Disney Enterprises, Inc. v. George Tsafonias
Claim Number: FA1508001632283
Complainant is Disney Enterprises, Inc. (“Complainant”), represented by J. Andrew Coombs of J. ANDREW COOMBS, A Professional Corporation, California, United States. Respondent is George Tsafonias (“Respondent”), Florida, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mydisneywifi.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 6, 2015; the Forum received payment on August 6, 2015.
On August 7, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <mydisneywifi.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 11, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 31, 2015 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@mydisneywifi.com. Also on August 11, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On September 8, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 such as movies, television programs, books, and merchandise. Complainant also owns and operates theme parks and resorts in several countries. Complainant owns rights in a variety of trademarks registered with the United States Patent and Trademark Office (“USPTO”), most notable of which is the DISNEY mark (e.g., Reg. No. 1,162,727, registered July 28, 1981). The <mydisneywifi.com> domain name is confusingly similar to Complainant’s mark as it incorporates the trademark in its entirety, merely adding to the trademark the descriptive terms “my” and “wifi,” as well as the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. First, Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Second, Respondent is not licensed or authorized to use Complainant’s marks. Finally, Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Rather, Respondent’s disputed domain name currently resolves to a “Website Coming Soon!” page, which demonstrates a failure to make any active use.
Respondent has registered and is using the disputed domain names in bad faith. Respondent has made no active use of the disputed domain name. Respondent had actual knowledge of Complainant’s mark at the time of the disputed domain name registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Disney Enterprises, Inc., is a worldwide leading producer of children’s entertainment goods and services such as movies, television programs, books, and merchandise. Complainant also owns and operates theme parks and resorts in several countries. Complainant owns rights in a variety of trademarks registered with the United States Patent and Trademark Office (“USPTO”), most notable of which is the DISNEY mark (e.g., Reg. No. 1,162,727, registered July 28, 1981).
Respondent, George Tsafonias, registered the <mydisneywifi.com> domain name on March 23, 2015. Respondent has not made any active use of the domain name.
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 owns rights in the DISNEY mark under Policy ¶ 4(a)(i) through registration with the USPTO. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Respondent’s <mydisneywifi.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i) as it incorporates the trademark in its entirety, adding to the trademark the descriptive terms “my” and “wifi” and adding the “.com” gTLD.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not licensed or authorized to use Complainant’s mark. The WHOIS information lists “George Tsafonias” as registrant. Respondent is not commonly known by the <mydisneywifi.com> domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent is not using the <mydisneywifi.com> domain name to make 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). Respondent’s disputed domain name currently resolves to a “Website Coming Soon!” page. Past panels have found that failure to make an active use of a disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Respondent’s failure to make active use of the <mydisneywifi.com> domain name is bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Respondent had actual knowledge of Complainant’s mark at the time of the domain name registration. Therefore, Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark and thus the respondent registered the domain name in bad faith).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mydisneywifi.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 19, 2015
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