Disney Enterprises, Inc. v. Thomas Ciotola / The Thomas James Ciotola Media Network
Claim Number: FA1509001640076
Complainant is Disney Enterprises, Inc. (“Complainant”), represented by J. Andrew Coombs of J. ANDREW COOMBS, A Professional Corporation, California, USA. Respondent is Thomas Ciotola / The Thomas James Ciotola Media Network (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <findingdory.net>, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 29, 2015; the Forum received payment on September 29, 2015.
On September 30, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <findingdory.net> 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 October 1, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 21, 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@findingdory.net. Also on October 1, 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 October 27, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant has rights in the FINDING DORY mark through the mark’s registration with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. EU011723202, filed on April 9, 2013, registered on August 15, 2013).
Respondent’s <findingdory.net> domain name is identical to the FINDING DORY mark because it contains the entire mark, less the space between words, and adds only the generic top-level domain “.net.”
Respondent is not commonly known by the <findingdory.net> domain name because there is no evidence to indicate such and because Complainant has not authorized Respondent to use the FINDING DORY mark. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thereby lacks rights and legitimate interests, because the <findingdory.net> domain name is offered for sale and resolves to an inactive webpage.
Respondent uses the <findingdory.net> domain name in bad faith because it offers the domain for sale and because it resolves to an inactive website. Respondent registered the domain in bad faith because Respondent did so with actual knowledge in Complainant’s rights in the FINDING DORY mark, and because Respondent’s registration was done in response to Complainant’s announcement related to the FINDING DORY mark, demonstrating opportunistic bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the FINDING DORY mark through its registration of such mark with the UKIPO and otherwise.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademarks.
Respondent used the at-issue domain name to address an inactive website and offed the domain name for sale.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant establishes its rights in the FINDING DORY mark through its UKIPO trademark registration. Such rights exist notwithstanding that Respondent may reside outside the jurisdiction of the trademark registrar. See Royal Bank of Scot. Group plc v. Soloviov, FA 787983 (Nat. Arb. Forum Nov. 3, 2006) (“Complainant’s trademark registrations for the NATWEST mark with the United Kingdom Patent Office . . . establish Complainant’s rights in the mark pursuant to Policy ¶4(a)(i).”); see also, Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Such rights date back to trademark’s filing date. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date). Additionally, Complainant demonstrates that its rights in the FINDING DORY trademark predate Respondent’s domain name registration. See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”); see also, Laurenti v. Director, FA243460 (Nat. Arb. Forum May 7, 2004) (finding secondary meaning due to the complainant’s extensive use of the mark, the fame associated with the complainant, and the quantity of television and motion picture appearances by the complainant).
Respondent’s domain name includes Complainant’s entire trademark, less its space, with the top-level domain name “.net” appended thereto. These alterations to Complainant’s FINDING DORY trademark are insufficient to distinguish the at-issue domain name from Complainant’s mark for the purposes of the Policy. Therefore, the Panel finds that the <findingdory.net> domain name is identical to Complainant’s FINDING DORY trademark. See Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is plainly identical to the complainant’s MYSTIC LAKE trademark and service mark).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name lists “Thomas Ciotola” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <findingdory.net> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The webpage addressed by the <findingdory.net> domain name displays the message: “This webpage is not available.” Additionally, Respondent offered the domain name for sale in an amount in excess of out of pocket expenses related to the domain name. Neither of these uses for a domain name identical to Complainant’s trademark is a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“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).”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above Respondent offered the domain name for sale. Respondent listed the domain name for $5000 and in an email exchange between the parties again requested an amount in excess of its out-of-pocket costs if the domain name was to be transferred to Complainant. Offering the domain name for sale, as did Respondent, suggests bad faith registration and use of the <findingdory.net> domain name pursuant to Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). The fact that the domain name addressed an inactive webpage further shows Respondent’s bad faith. 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).
Additionally, Respondent’s registration of the at-issue domain name on the very same day that Complainant officially announced to the public that it would produce a film entitled “Finding Dory” shouts that Respondent engaged in opportunistic bad faith registration concerning the <findingdory.net> domain name. See Tech. Props., Inc. v. Hussain, FA 95411 (Nat. Arb. Forum Sept. 14, 2000) (“The Respondent took advantage of the public announcement that Tandy Corporation was changing its name to RadioShack by registering the domain names on the same day as a public announcement of a company’s name change. This is also evidence of bad faith.”); see also Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”).
Finally, Respondent registered the <findingdory.net> domain name knowing that Complainant had trademark rights in the FINDING DORY mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark, from the mark’s uniqueness and from Respondent coincident registration of the domain name with the well-publicized announcement of a commercial project bearing the FINDING DORY trademark. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain name to improperly exploit the domain name’s trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <findingdory.net> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <findingdory.net> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 2, 2015
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