Disney Enterpries, Inc. v. PX Publishing
Ltd.
Claim
Number: FA0506000506604
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 PX Publishing Ltd. (“Respondent”), Unit 28C, Newbattle Abbey
College Annexe, Dalkeith, Edinburgh (GB), EH223LJ.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <desparatehousewives.com>, registered with
Domainfighter.ca 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.
Honorable
Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
29, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 30, 2005.
On
July 5, 2005, Domainfighter.ca Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <desparatehousewives.com>
is registered with Domainfighter.ca Inc. and that Respondent is the current
registrant of the name. Domainfighter.ca Inc. has verified that Respondent is
bound by the Domainfighter.ca 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
July 6, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 26, 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@desparatehousewives.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
August 4, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Honorable
Paul A. Dorf (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 <desparatehousewives.com>
domain name is confusingly similar to Complainant’s DESPERATE HOUSEWIVES mark.
2. Respondent does not have any rights or
legitimate interests in the <desparatehousewives.com> domain name.
3. Respondent registered and used the <desparatehousewives.com>
domain name 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. 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.
Complainant also
has several pending trademark applications with the United States Patent and
Trademark Office (“USPTO”) 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).
Respondent registered
the <desparatehousewives.com> domain name on May 28, 2005. Respondent is using the disputed domain name
to redirect Internet users to Respondent’s commercial website featuring links
to online sites that provide information about audio-visual entertainment which
competes with productions made or distributed by Complainant.
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. The Panel is entitled to accept all reasonable allegations and
inferences set forth in the Complaint as true unless the evidence is clearly
contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing,
inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the
respondent's failure to respond allows all reasonable inferences of fact in the
allegations of the complaint to be deemed true); see also 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.").
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 that it has several pending trademark applications that were filed
with the United States Patent and Trademark Office for the DESPERATE HOUSEWIVES
mark. See SeekAmerica 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 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 <desparatehousewives.com>
domain name is confusingly similar to Complainant’s DESPERATE HOUSEWIVES mark
because the domain name features a misspelled version of Complainant’s
mark. Respondent’s domain name
misspells the word “desperate” by replacing the second “e” in the word with the
letter “a.” Furthermore, Respondent’s
domain name incorporates the addition of the generic top-level domain “.com” to
the mark. The Panel finds that such
minor alterations to Complainant’s mark are insufficient to negate the
confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶
4(a)(i). See Victoria’s
Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding
that, by misspelling words and adding letters to words, the respondent does not
create a distinct mark but nevertheless renders the domain name confusingly
similar to the complainant’s marks); see also Belkin Components v.
Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the
<belken.com> domain name confusingly similar to the complainant's BELKIN
mark because the name merely replaced the letter “i” in the complainant's mark
with the letter “e”); see also Toronto-Dominion Bank v. Karpachev,
D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain names
<tdwatergouse.com> and <dwaterhouse.com> are virtually identical to
the complainant’s TD WATERHOUSE name and mark); see also Pomellato S.p.A v.
Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com>
identical to the complainant’s mark because the generic top-level domain (gTLD)
“.com” after the name POMELLATO is not relevant).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent does not have rights or legitimate interests in the <desparatehousewives.com>
domain name. Once Complainant makes a prima
facie case in support of its allegations, the burden shifts to Respondent
to prove that it does have rights or legitimate interests pursuant to Policy ¶
4(a)(ii). Due to Respondent’s failure
to respond to the Complaint, the Panel assumes that Respondent does not have
rights or legitimate interests in the disputed domain name. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that, where the complainant has asserted that respondent does not have
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 the
complainant that the respondent does not have rights or legitimate interests is
sufficient to shift the burden of proof to the respondent to demonstrate that
such a right or legitimate interest does exist).
Respondent is
using the <desparatehousewives.com> domain name to redirect
Internet users to Respondent’s commercial website featuring links to online
sites providing information about audio-visual entertainment which competes
with productions made or distributed by Complainant. Respondent’s use of a domain name confusingly similar to
Complainant’s DESPERATE HOUSEWIVES mark to redirect Internet users interested
in Complainant’s products and services to a website that offers similar
products and services in direct competition with Complainant’s business is not
a use in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use
of the domain name pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb.
Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK
mark to market products that compete with Complainant’s goods does not
constitute a bona fide offering of goods and services.”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is
not using the disputed domain name in connection with a bona fide offering of
goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”); see also Or. State Bar v. A Special Day, Inc.,
FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal
services and sale of law-related books under Complainant's name is not a bona
fide offering of goods and services because Respondent is using a mark
confusingly similar to the Complainant's to sell competing goods.”).
Moreover,
Respondent has offered no evidence and there is no proof in the record
suggesting that Respondent is commonly known by the <desparatehousewives.com>
domain name. Thus, Respondent has not
established rights or legitimate interests in the <desparatehousewives.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); see also
Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5,
2001) (finding no rights or legitimate interests because the respondent was not
commonly known by the disputed domain name nor was the respondent using the
domain name in connection with a legitimate or fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <desparatehousewives.com> domain name, which is
confusingly similar to Complainant’s DESPERATE HOUSEWIVES mark, to redirect
Internet users to a website that provides links to audio-visual entertainment in
direct competition with Complainant’s business. The Panel finds that such use constitutes disruption and is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000)
(finding the respondent acted in bad faith by attracting Internet users to a
website that competes with the complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000)
(finding that the respondent diverted business from the complainant to a
competitor’s website in violation of Policy ¶ 4(b)(iii)).
The Panel infers
that Respondent receives click-through fees for diverting Internet users to
competing websites. Since Respondent’s
domain name is confusingly similar to Complainant’s DESPERATE HOUSEWIVES mark,
Internet users accessing Respondent’s domain name may become confused as to
Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <desparatehousewives.com>
domain name constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002)
(finding that if the respondent profits from its diversionary use of the
complainant’s mark when the domain name resolves to commercial websites and the
respondent fails to contest the complaint, it may be concluded that the respondent
is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v.
Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where
the respondent directed Internet users seeking the complainant’s site to its
own website for commercial gain).
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 <desparatehousewives.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
August 18, 2005
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