Disney Enterprises, Inc. v. R B
Claim Number: FA0503000444432
PARTIES
Complainant
is Disney Enterprises, Inc. (“Complainant”),
represented by Michael W. O. Holihan, of Holihan Law, 1101
North Lake Destiny Road, Suite 350, Maitland, FL 32751. Respondent is R B (“Respondent”), 754 Ellwood Avenue,
Orlando, FL 32804.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <magickingdom.info>,
registered with GoDaddy Software, Inc.
PANEL
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.
Honorable
Nelson A. Diaz as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
21, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 23, 2005.
On
March 21, 2005, GoDaddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <magickingdom.info>
is registered with GoDaddy Software, Inc. and that the Respondent is the
current registrant of the name. GoDaddy
Software, Inc. has verified that Respondent is bound by the GoDaddy Software,
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
March 24, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 13,
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@magickingdom.info by e-mail.
A
timely Response was received and determined to be complete on April 13, 2005.
On April 21, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Honorable Nelson A. Diaz as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
asserts that it has trademark interests in the name Magic Kingdom, and that the disputed domain name is
confusingly similar to Complainant’s mark.
Complainant further asserts that Respondent has no legitimate interest
in the <magickingdom.info> domain name. Finally, Complainant asserts that the disputed domain name was
registered and is being used by Respondent in bad faith.
B.
Respondent
In
response, Respondent asserts, among other things, that the <magickingdom.info>
domain name is distinctly different than Complainant’s Magic Kingdom trademark.
Respondent further asserts that it has a legitimate interest in the
domain name. As to registration and use
in bad faith, Respondent asserts that it has registered the domain name in good
faith, and voluntarily does not use the domain name awaiting an ICANN decision.
FINDINGS
Since 1955, Complainant has continuously
used and applied the MAGIC KINGDOM trademark in connection with a variety of
entertainment-related goods and services.
Complainant owns numerous trademark registrations, including a federal
trademark registration for MAGIC KINGDOM.
The MAGIC KINGDOM trademark also refers to Complainant’s world-famous
theme parks located in California and Florida.
Respondent owns and operates an adult
oriented website at <www.truckersucker.com>. Respondent is developing a messenger service for communication
with semi-truck drivers to provide real time chat, messenger and other
communication services, including profile information. Respondent established a similar messenger
service in connection with the <magickingdom.info> domain name,
which is linked to the <truckersucker.com> web site.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
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 produced evidence that it holds a
trademark registration on the Principal Register of the United States Patent
and Trademark Office (“USPTO”) for the MAGIC KINGDOM mark, Reg. No. 1,072,396
(issued August 30, 1977). The Panel finds that this registration with the USPTO
and Complainant’s continuous use of the mark in commerce since 1955 demonstrate
Complainant’s rights in the MAGIC KINGDOM mark for purposes of Policy ¶
4(a)(i). See 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, and
that a respondent has the burden of refuting this assumption); see also
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.”).
Complainant argues that the <magickingdom.info> domain name is
identical to Complainant’s MAGIC KINGDOM mark. The domain name simply adds the
“.info” gTLD to the mark. The Panel finds that the addition of a gTLD fails to
distinguish the domain name from the mark. Thus, the Panel finds that the
domain name is confusingly similar to the mark under Policy ¶ 4(a)(i). See Rollerblade, Inc. v.
McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar); see also STMicroelectronics Inc v. Trabalza, FA 100637 (Nat. Arb. Forum Dec. 18, 2001)
(“The addition of the top-level domain name “info” to Complainant’s mark
does not defeat a claim that they are identical.”).
The Panel notes that once Complainant
makes a prima facie case regarding Policy ¶ 4(a)(ii), the burden shifts
to Respondent to establish rights or legitimate interests in the domain name. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that where a complainant has asserted that a respondent has no rights
or legitimate interests with respect to the domain name it is incumbent on the
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 a complainant asserts that a
respondent has no rights or legitimate interests with respect to the domain,
the burden shifts to the respondent to provide credible evidence that
substantiates its claim of rights and legitimate interests in the domain name).
Complainant
states that Respondent registered the <magickingdom.info> domain
name to trade upon the goodwill that Complainant has established in its
well-known MAGIC KINGDOM mark. Respondent concedes that it is using the domain
name to redirect Internet users to an adult-oriented website. Respondent also
asserts that it chose the disputed domain name because millions of Internet
users search under Complainant’s MAGIC KINGDOM mark every month. The Panel finds
that Respondent’s use of the domain name to divert Internet users searching
under Complainant’s well-known mark to an adult-oriented website is not in
connection with a bona fide offering of services under Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use of the domain name under Policy ¶
4(c)(iii). See Isleworth
Land Co. v. Lost In Space, SA,
FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that the respondent’s use
of its domain name to link unsuspecting Internet traffic to an
adult-oriented website did not constitute a bona fide offering of goods
or services or a noncommercial or fair use); see also Paws, Inc. v.
Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use
of a domain name that is confusingly similar to an established mark to divert
Internet users to an adult-oriented website “tarnishes Complainant’s mark and
does not evidence noncommercial or fair use of the domain name by a
respondent”); see also Brown &
Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding
that infringing on another’s well-known mark to provide a link to a
pornographic site is not a legitimate or fair use).
