Disney Enterprises, Inc. v. Disneyworld
Hotels and Tickets Online
Claim
Number: FA0502000417719
Complainant is Disney Enterprises, Inc. (“Complainant”),
represented by J. Andrew Coombs, of J. Andrew Coombs, A Professional
Corporation, 450
North Brand Boulevard, Ste. 600, Glendale, CA 91203-2349. Respondent is Disneyworld Hotels and Tickets Online (“Respondent”), 305 South
Highland, Many, LA 71449.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <disneyworldhotelsandtickets.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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on February
8, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 9, 2005.
On
February 9, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <disneyworldhotelsandtickets.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
February 9, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 1, 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@disneyworldhotelsandtickets.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 5, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed the Honorable
Charles K. McCotter, Jr. (Ret.) 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 <disneyworldhotelsandtickets.com>
domain name is confusingly similar to Complainant’s WALT DISNEY WORLD mark.
2. Respondent does not have any rights or
legitimate interests in the <disneyworldhotelsandtickets.com>
domain name.
3. Respondent registered and used the <disneyworldhotelsandtickets.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 has registered the WALT DISNEY WORLD mark with the United
States Patent and Trademark Office (“USPTO”) (Reg. Nos. 980,955 issued March
26, 1974; 1,189,727 issued February 16, 1982).
Complainant’s main websites are operated at the
<disney.com>, <disneytravel.com> and <disneyworld.com> domain
names.
Respondent registered the <disneyworldhotelsandtickets.com> domain name on September 7, 2000. Respondent is using the disputed domain name
to redirect Internet users to <orlandoticketsandhotels.net> which
features a free Orlando attraction ticket, and claims to be the Orlando and
Disney area experts offering the lowest discount prices on Disney World and
Orlando area tickets and hotels.
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 WALT DISNEY WORLD mark through registration with the
USPTO and through its continued use of these marks in commerce over the last 82
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).
Respondent’s <disneyworldhotelsandtickets.com>
domain name is confusingly similar to Complainant’s WALT DISNEY WORLD mark
because the domain name simply adds the generic or descriptive terms “hotels
and tickets,” then merely deletes “walt” from the mark. Neither the deleting of words nor the adding
of generic words are sufficient to distinguish Respondent’s domain name from
Complainant’s mark pursuant to Policy ¶ 4(a)(i). See 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); see also Hammond Suddards Edge v. Westwood Guardian
Ltd., D2000-1235 (WIPO Nov. 6, 2000) (finding that the domain name,
“hammondsuddards.net,” is essentially identical to Complainant's mark, Hammond
Suddards Edge, where the name “Hammond Suddards” identifies Complainant
independently of the word “Edge”); see also Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name
<asprey.com> is confusingly similar to Complainant’s “Asprey &
Garrard” and “Miss Asprey” marks).
Thus, the Panel
finds that Complainant satisfied Policy ¶ 4(a)(i).
Respondent has
not submitted a Response in this proceeding.
Thus, the Panel chooses to view the Complaint in the light most
favorable to Complainant and accepts as true all assertions made by
Complainant. Accordingly, the Panel
presumes that Respondent lacks rights and legitimate interests in the <disneyworldhotelsandtickets.com>
domain name. 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 rights or legitimate interests do exist); 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).
In the WHOIS
contact information, Respondent lists its name and administrative contact as
“disneyworld hotels and tickets online.” However, since Respondent failed to
respond to the Complaint, there has not been any affirmative evidence provided
to the Panel showing that Respondent was ever commonly known by the disputed
domain name. Moreover, Complainant’s
first use of the WALT DISNEY WORLD mark in commerce and its registration of the
mark predates Respondent’s registration of the domain name. Thus, the Panel concludes that Respondent
has not been commonly known by the domain name pursuant to Policy ¶
4(c)(ii). See Tercent Inc.
v. Lee 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).
Respondent’s use
of the infringing <disneyworldhotelsandtickets.com> domain name to
offer and advertise Disney World area tickets, lodgings, and related services,
which are similar to services that Complainant offers at its website, is not a
bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Thus, the Panel finds that Respondent lacks
rights and legitimate interests in the domain name under Policy ¶
4(a)(ii). See G.D. Searle & Co. v.
Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that
because respondent is using the infringing domain name to sell prescription
drugs it can be inferred that respondent is opportunistically using
complainant’s mark in order to attract Internet users to its website); see
also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat.
Arb. Forum Jan. 2, 2003) (finding that respondent, as a competitor of
complainant, had no rights or legitimate interests in a domain name that
utilized complainant’s mark for its competing website); see also Chip Merch., Inc. v. Blue Star Elec.,
D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were
confusingly similar to complainant’s mark and that respondent’s use of the
domain names to sell competing goods was illegitimate and not a bona fide
offering of goods).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <disneyworldhotelsandtickets.com> domain name, which is
confusingly similar to Complainant’s WALT DISNEY WORLD mark, to operate a
website that offers and advertises Disney World area tickets, lodgings and
related services in direct competition with Complainant. Such use constitutes disruption and is
evidence that Respondent registered and used the disputed domain name in bad
faith pursuant to Policy ¶ 4(b)(iii). See
Disney Enters., Inc. v. Noel, FA
198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a
domain name confusingly similar to Complainant's mark to divert Internet users
to a competitor's website. It is a reasonable inference that Respondent's
purpose of registration and use was to either disrupt or create confusion for
Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) &
(iv).”); see also S. Exposure
v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by
attracting Internet users to a website that competes with Complainant’s
business).
Since Respondent’s domain name is confusingly similar to Complainant’s
mark, Internet users accessing Respondent’s domain name may become confused as
to Complainant’s affiliation with the resulting commercial website. Thus, Respondent’s commercial and
opportunistic use of the disputed domain name constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29,
2000) (finding that, given the similarity of Complainant’s marks with the
domain name, consumers will presume the domain name is affiliated with
Complainant; Respondent is attracting Internet users to a website, for commercial
gain, by creating a likelihood of confusion with Complainant’s mark as to the
source, sponsorship, or endorsement of Respondent’s website); see also Kmart
v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if
Respondent profits from its diversionary use of Complainant's mark when the
domain name resolves to commercial websites and Respondent fails to contest the
Complaint, it may be concluded that Respondent is using the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv)).
Furthermore,
Respondent registered the <disneyworldhotelsandtickets.com> domain
name with actual or constructive knowledge of Complainant’s rights in the WALT
DISNEY WORLD mark due to Complainant’s registration of the mark with the USPTO
as well as the great fame attributed to Complainant’s mark. Moreover, the Panel infers that Respondent
registered the disputed domain name with actual knowledge of Complainant’s
rights in the mark due to the obvious connection between the content advertised
on Respondent’s website and Complainant’s business. Thus, the Panel finds that Respondent registered and used the
domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration); see also
Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO,
a status that confers constructive notice on those seeking to register or use
the mark or any confusingly similar variation thereof.”); see also Pfizer,
Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the
link between Complainant’s mark and the content advertised on Respondent’s
website was obvious, Respondent “must have known about the Complainant’s mark
when it registered the subject domain name”).
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 <disneyworldhotelsandtickets.com> domain name
be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
March 21, 2005
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