Disney Enterprises, Inc. v. Troy C.
Montalvo
Claim
Number: FA0501000403140
Complainant is Disney Enterprises, Inc. (“Complainant”),
represented by J. Andrew Coombs of J. Andrew Coombs, A Professional Corporation, 450 North Brand Boulevard, Suite 600, Glendale, CA 91203-2349. Respondent is Troy C. Montalvo (“Respondent”), 417 Godfrey Lane, Corbin City, NJ
08270.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <disneyoutlet.com>, registered with Network
Solutions, 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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
13, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 14, 2005.
On
January 14, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <disneyoutlet.com> is
registered with Network Solutions, Inc. and that Respondent is the current
registrant of the name. Network Solutions, Inc. has verified that Respondent is
bound by the Network Solutions, Inc. registration agreement and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
January 17, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 7, 2005 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities
and persons listed on Respondent's registration as technical, administrative
and billing contacts, and to postmaster@disneyoutlet.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
February 11, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed
James A. Carmody, Esq., 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." 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 makes the following assertions:
1. Respondent’s <disneyoutlet.com>
domain name is confusingly similar to Complainant’s DISNEY mark.
2. Respondent does not have any rights or
legitimate interests in the <disneyoutlet.com> domain name.
3. Respondent registered and used the <disneyoutlet.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Disney Enterprises Inc., is one of the world's leading
producers and providers of entertainment and information by using its portfolio
of brands to differentiate its content, services and consumer products.
Complainant, or its predecessors, has continuously used and
applied the DISNEY mark and DISNEY-formative marks since 1923 for a variety of
entertainment-related goods and services.
Complainant holds numerous registrations for the DISNEY and
DISNEY-formative marks through the United States Patent and Trademark Office
(DISNEY, Reg. No. 1,162,727 issued July 28, 1981; DISNEY ONLINE, Reg. No.
2,194,742 issued October 13, 1998; DISNEY.COM, Reg. No. 2,156,261 issued May
12, 1998; and DISNEYLAND, Reg. No. 1,037,788 issued April 13, 1976).
Complainant’s main websites are operated at the
<disney.com> and <disneystore.com> domain names.
Respondent registered the <disneyoutlet.com> domain name on June 26, 1998. Respondent is not using the disputed domain name in connection
with any goods or services, and no website can be accessed through 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."
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.
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.
Complainant has
established rights in the DISNEY and DISNEY-formative marks through numerous
registrations with the United States Patent and Trademark Office and through
its continued use of these marks in commerce over the last eighty-two
years. See Men’s Wearhouse, Inc. v.
Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S.
trademark law, registered marks hold a presumption that they are inherently
distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption); see also Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000)
(finding that the failure of Complainant to register all possible domain names
that surround its substantive mark does not hinder Complainant’s rights in the
mark. “Trademark owners are not required to create ‘libraries’ of domain names
in order to protect themselves.”).
The domain name
registered by Respondent, <disneyoutlet.com>, is confusingly
similar to Complainant’s DISNEY mark because the domain name incorporates
Complainant’s mark in its entirety and simply adds the generic or descriptive
term “outlet” and the generic top-level domain (“gTLD”) “.com.” The mere addition of a generic or
descriptive word and a gTLD to a registered mark does not negate the confusing
similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of Complainant combined with a
generic word or term); see also Sony
Kabushiki Kaisha v. Inja, D2000-1409 (WIPO Dec. 9, 2000) (finding that
“[n]either the addition of an ordinary descriptive
word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also AXA China Region Ltd. v. KANNET Ltd.,
D2000-1377 (WIPO Nov. 29, 2000) (finding that common geographic qualifiers or
generic nouns can rarely be relied upon to differentiate the mark if the other
elements of the domain name comprise a mark or marks in which another party has
rights).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent has no rights or legitimate interests in the <disneyoutlet.com>
domain name that contains in its entirety Complainant’s DISNEY mark. The burden shifts to Respondent to show that
it does have rights or legitimate interests once Complainant establishes a prima
facie case pursuant to Policy ¶ 4(a)(ii).
See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct.
1, 2002) (holding that where Complainant has asserted that Respondent has no
rights or legitimate interests with respect to the domain name it is incumbent
on Respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has
no rights or legitimate interests with respect to the domain, the burden shifts
to Respondent to provide credible evidence that substantiates its claim of
rights and legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by Complainant that Respondent has no
right or legitimate interest is sufficient to shift the burden of proof to
Respondent to demonstrate that such rights or legitimate interests do exist).
Respondent is
wholly appropriating Complainant’s mark and has passively held the domain name
since the time of registration in 1998.
The Panel finds that this failure to use a domain name that is
confusingly similar to Complainant’s mark is not a bona fide offering of goods
or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
use of the domain name pursuant to Policy ¶ 4(c)(iii). See
Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000)
(finding no rights or legitimate interests where Respondent failed to submit a
Response to the Complaint and had made no use of the domain name in question); see
also Melbourne IT Ltd. v. Stafford,
D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in
the domain name where there is no proof that Respondent made preparations to
use the domain name or one like it in connection with a bona fide offering of
goods and services before notice of the domain name dispute, the domain name
did not resolve to a website, and Respondent is not commonly known by the
domain name); see also Boeing Co.
v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate
interests where Respondent has advanced no basis on which the Panel could
conclude that it has rights or legitimate interests in the domain names, and no
use of the domain names has been established).
Respondent was
not authorized or licensed by Complainant to register or use a domain name that
incorporates the DISNEY mark. Nothing
in the record shows that Respondent is commonly known by the <disneyoutlet.com>
domain name. Therefore, the Panel finds
that Respondent lacks rights and legitimate interests in the domain name
pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also RMO, Inc. v.
Burbridge, FA 96949
(Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require
a showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where Respondent was not commonly known by the mark and never applied for a
license or permission from Complainant to use the trademarked name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
intentionally registered the <disneyoutlet.com> domain name that
contains in its entirety Complainant’s DISNEY mark. Respondent has failed to market any bona fide goods or services
since the disputed domain name was registered.
Respondent’s passive holding of a domain name that is confusingly
similar to Complainant’s mark evidences bad faith registration and use pursuant
to Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows,
D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is possible, in certain
circumstances, for inactivity by the Respondent to amount to the domain name
being used in bad faith”); see also Caravan
Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that
Respondent made no use of the domain name or website that connects with the
domain name, and that passive holding of a domain name permits an inference of
registration and use in bad faith).
Complainant has
established that its DISNEY mark is famous worldwide and registered in several
countries. This is evidence that
Respondent chose the disputed domain name based on the goodwill associated with
Complainant’s mark. Registration of a
domain name confusingly similar to a mark, despite knowledge of another’s
rights, is evidence of bad registration pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith,
when Respondent reasonably should have been aware of Complainant’s trademarks,
actually or constructively.”); see also Entrepreneur Media, Inc. v. Smith,
279
F.3d 1135, 1148 (9th Cir. 2002) (“Where an alleged infringer chooses a mark
he knows to be similar to another, one can infer an intent to confuse."); see
also Exxon Mobil Corp. v. Fisher,
D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and
constructive knowledge of Complainant’s EXXON mark given the worldwide
prominence of the mark and thus Respondent registered the domain name in bad
faith).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <disneyoutlet.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
February 28, 2005
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