Disney Enterprises, Inc. v. RICKSON RODRICKS / DOMAEN.COM
Claim Number: FA1710001756501
Complainant is Disney Enterprises, Inc. (“Complainant”), represented by Annie S. Wang of Wang Law Corporation, California, USA. Respondent is RICKSON RODRICKS / DOMAEN.COM (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <disenychannel.com>, <disneychsnel.com>, and <disneycjannel.com>, registered with eNom, 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 October 31, 2017; the Forum received payment on October 31, 2017.
On November 1, 2017, eNom, LLC confirmed by e-mail to the Forum that the <disenychannel.com>, <disneychsnel.com>, and <disneycjannel.com> domain names are registered with eNom, LLC and that Respondent is the current registrant of the names. eNom, LLC has verified that Respondent is bound by the eNom, 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 November 1, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 21, 2017 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@disenychannel.com, postmaster@disneychsnel.com, postmaster@disneycjannel.com. Also on November 1, 2017, 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 November 27, 2017, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant is a worldwide leading producer of children’s entertainment goods and services such as movies, television programs, books, and merchandise.
Complainant registered the DISNEY and DISNEY CHANNEL marks with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <disenychannel.com>, <disneychsnel.com>, and <disneycjannel.com> domain names are identical or confusingly similar to Complainant’s trademarks.
Respondent has no rights or legitimate interests in the <disenychannel.com>, <disneychsnel.com>, and <disneycjannel.com> domain names. Respondent is not commonly known by the domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the DISNEY CHANNEL mark. Respondent also does not use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent displays the message “You’re one click from your destination” on the resolving domain, and asks visitors to click a “CONTINUE” button in order to view the website. When users click this button, the user is prompted to agree to install a “Safe Browsing Chrome” extension. Respondent also uses the <disneychsnel.com> and <disneycjannel.com> domain names to redirect users to a landing page which have links to sites related to Complainant’s products or services, although not limited to Complainant’s own goods and services. Further, Respondent attempts to sell the <disneycjannel.com> domain name on the resolving domain. Finally, Respondent’s slight misspelling of its registered marks and domain name constitutes typosquatting, further demonstrating Respondent’s lack of rights and legitimate interests.
Respondent registered and uses the <disenychannel.com>, <disneychsnel.com>, and <disneycjannel.com> domain names in bad faith. Respondent’s use of the confusingly similar domain names to intentionally attract Internet users and profit through the receipt of click-through fees by creating a strong likelihood of confusion with Complainant’s mark is evidence of bad faith. Additionally, Respondent’s engagement of the practice of typosquatting is in itself evidence of bad faith. Moreover, bad faith is evidenced by Respondent’s attempts to sell the <disneycjannel.com> domain name. Further, bad faith should be found where, as here, Respondent has established a pattern of conduct by registering multiple domain names infringing the same marks. Finally, the trademarks are so internationally distinctive and famous that Respondent must have had actual knowledge of the Complainant’s trademarks prior to the domain names’ registration
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the DISNEY CHANNEL mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademarks in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademarks.
At least one of Respondent’s <disenychannel.com>, <disneychsnel.com>, and <disneycjannel.com> domain name address a website that tricks users into clicking on a link that executes software on target users’ computers and/or presents a landing page with links to sites related to Complainant’s products or services, although not limited to Complainant’s own goods and services.
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.”).
The at-issue domain names are confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO registration for DISNEY or for DISNEY CHANNEL is sufficient to demonstrate its rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register …, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Respondent’s <disenychannel.com>, <disneychsnel.com>, and <disneycjannel.com> domain names contain Complainant’s DISNEY trademark, spelled correctly and incorrectly, and DISNEY CHANNEL trademark, spelled incorrectly, all followed by the “.com” top level domain name. The differences between any of the at-issue domain names and Complainant’s trademarks are insufficient to distinguish one from the other for the purposes of Policy ¶ 4(a)(i). Therefore the Panel concludes that Respondent’s <disenychannel.com>, <disneychsnel.com>, and <disneycjannel.com> domain names are each confusingly similar to Complainant’s DISNEY trademark, as well as to Complainant’s DISNEY CHANNEL trademark. 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.); see also Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015) (stating, “Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate.”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel may therefore find that the disputed domain names are confusingly similar to the DISNEY mark under Policy ¶4(a)(i).
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 (Forum Aug. 18, 2006). Since Respondent is not authorized to use Complainant’s trademarks in any capacity and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in any of the at-issue domain names, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain names identifies the domain names’ registrant as “RICKSON RODRICKS / DOMAEN.COM.” The record before the Panel contains no evidence that might otherwise tend to prove that Respondent is commonly known by the at-issue domain name. The Panel therefore concludes that for the purposes of Policy ¶ 4(c)(ii) Respondent is not commonly known by the at-issue 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); see also, Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (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).
Further, Respondent, inter alia, uses the domain names to address a website presenting links both to Complainant’s goods and services and to the goods and services of its competitors. Using the at-issue domain name in this manner is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Other characterizations of Respondent’s use of the at-issue domain names alleged by Complainant’s likewise show the domain names to be used for other than bona fide purposes. In particular, Respondent’s multiple acts of typosquatting, as discussed more fully below regarding Policy ¶ 4(a)(iii), preclude finding Respondent’s use of the at-issue domain names to be bona fide. See Harry and David v. S. Pace, FA1276989 (Forum Sep. 14, 2009); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Forum Aug. 14, 2003) (finding that the domain names <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> were intentional misspellings of the complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”);
Given the foregoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <disenychannel.com>, <disneychsnel.com>, and <disneycjannel.com> domain names were each registered and used in bad faith. As in particularly discussed below without limitation, 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 regarding each domain name pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above regarding rights and legitimate interests, Respondent uses its confusingly similar domain names to display hyperlinks both to Complainant’s goods and services, and to the goods and services of others. Such use allows Respondent to profit from click-through fees. Respondent thus shows bad faith registration and use of the domain names pursuant to Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also, Univ. of Houston Sys. v. Salvia Corp., FA 637920 (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).”);
Moreover, Respondent’s intentional misspelling of Complainant’s trademarks in the confusingly similar domain names shows that Respondent is engaged in typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the resulting string in a domain name hoping that internet users will either inadvertently type the malformed string when searching associated products, or as is more likely in the instant case will otherwise confuse the malformed trademark laden domain name with its target trademark when viewing the domain name as text. Here, even a cursory glance at the domain names reveals the intentional look-a-like relationship between such domain names and Complainant’s trademarks. Importantly, typosquatting is a hallmark of Policy ¶ 4(a)(iii) bad faith. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Finally, Respondent registered <disenychannel.com>, <disneychsnel.com>, and <disneycjannel.com> knowing that Complainant had trademark rights in the DISNEY and DISNEY CHANNEL marks. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademarks, especially the iconic DISNEY trademark. In fact, the fame of Complainant’s marks make it inconceivable to even speculate that Respondent may have been ignorant of Complainant’s relevant trademarks at the time it registered the <disenychannel.com>, <disneychsnel.com>, and <disneycjannel.com> domain names. It is thus clear that Respondent intentionally registered the at-issue domain names to improperly exploit their trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademarks further indicate that Respondent registered and used the at-issue domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (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 <disenychannel.com>, <disneychsnel.com>, and <disneycjannel.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 29, 2017
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