Disney Enterprises, Inc. v. JMP
Claim Number: FA0504000464445
PARTIES
Complainant
is Disney Enterprises, Inc. (“Complainant”),
represented by J. Andrew Coombs, 450 North Brand Boulevard, Suite 600,
Glendale, CA 91203-2349. Respondent is JMP (“Respondent”), Tampa, FL 33626.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <piratesofthecaribbean2.com>,
registered with Innerwise, Inc. d/b/a Itsyourdomain.com.
PANEL
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.
Honorable
Richard B. Wickersham, Judge (Ret.), as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
15, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 15, 2005.
On
April 19, 2005, Innerwise, Inc. d/b/a Itsyourdomain.com confirmed by e-mail to
the National Arbitration Forum that the domain name <piratesofthecaribbean2.com> is registered with Innerwise,
Inc. d/b/a Itsyourdomain.com and that the Respondent is the current registrant
of the name. Innerwise, Inc. d/b/a
Itsyourdomain.com has verified that Respondent is bound by the Innerwise, Inc.
d/b/a Itsyourdomain.com 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
April 20, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 10,
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@piratesofthecaribbean2.com by e-mail.
An
untimely Response was received and determined to be complete on May 12, 2005. Panelist has determined to fully consider
the untimely Response.
On May 17, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Richard B. Wickersham, Judge (Ret.), as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
owns trademark rights in the phrase PIRATES OF THE CARIBBEAN (the “Trademark”)
by virtue of longstanding use as the name of attractions at theme parks
operated by certain of its affiliated companies and by virtue of the highly
successful Pirates of the Caribbean: The
Curse of the Black Pearl motion picture (the “Motion Picture”), which was
inspired by the theme park attraction.
Complainant’s
Trademark is evidenced by a pending application for PIRATES OF THE CARIBBEAN in
Class 41 for “Amusement Park Services” based on a first (and continuous use)
since 1967. The original attraction at
Disneyland in California was so successful that it was duplicated at Walt
Disney World in Orlando and in Disneyland Resort Paris.
The
continuing success and popularity of the theme park attraction led Disney to
produce the Motion Picture, which was distributed under the Walt Disney
Pictures banner by Complainant’s affiliate Buena Vista Pictures
Distribution. The Motion Picture was
released on July 9, 2003 and is reported to have grossed more than $300 million
at the domestic (United States) box office as a result of which it was one of
the top grossing films of 2003. The
Motion Picture was subsequently released in home video format with such success
that a “special edition” DVD soon followed.
The
initial reception of the Motion Picture was such that the production of a
sequel, Pirates of the Caribbean 2,
was announced within one week after the United States theatrical release, on or
about July 16, 2005.
The
title of a motion picture series like that of Complainant’s is protectable as a
trademark. See Disney Enters., Inc. v. Avalon Domains, FA
411746 (Nat. Arb. Forum Mar. 24, 2005)(and cases collected there); see also
Aetna Inc. v. Jacoby FA125816
(Nat. Arb. Forum Nov. 22, 2002); see
also British Broad. Corp. v. Renteria,
D2000-0050 (WIPO Mar. 23, 2000); see also McCarthy on Trademarks and Unfair Competition, § 10:6 (4th ed.
2002).
B.
Respondent
In
response to FA 464445, I submit the following response to the purported grounds
provided by Complainant.
Complainant
currently holds no registered trademark for "Pirates of the
Caribbean" per the United States Patent and Trademark Office and thus
holds no legal rights to this phrase or its business use. Thus this Complaint is invalid.
Since
"Pirates of the Caribbean" is not a trademarked phrase, the interest
by Respondent is irrelevant since it is personal and not business related. This phrase "Pirates of the
Caribbean" is a common historical phrase and simply states the facts that
Pirates were at one time (as recent as the 20th century) in and around the
Caribbean Sea. Living in Tampa, we
celebrate Gasparilla each year commemorating the notorious landing of Pirates
in Tampa Bay Harbor in the early 1900s.
This phrase simply relates to a genuinely historical and celebrated
activity in my city.
Further,
Respondent can sell this domain property if approached since it is not in
trademark dispute and is the rightful owner.
Continuing,
when domains are not forwarded to a website, Respondent's registrar
automatically forwards domains to its website without request or consent. This is the reason <piratesofthecaribbean2.com>
is linked to the originating registrar.
This is also common practice for most discount domain services.
Finally,
WHOIS information serves a purpose of contact of a registered owner of a
domain. Like the automated service
requested by the Arbitration website used for this response (Online Response
for UDRP Domain Dispute Cases - choose a method of contact - fax, mail, email),
Respondent prefers and only requires one method of contact due to the misuse
and abuse of WHOIS spamming. Two valid
emails were provided and used for contact, which has satisfied the contact
requirements by this hearing.
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.
