Disney Enterprises, Inc. v. ALEX DIETRICH
Claim Number: FA1611001704080
Complainant is Disney Enterprises, Inc. (“Complainant”), represented by J. Andrew Coombs of J. ANDREW COOMBS, A Professional Corporation, California, USA. Respondent is ALEX DIETRICH (“Respondent”), Mexico.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <disneyworld-disney-go.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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 21, 2016; the Forum received payment on November 21, 2016.
On November 23, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <disneyworld-disney-go.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 November 29, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 19, 2016 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@disneyworld-disney-go.com. Also on November 29, 2016, 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 December 27, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (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, Disney Enterprises, Inc., is a worldwide leading producer of children’s entertainment goods and services such as movies, television programs, books, and merchandise. Complainant has rights in the DISNEY mark based upon registration with the United States Patent and Trademark Office (“USPTO”) and other trademark agencies throughout the world (e.g., Reg. No. 1,162,727, registered July 28, 1981). Respondent’s <disneyworld-disney-go.com> is confusingly similar as it contains the mark in its entirety twice, adds the descriptive or generic words “go” and “world” as well as two hyphens, and appends the generic top-level domain name (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the domain names. Respondent is not commonly known by the disputed domain, nor has Complainant authorized Respondent to use the DISNEY mark in any way. Respondent’s <disneyworld-disney-go.com> resolves to a page which host links to sites related to Complainant’s products or services, as well as those of Complainant’s competitors. Such use amounts to neither a bona fide offering of goods or services described in Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent’s registration and use of the disputed domain names is evidence of bad faith as described in the Policy. Respondent’s website features links to goods and services that compete with Complainant’s business, evidence of bad faith under Policy ¶ 4(b)(iii). Respondent intentionally uses the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the website. Additionally, due to the fame and notoriety of Complainant’s mark, Respondent had actual knowledge of Complainant’s rights in the mark at the time it registered <disneyworld-disney-go.com>.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <disneyworld-disney-go.com 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(f), 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 (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 claims rights in the DISNEY mark based upon registration with the USPTO (e.g., Reg. No. 1,162,727, registered July 28, 1981. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel therefore holds that Complainant’s registration of the DISNEY mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <disneyworld-disney-go.com> is confusingly similar, as is contains the DISNEY mark in its entirety twice; adds the descriptive or generic words “go” and “world” as well as two hyphens; and appends the gTLD “.com.” Addition of generic or descriptive terms and a gTLD to a mark to form a domain name does not distinguish the domain name from that mark in a Policy ¶ 4(a)(i) analysis. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). Additionally, hyphens are irrelevant in determining confusing similarity. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
The Panel notes that Complainant also claims rights to the WALT DISNEYWORLD mark based upon registration with the USPTO (e.g., Reg. No. 980,955, registered Mar. 26, 1974). Respondent’s <disneyworld-disney-go.com> is confusingly similar because it combines two of Complainant’s marks—less the space—omits “Walt” from WALT DISNEY WORLD, and adds hyphens, the generic term “go,” and the gTLD “.com.” Hyphens and gTLD are irrelevant under a confusing similarity analysis, and addition of a generic term does not distinguish a domain from a complainant’s mark. Deleting words from a mark and omitting spaces likewise does not distinguish a domain name. See The Pros Closet, Inc. v. Above.com Domain Privacy, FA 1616518 (Forum June 3, 2015) (finding confusing similarity where the <proscloset.com> domain name merely omitted the first term (“the”) from Complainant’s THE PROS CLOSET mark, eliminated spacing between words, and added the “.com” gTLD.). Additionally, the combination of marks does not diminish confusing similarity under Policy ¶ 4(a)(i). See Hewlett-Packard Development Company, L.P. v. Yangxiaoyi / Qingyuan Tianheng Trading Company Ltd., FA 1625637 (Forum June 23, 2015) (“The combination of a complainant’s mark does not allow a respondent to avoid a finding of confusing similarity under Policy ¶4(a)(i).”). The Panel finds Respondent’s domain to be confusingly similar to Complainant’s mark or marks using either analysis.
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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 (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 (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 argues that Respondent has no rights or legitimate interests in <disneyworld-disney-go.com> as it is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the DISNEY mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS information of record identifies Respondent as “ALEX DIETRICH.” Additionally, lack of evidence in the record to indicate that the Respondent had been authorized to register a domain name using complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the disputed domain names is evinced by their failure to use the names for a bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant contends that Respondent’s <disneyworld-disney-go.com> redirects to a landing page which hosts links to sites related to Complainant’s products or services, as well as those of Complainant’s competitors. Use of a domain name to resolve to a website hosting competing links amounts to neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). See McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015) (“The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s legal services 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 pursuant to Policy ¶ 4(c)(iii).”). The Panel agrees that Respondent’s use of <disneyworld-disney-go.com> is evidence of its lack of rights or legitimate interests in the disputed domain name and failure to make a bona fide offer of goods or services or a legitimate non-commercial or fair use.
Complainant has proved this element.
Complainant argues that because Respondent is using its <disneyworld-disney-go.com> to divert Internet users and link them to Complainant’s competitors, it is disrupting Complainant’s business as described as bad faith in Policy ¶ 4(b)(iii). Respondents who host links to a complainant’s competitors on their resolving websites have been found to be acting in bad faith under the Policy. See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”). The Panel agrees and finds Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant also argues that Respondent’s use of the confusingly similar domain name <disneyworld-disney-go.com> amounts to an attempt to intentionally attract Internet users and profit through the receipt of click-through fees by creating a strong likelihood of confusion with Complainant’s DISNEY mark and is evidence of Respondent’s bad faith. Attempts to confuse and attract Internet users for commercial gain is evidence of bad faith under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)). The disputed domain name resolves to a webpage which hosts links to sites related to Complainant’s products or services, and those of Complainant’s competitors. Complainant presumes Respondent receives click-through fees when Internet users click on those links. The Panel agrees with Complainant’s argument and finds Respondent to be acting in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant also contends that in light of the fame and notoriety of Complainant's DISNEY mark, it is inconceivable that Respondent could have registered the <disneyworld-disney-go.com> domain name without actual knowledge of Complainant's rights in the mark. Where a mark has been shown to have accrued significant fame, actual knowledge may be imputed to a respondent who has registered a confusingly similar domain name. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). The Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <disneyworld-disney-go.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: January 5, 2017
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