Disney Enterprises, Inc. v. Avalon
Domains
Claim
Number: FA0501000411746
Complainant Disney Enterprises, Inc. (“Complainant”),
is represented by J. Andrew Coombs, 450 North Brand Boulevard, Suite
600, Glendale, CA 91203. Respondent is Avalon Domains (“Respondent”), P.O. Box
291, Melrose, FL 32666.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <desperate-housewife.com>, <desperate-houswifes.com>,
<desperatehousewives.com>, <desperatehouswifes.com>, <desprate-houswifes.com>,
<despratehousewife.com>, <despratehousewifes.com> and
<despratehouswifes.com>, registered with Enom, Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
28, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 31, 2005.
On
January 31, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain names <desperate-housewife.com>, <desperate-houswifes.com>,
<desperatehousewives.com>, <desperatehouswifes.com>, <desprate-houswifes.com>,
<despratehousewife.com>, <despratehousewifes.com> and
<despratehouswifes.com> are registered with Enom, Inc. and that
Respondent is the current registrant of the names. Enom, Inc. has verified that
Respondent is bound by the Enom, 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
February 1, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 21, 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@desperate-housewife.com,
postmaster@desperate-houswifes.com, postmaster@desperatehousewives.com,
postmaster@desperatehouswifes.com, postmaster@desprate-houswifes.com,
postmaster@despratehousewife.com, postmaster@despratehousewifes.com and
postmaster@despratehouswifes.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
March 10, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Tyrus R.
Atkinson, Jr., 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <desperatehousewives.com>
domain name is identical to Complainant’s DESPERATE HOUSEWIVES mark and Respondent’s
<desperate-housewife.com>, <desperate-houswifes.com>,
<desperatehouswifes.com>, <desprate-houswifes.com>, <despratehousewife.com>,
<despratehousewifes.com> and <despratehouswifes.com>
domain names are confusingly similar to Complainant’s DESPERATE HOUSEWIVES
mark.
2. Respondent does not have any rights or
legitimate interests in the <desperate-housewife.com>, <desperate-houswifes.com>,
<desperatehousewives.com>, <desperatehouswifes.com>, <desprate-houswifes.com>,
<despratehousewife.com>, <despratehousewifes.com> and
<despratehouswifes.com> domain names.
3. Respondent registered and used the <desperate-housewife.com>,
<desperate-houswifes.com>, <desperatehousewives.com>,
<desperatehouswifes.com>, <desprate-houswifes.com>, <despratehousewife.com>,
<despratehousewifes.com> and <despratehouswifes.com>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Disney Enterprises, Inc., broadcasts a prime time television drama series under
its DESPERATE HOUSEWIVES mark.
Complainant’s show is broadcasted throughout the United States and
Canada in 150 local broadcast markets, including major markets such as New
York, Boston, Los Angeles, Chicago, Dallas and Toronto. Complainant has heavily promoted the show
under its DESPERATE HOUSEWIVES mark since as early as February 2004.
Complainant also
has several pending trademark applications with the United States Patent and
Trademark Office for the DESPERATE HOUSEWIVES mark filed on October 19, 2004
(Serial Nos. 78,502,404; 78,502,420; 78,502,423; 78,502,424; 78,502,425;
78,502,427; 78,510,623). Complainant’s
show has been heavily promoted under the DESPERATE HOUSEWIVES mark since as
early as February 2004. Specifically,
news articles from publications such as Daily Variety, Newswire
and Knight Rider/Tribune News Service began featuring stories about
Complainant’s new show under the DESPERATE HOUSEWIVES mark as early as February
9, 2004.
Respondent
registered the <desperatehousewives.com> domain name on February 23,
2004; the <desperate-housewife.com>, <desperate-houswifes.com>,
<desperatehouswifes.com>, <desprate-housewifes.com>, <despratehousewife.com>
and <despratehouswifes.com> domain names on October 31, 2004
and the <despratehousewifes.com> domain name on November 1, 2004.
Respondent is
using the disputed domain names to redirect Internet users to Respondent’s
website at the <desperatehousewives.com> domain name. Complainant’s DESPERATE HOUSEWIVES mark is
displayed at Respondent’s website in addition to banner advertisements and
links for unrelated commercial websites such as <what-youwatch.com>,
<consumerincentivepromotions.com>, <wowoffers.com> and
<beamegawinner.com> where personal information is solicited from
Internauts.
