Disney Enterprises, Inc. v. ORIENTS RUGS & MORE / NA
Claim Number: FA1404001555495
Complainant is Disney Enterprises, Inc. (“Complainant”), represented by J. Andrew Coombs of J. ANDREW COOMBS, A Professional Corporation, California, USA. Respondent is ORIENTS RUGS & MORE / NA (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <disneyindia.com>, registered with eNom, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 23, 2014; the National Arbitration Forum received payment on April 23, 2014.
On April 24, 2014, eNom, Inc. confirmed by email to the National Arbitration Forum that the <disneyindia.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 April 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 15, 2014 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@disneyindia.com. Also on April 25, 2014, the Written Notice of the Complaint, notifying Respondent of the email 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 May 20, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin 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
Complainant is a worldwide leading producer of children’s entertainment goods and services. Complainant uses the DISNEY mark in connection with these goods and services; the mark was registered in the United States in 1981 and in India in 1993.
Complainant contends that the disputed domain name <disneyindia.com> is confusingly similar to its DISNEY mark. Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name. In support thereof, Complainant states that Respondent has not been authorized by Complainant to use the domain name or Complainant’s mark, and is not commonly known by the domain name; and that Respondent is using the domain name to infringe Complainant’s trademark rights and to trade off Complainant’s goodwill, by redirecting Internet users to a page that links to competitors of Complainant.
Finally, Complainant contends that Respondent registered and is using the disputed domain name in bad faith. In support thereof, Complainant states that its mark is so distinctive and famous that Respondent must have had actual knowledge of the mark prior to its registration of the domain name, an inference that is further supported by the manner in which the domain name is being used. Complainant asserts that Respondent is intentionally using the domain name to attract, for commercial gain, visitors to its website by creating a likelihood of confusion with Complainant’s mark, and that Respondent presumably receives click-through fees in connection with this use. Complainant also asserts that Respondent has engaged in a pattern of infringement, having registered numerous other domain names that appear to infringe other famous trademarks, such as <pitnybowesindia.com> and <mcdonaldschina.com>.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been 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.
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 disputed domain name combines Complainant’s registered trademark with the geographic term “india” and the top-level domain suffix “.com”. These additions do not diminish the similarity between the domain name and Complainant’s mark. See, e.g., Trump v. Web-adviso, D2010-2220 (WIPO Mar. 5, 2011) (finding <trumpindia.com> confusingly similar to TRUMP). The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant’s mark without authorization, and apparently its sole use has been for a website that displays pay-per-click advertising keyed to Complainant’s mark. Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(ii) of the Policy, bad faith may be shown by evidence that the domain name was registered “in order to prevent the owner of the trademark or service mark from reflecting the mark in
a corresponding domain name, provided that [Respondent] ha[s] engaged in
a pattern of such conduct.” Under paragraph 4(b)(iv), bad faith may be shown by evidence that “by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”
To have registered the domain name in bad faith, Respondent must have been aware of Complainant or Complainant’s mark when it registered the domain name, and the registration must in some way have been targeted at Complainant or the mark. Actual knowledge of the mark is required, although such knowledge may be inferred from circumstantial evidence. See, e.g., Kanal, Inc. v. Domain Admin, FA 1478238 (Nat. Arb. Forum Feb. 12, 2013).
The inclusion of Complainant’s famous mark in the disputed domain name and the content of the website to which the domain name resolves suggest to the Panel that Respondent is intentionally targeting consumers who may be confused by the similarity between the domain name and Complainant’s mark. Respondent’s pattern of registering domain names that infringe other trademarks provides further evidence of bad faith. The Panel finds that the disputed domain name was registered and has been used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <disneyindia.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: May 21, 2014
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