Complainant alleges that Respondent is
not commonly known by the <magickingdom.info> domain name. Furthermore, the domain name’s
WHOIS information states that Respondent is known as “R B.” Complainant states
that Respondent is not licensed to use the MAGIC KINGDOM mark. The Panel
concludes that Respondent has failed to demonstrate rights or legitimate
interests in the domain name under 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 the respondent was not
commonly known by the mark and never applied for a license or permission from
the complainant to use the trademarked name); 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”).
Complainant provides evidence that
Respondent offered to sell the <magickingdom.info> domain name
registration to Complainant. Respondent acknowledges it offered to sell the
domain name registration to Complainant several times. Despite Respondent’s assertions that it
registered the <magickingdom.info> domain name because the term
“magic kingdom” is an expression used to refer to the sleeper cab of a
semi-truck, the Panel finds that Respondent’s willingness to dispose of its
rights in the disputed domain name evidences that Respondent lacks rights and
legitimate interests in the domain name under Policy ¶ 4(a)(ii). See Am. Nat’l Red Cross v. Domains, FA 143684
(Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain
name is further evidenced by Respondent’s attempt to sell its domain name
registration to Complainant, the rightful holder of the RED CROSS mark.”); see
also Mothers Against Drunk Driving v. Shin, FA 154098 (Nat. Arb. Forum May
27, 2003) (finding that the respondent’s apparent willingness to dispose of its
rights in the disputed domain name suggested that it lacked rights or
legitimate interests in the domain name).
Complainant
states that Respondent sent an e-mail offer to sell the <magickingdom.info>
domain name registration to several of Complainant’s executives on October 22,
2004, the same day that Respondent registered the domain name. Complainant
offers evidence that Respondent offered to sell the disputed domain name
registration for $12,154.95. The Panel finds that Respondent’s instantaneous
offer to sell the domain name registration to Complainant for more than its
out-of-pocket costs directly related to the domain name evidences bad faith
registration and use under Policy ¶ 4(b)(i). See Deutsche Bank AG v. Diego-Arturo Bruckner, D2000-0277 (WIPO May 30,
2000) (finding that the name was registered in bad faith because of the short
time frame between the respondent’s registration and the unsolicited offer of
sale to the complainant); see also Am. Online, Inc. v. Prijic, FA 112639
(Nat. Arb. Forum June 27, 2002) (“[I]n determining whether Respondent has
sought consideration in excess of its out-of-pocket costs, the Policy makes
clear that only costs related to the domain name are to be considered, and not
those related to the creation or maintenance of the connected website.”); see
also Dollar Rent A Car Sys. Inc. v.
Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that the
respondent demonstrated bad faith by registering the domain name with the
intent to transfer it to the complainant for $3,000, an amount in excess of its
out of pocket costs).
Complainant
further states that Respondent used the <magickingdom.info> domain
name to redirect unsuspecting Internet users to an adult “messaging service”
operated by Respondent. The Panel infers that Respondent commercially benefits
from this diversion. The Panel finds that Respondent attempted to attract
Internet users to its website by creating a likelihood of confusion with
Complainant’s MAGIC KINGDOM mark, which evidences bad faith registration and
use under Policy ¶ 4(b)(iv). See Wells Fargo & Co. v. Party Night Inc.,
FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to
adult-oriented websites was evidence that the domain names were being used in
bad faith); 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 is obviously connected with the
complainant’s well-known marks, thus creating a likelihood of confusion
strictly for commercial gain); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13,
2000) (finding bad faith where the respondent attracted users to a website
sponsored by the respondent and created confusion with the complainant’s mark
as to the source, sponsorship, or affiliation of that website).
While
each of the four circumstances listed under Policy ¶ 4(b), if proven, evidences
bad faith use and registration of the domain name, additional factors can also
be used to support findings of bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb.
Forum May 18, 2000) (finding that in determining if a domain name has been
registered in bad faith, the panel must look at the “totality of
circumstances”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are
intended to be illustrative, rather than exclusive.”).
Complainant additionally argues that
Respondent’s registration of the <magickingdom.info> domain name,
which is identical to Complainant’s well-known mark, suggests that Respondent
knew of Complainant’s rights in the MAGIC KINGDOM mark. Additionally,
Complainant asserts that Complainant’s trademark registration for the MAGIC
KINGDOM mark on the Principal Register of the United States Patent and
Trademark Office gave Respondent constructive notice of the mark. Furthermore,
the domain name’s WHOIS information indicates that Respondent is located only
seventeen miles from Complainant’s famous Walt Disney World Resort’s MAGIC
KINGDOM theme park. Thus, the Panel finds that Respondent chose the disputed
domain name based on the distinctive and well-known qualities of Complainant’s
mark, which evidences bad faith registration and use under Policy ¶ 4(a)(iii). See
Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(finding bad faith registration and use where it was “inconceivable that
Respondent could make any active use of the disputed domain names without
creating a false impression of association with Complainant”); see also 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 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.”).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <magickingdom.info>
domain name be TRANSFERRED from Respondent to Complainant.
Honorable Nelson A. Diaz, Panelist
Dated: May 3, 2005
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