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 that it has rights in the DESPERATE HOUSEWIVES mark through
continuous use of the mark in commerce since February 2004. Complainant has also presented evidence
demonstrating its rights in the mark through several pending trademark
applications that were filed with the United States Patent and Trademark office
on October 19, 2004. See McCarthy on
Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN
dispute resolution policy is “broad in scope” in that “the reference to a
trademark or service mark ‘in which the complainant has rights’ means that
ownership of a registered mark is not required–unregistered or common law
trademark or service mark rights will suffice” to support a domain name Complaint
under the Policy); see also SeekAmerica
Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the
Rules do not require that Complainant's trademark or service mark be registered
by a government authority or agency for such rights to exist); see also
British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting
that the Policy “does not distinguish between registered and unregistered
trademarks and service marks in the context of abusive registration of domain
names” and applying the Policy to “unregistered trademarks and service marks”);
see also Great Plains Metromall,
LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does
not require that a trademark be registered by a governmental authority for such
rights to exist.”); see also Phone-N-Phone
Serv. (Bermuda) Ltd. v. Shlomi (Salomon) Levi, D2000-0040 (WIPO Mar. 23,
2000) (finding that the domain name was identical or confusingly similar to
Complainant’s pending service mark application); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat.
Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use
was continuous and ongoing, and secondary meaning was established); see also
S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum
March 13, 2003) (holding that Complainant established rights in the descriptive
RESTORATION GLASS mark through proof of secondary meaning associated with the
mark).
Respondent’s <desperatehousewives.com>
domain name is identical to Complainant’s DESPERATE HOUSEWIVES mark because
the only difference between Complainant’s mark and Respondent’s disputed domain
name is the omission of a space between the words “desperate” and
“housewives.” The omission of a space
does not significantly distinguish the domain name from Complainant’s
mark. Therefore, Respondent’s domain
name is confusingly similar to Complainant’s DESPERATE HOUSWIVES mark. See Hannover Ruckversicherungs-AG
v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding
<hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”); see also 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 Croatia
Airlines v. Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name
<croatiaairlines.com> is identical to Complainant's CROATIA AIRLINES
trademark).
Respondent's
remaining seven domain names are confusingly similar to
Complainant's DESPERATE HOUSEWIVES mark because each domain name
incorporates the mark and either adds a hyphen or is a minor
misspelling of Complainant's mark.
These minor differences are insufficient to distinguish the domain names
from Complainant's mark. Moreover, the
addition of the generic top-level domain ".com" does not distinguish
the domain names from Complainant's mark.
See Chernow Communications,
Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding "that the use
or absence of punctuation marks, such as hyphens, does not alter the fact that
a name is identical to a mark"); see also Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO
Dec. 1, 2000) (holding that the deliberate introduction of errors or changes,
such as the addition of a fourth "w" or the omission of periods or
other such generic typos do not change respondent's infringement on a core
trademark held by Complainant); see also Victoria's Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18,
2000) (finding that, by misspelling words and adding letters to words, a
Respondent does not create a distinct mark but nevertheless renders the domain
name confusingly similar to Complainant's marks); see also Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant's
mark because the generic top-level domain (gTLD) ".com" after the
name POMELLATO is not relevant).
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(i).
Complainant
alleges that Respondent has no rights or legitimate interests in the <desperate-housewife.com>,
<desperate-houswifes.com>, <desperatehousewives.com>,
<desperatehouswifes.com>, <desprate-houswifes.com>, <despratehousewife.com>,
<despratehousewifes.com> and <despratehouswifes.com>
domain names. 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). Due to Respondent’s failure
to respond to the Complaint, it is assumed that Respondent lacks rights and
legitimate interests in the disputed domain names. 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 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 rights or legitimate interests
is sufficient to shift the burden of proof to Respondent to demonstrate that
such a right or legitimate interest does exist); see also Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interests
in the domain names).
Moreover, the
Panel may accept all reasonable allegations and inferences in the Complaint as
true because Respondent has not submitted a response. See 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.”); see also Vertical Solutions Mgmt., Inc.
v. webnet-marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000)
(holding that Respondent’s failure to respond allows all reasonable inferences
of fact in the allegations of the Complaint to be deemed true.); see also
Desotec N.V. v. Carbons, D2000-1398 (WIPO Dec. 21, 2000) (finding that
failing to respond allows a presumption that Complainant’s allegations are true
unless clearly contradicted by the evidence).
Respondent is
using the disputed domain names to redirect Internet users to Respondent’s
website at the <desperatehousewives.com> domain name. Complainant’s DESPERATE HOUSEWIVES mark is
displayed at Respondent’s website in addition to banner advertisements and
links for unrelated commercial websites such as <what-youwatch.com>,
<consumerincentivepromotions.com>, <wowoffers.com> and
<beamegawinner.com> where personal information is solicited from
Internauts. The Panel infers that
Respondent receives click-through fees by redirecting Internet users to these
commercial websites. Respondent’s use
of domain names that are either identical or confusingly similar to
Complainant’s mark for commercial gain is not a use in connection with a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and is not a
legitimate noncommercial or fair use of the domain names pursuant to Policy ¶
4(c)(iii). See MSNBC Cable, LLC v.
Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate
interests in the famous MSNBC mark where Respondent attempted to profit using
Complainant’s mark by redirecting Internet traffic to its own website); see
also Am. Online, Inc. v. Tercent Comm. Corp., FA 93668 (Nat. Arb. Forum
Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck
surfers into a site sponsored by Respondent hardly seems legitimate”); see
also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb.
Forum June 24, 2004) (holding that Respondent’s use of the disputed domain name
to redirect Internet users to commercial websites, unrelated to Complainant and
presumably with the purpose of earning a commission or pay-per-click referral
fee did not evidence rights or legitimate interests in the domain name).
Additionally,
Respondent’s registration and use of several domain names with minor spelling
variations constitutes typosquatting and is evidence of Respondent’s lack of
rights and legitimate interests. See
Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA
156839 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s <wwwdinersclub.com> domain name, a typosquatted version of
Complainant’s DINERS CLUB mark, was evidence in and of itself that Respondent
lacks rights or legitimate interests in the disputed domain name vis-à-vis
Complainant); see also Nat’l Ass’n of
Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21,
2003) (“Typosquatting as a means of redirecting consumers against their will to
another site, does not qualify as a bona fide offering of goods or services,
whatever may be the goods or services offered at that site.”); see also
Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20,
2003) (Respondent used a domain name for commercial benefit by diverting
Internet users to a website that sold goods and services similar to those
offered by Complainant and thus, was not using the name in connection with a bona
fide offering of goods or services nor a legitimate noncommercial or fair
use).
Moreover,
Respondent has not offered any evidence and there is no proof in the record
suggesting that Respondent is commonly known by the <desperate-housewife.com>,
<desperate-houswifes.com>, <desperatehousewives.com>,
<desperatehouswifes.com>, <desprate-houswifes.com>, <despratehousewife.com>,
<despratehousewifes.com> and <despratehouswifes.com>
domain names. Additionally, nothing in
the WHOIS domain name registration information, suggests that Respondent is
known by the domain names or by Complainant’s mark. Furthermore, Complainant did not authorize Respondent to use the
mark. Thus, Respondent has not
established rights or legitimate interests in the disputed domain names
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 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); see also Gallup Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that
Respondent does not have rights in a domain name when Respondent is not known
by the mark).
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(ii).
Respondent is
incorporating Complainant’s mark in its domain names in order to lead
Complainant’s fans and Internet users to a website that provides links to
various third party commercial websites.
The Panel infers that Respondent receives click-through fees for
redirecting Internet users to these commercial websites. Therefore, the Panel finds that Respondent
is intentionally creating a likelihood of confusion to attract Internet users
for Respondent’s commercial gain, pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tercent Comm.
Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where
Respondent registered and used an infringing domain name to attract users to a
website sponsored by Respondent); see also Perot Sys. Corp. v. Perot.net,
FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain
name in question was obviously connected with Complainant’s well-known marks,
thus creating a likelihood of confusion strictly for commercial gain); see
also Luck’s Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb.
Forum Oct. 30, 2000) (finding that Respondent had engaged in bad faith use and
registration by linking the domain name to a website that offers services
similar to Complainant’s services, intentionally attempting to attract, for
commercial gain, Internet users to its website by creating a likelihood of
confusion with Complainant’s marks); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000)
(finding bad faith where Respondent linked the domain name to another website
<iwin.com>, presumably receiving a portion of the advertising revenue
from the site by directing Internet traffic there, thus using a domain name to
attract Internet users for commercial gain).
Respondent’s
registration of multiple domain names with minor typographical errors
constitutes typosquatting and is evidence of bad faith pursuant to Policy ¶
4(a)(iii). See Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini,
D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling
of words with intent to intercept and siphon off traffic from its intended
destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of
itself evidence of bad faith”); see also L.L. Bean, Inc. v. Cupcake Patrol, FA 96504 (Nat. Arb. Forum Mar.
12, 2001) (finding that Respondent acted in bad faith by establishing a pattern
of registering misspellings of famous trademarks and names).
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <desperate-housewife.com>, <desperate-houswifes.com>,
<desperatehousewives.com>, <desperatehouswifes.com>, <desprate-houswifes.com>,
<despratehousewife.com>, <despratehousewifes.com> and
<despratehouswifes.com> domain names be TRANSFERRED from
Respondent to Complainant.
Tyrus R. Atkinson, Jr, , Panelist
Dated:
March 24, 2005
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