Disney Enterprises, Inc. v. Miss Anna Valdieri
Claim Number: FA0510000586947
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 Miss Anna Valdieri (“Respondent”), P.O. Box 245, Vienna, AT, 1130.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <disneystore.org>, registered with Wild West Domains, Inc.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 26, 2005; the National Arbitration Forum received a hard copy of the Complaint October 26, 2005.
On October 26, 2005, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <disneystore.org> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. verified that Respondent is bound by the Wild West Domains, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 28, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 17, 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@disneystore.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 23, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson 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. The domain name that Respondent registered, <disneystore.org>, is confusingly similar to Complainant’s DISNEY mark.
2. Respondent has no rights to or legitimate interests in the <disneystore.org> domain name.
3. Respondent registered and used the <disneystore.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Disney Enterprises, Inc., holds hundreds of registrations for the DISNEY mark. Complainant registered the DISNEY mark July 28, 1981 (Reg. No. 1,162,727) with the U.S. Patent and Trademark Office (“USPTO”).
Respondent registered the <disneystore.org> domain name February 16, 2005. The website associated with the <disneystore.org> domain name links to several “related and unrelated sites.”
Complainant sent Respondent a cease-and-desist letter May 31, 2005.
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 will draw such inferences as the Panel 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 Complainant to 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 submitted substantial extrinsic evidence to
establish that it has legal rights in the DISNEY and related marks. The Panel accepts this evidence and holds
that it establishes Complainant’s rights pursuant to Policy ¶ 4(a)(i). See 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.”); Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”).
The Panel finds that the disputed domain name that
Respondent registered, <disneystore.org> is confusingly similar to
Complainant’s mark. The only difference
is the addition of the word “store” and the “.org” top-level domain. The Panel finds that these differences do
not significantly distinguish the domain name from the DISNEY mark. See L.L. Bean, Inc. v. ShopStarNetwork,
FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic
word “shop” with the complainant’s registered mark “llbean” does not circumvent
the complainant’s rights in the mark nor avoid the confusing similarity aspect
of the ICANN Policy); Koninklijke Philips Elecs. NV v. Goktas, D2000-1638
(WIPO Feb. 8, 2001) (finding that the domain name <philips.org> is
identical to the complainant’s PHILIPS mark).
The Panel finds that Complainant established Policy ¶ 4(a)(i).
Complainant established that it has rights in the mark
contained in its entirety in the disputed domain name. Complainant alleged that Respondent has no
such rights or legitimate interests.
The disputed domain name refers to a website that lists several “related
and unrelated sites,” according to the Complaint. The Panel finds that, absent any other evidence relating to use,
appropriating Complainant’s mark in a domain name to link to related and
unrelated sites does not demonstrate rights or legitimate interests because it
is not a bona fide offering pursuant to Policy ¶ 4(c)(i) and it is not a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Dot Stop,
FA 145227 (Nat. Arb. Forum Mar. 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); 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).”).
Nothing in the record, including the WHOIS registration
information, demonstrates that Respondent is commonly known by the disputed
domain name. The Panel finds that
Respondent does not have rights or legitimate interests 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); Gallup, Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that respondent does
not have rights in a domain name when the respondent is not known by the mark).
The Panel finds that Complainant established Policy ¶ 4(a)(ii).
Respondent is appropriating Complainant’s DISNEY mark in the
<disneystore.org> domain name to lead Internet users to related
and unrelated links. The Panel infers
that, in accordance with common Internet practice, the links generate
click-through fees for Respondent.
Therefore, the Panel finds that Complainant has exhibited bad faith
registration and use pursuant to Policy ¶ 4(b)(iv) by appropriating
Complainant’s mark in a confusingly similar domain name for commercial
gain. 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)); 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).
The Panel finds that Complainant established Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <disneystore.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 7, 2005.
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