FINDINGS
Complainant
asserts that it has established common law rights in the PIRATES OF THE
CARIBBEAN mark through continuous use of the mark since 1967, specifically in
connection with its theme park attraction of the same name and in connection
with the internationally successful film Pirates of the Caribbean: The Curse
of the Black Pearl, which was released in July 2003. See SeekAm. Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000)
(finding that the Rules do not require that the 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 Keppel TatLee Bank v. Taylor,
D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of
the said name [<keppelbank.com>] in connection with its banking business,
it has acquired rights under the common law); 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).
The
Panel finds that Respondent’s <piratesofthecaribbean2.com> domain
name is confusingly similar to Complainant’s mark because it incorporates the
mark in its entirety and adds the number “2.”
The Panel finds that such a minor alteration is not enough to overcome a
finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31,
2000) (finding that the addition of the numeral 4 in the domain name
<4icq.com> does nothing to deflect the impact on the viewer of the ICQ
mark and is therefore confusingly similar); see also Hitachi, Ltd. v. Fortune Int’l Dev. Ent. Co.,
D2000-0412 (WIPO July 2, 2000) (finding that the domain name
<hitachi2000.net> is confusingly similar to the complainant’s mark).
Furthermore,
the Panel finds that the addition of the generic top-level domain “.com” and
the omission of the spaces between the terms of Complainant’s mark is
insufficient to negate the confusing similarity between Respondent’s domain
name and Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22,
2000) (“[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is .
. . without legal significance since use of a gTLD is required of domain name
registrants.”); see also Nev.
State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063
(Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic
top-level domain is irrelevant when considering whether a domain name is
identical or confusingly similar under the Policy.”); see also 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”).
Complainant
asserts that Respondent is using the disputed domain name to redirect Internet
users to a website featuring links to third party commercial websites not
associated with Complainant’s business.
The Panel infers that Respondent receives click-through fees for the use
of these links at the disputed domain name.
Thus, the Panel concludes that Respondent’s use of the <piratesofthecaribbean2.com>
domain name is not a bona fide offering of goods or services pursuant to Policy
¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain
name pursuant to Policy ¶ 4(c)(iii). See
WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12,
2003) (finding that the respondent’s use of the disputed domain name to redirect
Internet users to websites unrelated to the complainant’s mark, websites where
the respondent presumably receives a referral fee for each misdirected Internet
user, was not a bona fide offering of goods or services as contemplated by the
Policy); see also Disney
Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum March 17, 2003)
(finding that the respondent’s diversionary use of the complainant’s mark to
attract Internet users to its own website, which contained a series of
hyperlinks to unrelated websites, was neither a bona fide offering of goods or
services nor a legitimate noncommercial or fair use of the disputed domain
names).
Furthermore,
the Panel finds that Respondent is neither commonly known by the disputed
domain name nor authorized to register domain names featuring Complainant’s
PIRATES OF THE CARIBBEAN mark.
Therefore, Panel concludes that Respondent has not established rights or
legitimate interests in the <piratesofthecaribbean2.com> domain
name 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 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 Gallup Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
known by the mark).
Moreover,
the Panel interprets Respondent’s “parking” of the domain name for a period of
nearly two years as passive holding.
Thus, Panel concludes that Respondent lacks rights and legitimate
interests in the domain name pursuant to Policy ¶ 4(a)(ii). See Am. Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001)
(finding no rights or legitimate interests in the domain name
<solgarvitamins.com> where the respondent merely passively held the
domain name); see also Nike, Inc.
v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or
legitimate interests where the respondent made no use of the infringing domain
names).
Complainant
asserts that Respondent is wholly appropriating Complainant’s mark to redirect
Internet users to a website featuring links to third party websites not associated
with Complainant’s business where Respondent presumably earns click-through
fees. Thus, Panel concludes 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 G.D. Searle & Co.
v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding
that the respondent registered and used the domain name in bad faith pursuant
to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar
domain name to attract Internet users to its commercial website); 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).
Panel
finds that Respondent registered the <piratesofthecaribbean2.com>
domain name with actual or constructive knowledge of Complainant’s rights in
the PIRATES OF THE CARIBBEAN mark due to immense fame Complainant’s mark has
acquired. The Panel concludes that
registration of a domain name that is confusingly similar to another’s mark
despite actual or constructive knowledge of the mark holder’s rights is
tantamount to bad faith registration and use 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 Nintendo of Am. Inc v. Pokemon,
D2000-1230 (WIPO Nov. 23, 2000) (finding that the respondent, at the time of
registration, had notice of the complainant’s famous POKÉMON and
PIKACHU trademarks given their extreme popularity).
Additionally, Panel finds that
Respondent’s “parking” of the disputed domain name constitutes passive
holding. Panel concludes that
Respondent registered and used the disputed domain name in bad faith pursuant
to Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows,
D2000-0003 (WIPO Feb. 18, 2000) (“[I]t 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 the
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).
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 <piratesofthecaribbean2.com>
domain name be TRANSFERRED from Respondent to Complainant.
___________________________________________________
Honorable Richard B. Wickersham, Judge
(Ret.), Panelist
Dated: May 31, 2005
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