Disney Enterprises, Inc. v. Artmidia
Comunicacao Visual Criacao E Arte Ltda.
Claim Number: FA0512000603590
PARTIES
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 Artmidia
Comunicacao Visual Criacao E Arte Ltda (“Respondent”), 212 Belo Horizonte,
MG 30120050.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <disneylandia.com> and <disneylandia.net>, registered with Bulkregister, LLC.
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 Paul A. Dorf (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 30, 2005; the National Arbitration Forum received a
hard copy of the Complaint on November 30, 2005.
On December 6, 2005, Bulkregister, LLC. confirmed by e-mail to the
National Arbitration Forum that the <disneylandia.com> and <disneylandia.net> domain names are registered with Bulkregister,
LLC. and that the Respondent is the current registrant of the name. Bulkregister, LLC. has verified that
Respondent is bound by the Bulkregister, LLC. 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 December 8, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 28, 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@disneylandia.com and postmaster@disneylandia.net
by e-mail.
A timely Response was received and determined to be complete on December
28, 2005.
On January 3, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Honorable Paul A. Dorf as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that the domain names at issue fully incorporate
Complainant’s famous, long standing and widely registered trademarks making
them identical or confusingly similar to Complainant’s famous mark; that Respondent had no legitimate interest
in the domain names at issue; and that the Respondent registered and used the
domain names at issue in bad faith.
B. Respondent
Respondent contends that they did not register the domain name at issue
in bad faith, and that they would transfer the domain name at issue if they
were paid the costs of the registration and renewal and maintenance of the
internet site.
FINDINGS
Complainant has been
the owner of many registrations for the Disney trademark in the United States
and countries all over the world.
Complaint has continually used these marks for a variety of
entertainment related goods and services.
Complaint owns a registration in Brazil for the “Disneylandia”
mark. These trademarks were established
well before the Respondent registered the domain names at issue.
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.
As stated above, the Complainant has
registered the “Disney” trademark with the United States Patent and Trademark
Office (“USPTO”). This is sufficient
evidence to establish Complainant’s right to the mark and the domain names at
issue. 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.”);
see also 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.”).
Further, the addition of the letters “ia” to
the end of Complainant’s DISNEYLAND mark is insufficient to distinguish the
domain names at issue from Complainant’s mark.
The term “disneylandia” is the Portuguese translation of the DISNEYLAND
mark, and Complianant holds such a trademark for this term in Brazil. Therefore, the <disneylandia.com>
and <disneylandia.net> domain names are confusingly similar to
Complainant’s mark. See Victoria’s
Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding
that, by adding letters to words, a respondent does not create a distinct mark
but nevertheless renders the domain name confusingly similar to the
complainant’s marks); see also Kelson Physician Partners, Inc. v. Mason,
CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or
confusingly similar to the complainant’s federally registered service mark, KELSON).
Respondent has not provided any objective
evidence to indicate it has rights or legitimate interests in the domain names
at issue. Complainant, as stated above,
holds trademark registrations for both the “Disney” and “Disneylandia”
marks. See 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”); 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 has no right or legitimate interest is sufficient to shift the
burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist).
It appears from the evidence presented that
the domain names as issue are being used as portals to Respondent’s own website
in an effort to divert Internet users for Respondent’s own commercial
gain. Such diversionary use is neither
a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)
nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Am. Online,
Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept.
26, 2003) (“Respondent's registration and use of the <gayaol.com> domain
name with the intent to divert Internet users to Respondent's website suggests
that Respondent has no rights to or legitimate interests in the disputed domain
name pursuant to Policy Paragraph 4(a)(ii).”).
Further, Respondent has not presented any
objective evidence to indicate it has permission to register domain names
featuring Complainant’s DISNEYLAND mark or that it is commonly known by the <disneylandia.com>
and <disneylandia.net> domain names. See Charles Jourdan
Holding AG v. AAIM, D2000-0403 (WIPO June 27,
2000) (finding no rights or legitimate interests where (1) the respondent is
not a licensee of the complainant; (2) the complainant’s prior rights in the
domain name precede the respondent’s registration; (3) the respondent is not
commonly known by the domain name in question); 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).
Respondent’s use of
the <disneylandia.com> and <disneylandia.net> domain names to
divert Internet users to Respondent’s website for its own commercial gain. Such commercial use will likely cause
confusion among Internet users as to Complainant’s sponsorship of or
affiliation with Respondent’s disputed domain name. See 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.”); see also 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).
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 <disneylandia.com> and <disneylandia.net> domain names be TRANSFERRED from
Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: January 16, 2006
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