resolving from <chasedisneyrewards.com> demonstrating that Respondent registered the disputed domain name with actual notice of Complainant’s rights in the DISNEY REWARDS mark. This is further evidence of Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii).
The Panel finds that Complainant has satisfied 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 <chasedisneyrewards.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 9, 2013
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