Disney Enterprises, Inc. v. Whois Privacy
Protection Service, Inc. a/k/a Whois Agent
Claim
Number: FA0506000506742
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,
USA. Respondent is Whois Privacy Protection Service, Inc. a/k/a Whois Agent (“Respondent”)
PMB 368, 14150 NE 20th St – F1 c/o disneychannel.com, Bellevue, WA
98007.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <disneychannal.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.
James
A. Crary 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
June 30, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum
that the domain name <disneychannal.com> is registered with Enom,
Inc. and that Respondent is the current registrant of the name. 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
July 7, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 27, 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@disneychannal.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 James A.
Crary 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 <disneychannal.com>
domain name is confusingly similar to Complainant’s DISNEY mark.
2. Respondent does not have any rights or
legitimate interests in the <disneychannal.com> domain name.
3. Respondent registered and used the <disneychannal.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Disney Enterprises, Inc., is a worldwide leading producer of children’s
entertainment goods and services such as movies, television programs, books,
and merchandise. In association with
these goods and services, Complainant owns rights in a variety of trademarks
registered with the United States Patent and Trademark Office (“USPTO”), most
notable of which is the DISNEY mark (Reg. No. 1,162,727 issued July 28, 1981).
Respondent
registered the <disneychannal.com> domain name on August 29, 2002. Respondent’s domain name resolves to a
website that features links to various commercial websites as well as links
that feature the DISNEY mark and products associated with Complainant’s mark.
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
submitted evidence of ownership of exclusive rights in the DISNEY mark. Through its registration with the USPTO,
Complainant has shown that the mark has acquired secondary meaning and
established rights pursuant to Policy ¶ 4(a)(i). 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 [or] have acquired secondary
meaning.”); see also Innomed Techs., Inc. v. DRP
Servs., FA 221171 (Nat. Arb. Forum Feb.
18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”).
Complainant
asserts that Respondent’s <disneychannal.com> domain name is confusingly similar to
Complainant’s DISNEY mark. Respondent’s
domain name includes Complainant’s entire trademark while adding a misspelled
variation of the generic term “channel.”
Panels have held that the addition of generic terms to trademarks fail
to properly differentiate the mark. As
a result, the Panel finds that the <disneychannal.com> domain name
is confusingly similar to Complainant’s trademark pursuant to Policy ¶
4(a)(i). See Arthur Guinness Son
& Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001)
(finding confusing similarity where the domain name in dispute contains the
identical mark of the complainant combined with a generic word or term); see
also AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000)
(finding that the <axachinaregion.com> domain name “is confusingly
similar to the Complainant's trade mark ‘AXA’” because “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”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
further asserts that Respondent lacks all rights or legitimate interests in the
<disneychannal.com> domain name.
Complainant’s submission creates a prima facie case which
Respondent has the burden of refuting. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(“Because Complainant’s Submission constitutes a prima facie case under
the Policy, the burden effectively shifts to Respondent. Respondent’s failure
to respond means that Respondent has not presented any circumstances that would
promote its rights or legitimate interests in the subject domain name under
Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has
asserted that the 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”). Because Respondent has failed to bring forth
evidence suggesting otherwise, the Panel infers that no rights or legitimate
interests exist pursuant to Policy ¶ 4(a)(ii).
See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”); see also Do
the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of
a respondent to come forward to [contest complainant’s allegations] is
tantamount to admitting the truth of complainant’s assertions in this
regard.”).
Respondent’s
disputed domain name resolves to a website featuring links to various
commercial websites including those that display Complainant’s DISNEY
mark. Presumably, Respondent receives
referral fees for each Internet user diverted through Respondent’s domain
name. Such diversionary use is neither
a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Seiko
Kabushiki Kaisha v. CS into Tech, FA
198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking
for products relating to the famous SEIKO mark, to a website unrelated to the
mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i),
nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see
also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum
Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to
Complainant’s mark to divert Internet users to websites unrelated to
Complainant's business does not represent a bona fide offering of goods or
services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii).”).
Furthermore,
nothing in the record indicates that Respondent is either commonly known by the
disputed domain name or authorized to register domain names bearing
Complainant’s trademark. The Panel
finds that Respondent lacks rights or legitimate interests pursuant to Policy ¶
4(c)(ii). See 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 Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest 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).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <disneychannal.com>
domain name resolves to a website that features links to various commercial
websites through which Respondent presumably receives click-through fees. Because Respondent’s domain name is
confusingly similar to Complainant’s DISNEY mark, consumer’s accessing
Respondent’s domain name may become confused as to Complainant’s affiliation or
sponsorship of the resulting website.
The Panel finds that this competing use is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv). See
H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8,
2003) (finding that the disputed domain name was registered and used in bad
faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and
use of the infringing domain name to intentionally attempt to attract Internet
users to its fraudulent website by using the complainant’s famous marks and
likeness); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration
and use of a domain name that incorporates another's mark with the intent to
deceive Internet users in regard to the source or affiliation of the domain
name is evidence of bad faith.”).
Finally,
Respondent registered the <disneychannal.com> domain name with constructive or actual
knowledge of Complainant’s rights in the DISNEY trademark. Federal trademark registration with the
USPTO confers constructive knowledge of Complainant’s rights in the DISNEY mark
onto Respondent. See 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 Victoria’s
Cyber Secret Ltd. v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal
Register registration [of a trademark or service mark] is constructive notice of
a claim of ownership so as to eliminate any defense of good faith adoption”
pursuant to 15 U.S.C. § 1072).
Furthermore, due to Respondent’s inclusion of Complainant’s mark on the
resulting website, along with goods and services associated with that mark, the
Panel infers that Respondent had actual knowledge of Complainant’s rights. Registration of a confusingly similar domain
name despite constructive or actual knowledge is evidence of 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) (holding that “there is a legal presumption of bad
faith, when Respondent reasonably should have been aware of Complainant’s
trademarks, actually or constructively”); 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.").
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 <disneychannal.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Crary, Panelist
Dated:
August 17, 2005
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