Disney Enterprises, Inc. v. Florida Villas
& Homes by Elite
Claim Number: FA0512000609082
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 Florida Villas
& Homes by Elite (“Respondent”), 4638 Cumbrian Kakes Drive, Kissimmee,
FL 34746-6716.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <selectdisneyvacations.com>,
registered with Go Daddy Software, Inc.
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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on December 12, 2005; the National Arbitration Forum received a
hard copy of the Complaint on December 13, 2005.
On December 13, 2005, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <selectdisneyvacations.com>
domain name is registered with Go Daddy Software, Inc. and that the Respondent
is the current registrant of the name. Go
Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy
Software, 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 December 14, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 3, 2006 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@selectdisneyvacations.com by e-mail.
A timely Response was received and determined to be complete on January
3, 2006.
On January 11, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as
Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
a.
Respondent’s Domain
Name Fully Incorporates Complainant’s Famous, Long-Standing and Widely
Registered Disney Trademarks.
Complainant owns numerous trademark registrations for the word mark DISNEY. Many of these registrations specifically describe travel-related goods and services as among the Complainant’s uses of the Disney Trademarks. This includes www.disney.com, www.disneyvacation.com and www.disneylandvacation.com, each of which fully incorporates the Disney Trademarks.
The test of confusing similarity under the UDRP is confined to a consideration of the disputed domain name and the trademark, without reference to other issues. Microsoft Corporation v. WDW Inc., et. al., D2002-0412 (WIPO July 1, 2002). The disputed Domain Name is confusingly similar to the Disney Trademarks, as it incorporates the Disney Trademarks in their entirety.
The addition of generic words (“vacation” for example) to a famous trademark demonstrates confusing similarity with a complainant’s mark. Microsoft, supra (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); Yahoo! Inc. v. Seocho, FA109050 (NAF May 13, 2002) (same). Indeed, the fact that the additional generic word bears a close relationship with certain of Complainant’s established business activities makes confusing similarity more likely than otherwise. DC Comics, et al. v. IQ Management Corp., FA 514423 (NAF Aug. 22. 2005) (the term “costume” is closely related to Complainant’s mark and fails to adequately distinguish the domain name).
b.
Respondent Has No
Legitimate Interest in the Domain Name.
Several distinct grounds support the conclusion that the Respondent has no legitimate interest in the Domain Name. First, Respondent is not authorized by Complainant to use the Domain Name. "[I]n the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent.” Guerlain S.A. v. Peikang, D2000-0055 (WIPO March 21, 2000).
Second, Respondent registered and uses the Domain Name to infringe Complainant’s rights in its DISNEY Trademarks, to trade off Complainant’s goodwill. In particular, the website to which the Domain Name directs Internet users offers accommodations near Kissimmee, Florida, near the world-famous Walt Disney World Resort. Respondent profits from by redirecting to Complainant's competitors traffic otherwise intended for Complainant by redirecting them to a website which offers accommodation unrelated to and unapproved by Complainant. Instead of a true “Disney Vacation” the Internet user is offered accommodations located near the Walt Disney World resort. Previous panels convened pursuant to the UDRP have found this does not constitute a legitimate use. See, for example, Disney Enterprises, Inc. v. My Disney Vacation FA553392 (NAF Oct. 18, 2005); Disney Enterprises, Inc. v. McSherry FA 154589 (NAF June 17, 2003).
Thus, Respondent’s use of the Domain Name does not and cannot constitute a bona fide offering of goods or services. Madonna Ciccione a/k/a Madonna v. Dan Parisi, et. al., D2000-0847 (WIPO October 12, 2000) (“use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods and services”); Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO March 6, 2001)( “bona fide use does not exist when the intended use is a deliberate infringement of another’s rights”). Complainant has not authorized Respondent to use its trademarks or to seek the registration of any domain name incorporating the marks. Respondent must have known when selecting the disputed Domain Name that the public would incorrectly associate it with Complainant and Complainant’s marks. In fact, given the distinctiveness and fame of the mark, there is no plausible explanation for the Respondents’ registration of the Domain Name other than to trade upon the goodwill the Complainant has developed in its marks. Respondent had no legitimate interest in doing so. Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO September 5, 2000).
Respondent is not and has not been commonly known by the disputed Domain Name. Respondent does not use the trademarks to identify itself on its website or for any other legitimate purpose. Respondent’s use of the trademark in its WHOIS registration is an unauthorized use and, as such, insufficient to establish legitimate interest in the Domain Name. Compaq Information Technologies Group, LP v. Waterlooplein Ltd., FA0204000109718 (NAF May 29, 2002).
c.
Respondent
Registered and Uses the Domain Name in Bad Faith.
Respondent’s registration and use of the Domain Name separately meets the bad faith elements set forth in Section 4(b)(iv) of the UDRP because Respondent is intentionally using the Domain Name to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website, or of a product or service offered through the website.
In particular, Respondent offers accommodations (on a commercial basis) located at Kissimmee, Florida, near the Walt Disney World Resort. By using the disputed Domain Name to direct Internet traffic to websites other than those owned by Complainant, Respondent is trading on the value of the mark established by Complainant. Such a use constitutes bad faith. Disney Enterprises, Inc. v. McSherry , supra, (bad faith use of the domain name Disney Vacation Villas by commercial use of site to sell vacation rentals unaffiliated with Complainant owner of the DISNEY trademark).
Due to the similarity of the Domain Name with the Disney Trademarks, along with its long-established and widespread use and registration of the DISNEY Trademarks, Respondent clearly knew of Complainant’s marks before registering the Domain Name. Choice Hotels International, Inc. v.Dinoia, infra (Respondent’s knowledge of Complainant’s trademark can be inferred from reading the website on which references to Complainant’s trademarks appear); FNAC v. SZK.com, D2004-0413 (WIPO July 26, 2004)(bad faith established by knowledge of Complainant’s trademark which can be inferred from fame of the trademark). Muppet Holding Company LLC v. Brown FA 518373 (NAF Aug. 26, 2005) (fame of Complainant’s mark, its registration with the USPTO and the obvious link between Complainant’s mark and the content of Respondent’s website all suggest that Respondent had both actual and constructive knowledge of Complainant’s rights in the mark.)
By registering the Domain Name with actual knowledge of Complainant’s marks, Respondent acted in bad faith by breaching its registration contract with the registrar because it falsely represented that its registration of the Domain Name did not infringe the legal rights of any third party. Thus, the registration constituted bad faith under the UDRP. See Google Inc. v. wwwgoogle.com, D2000-1240 (WIPO November 9, 2000).
Respondent also evidences bad faith in its failure to cease using the
website or to respond to Complainant’s demands that it cease and desist from
his wrongful use of the Domain Name. See Exhibit I (demand letter); RRI
Financial Inc. v. Ray Chen, D2001-1242 (WIPO December 11, 2001), holding that a
failure to respond to cease and desist demands is a factor supporting a finding
of bad faith.
B. Respondent
Respondent’s letter of objection said:
“I am writing in reference to the use of the domain name being used by our company www.selectdisneyvacations.com and the complaint from the Disney Corporation. I would like to apologize for the delay in responding as I have been in the UK and with the holiday season have been unable to respond sooner.
Firstly I would like to bring to your attention that we have changed the use of this domain immediately on receiving the Complaint Notification, the site is now under www.selectfloridavacation.com but due to advanced marketing and the way the search engines promote our web site the domain is still active diverting the traffic. When the domain was originally purchased through networks solutions I really didn’t believe and still feel we have done nothing wrong.
We are a small company serving private investors with the management of vacation homes around the Kissimmee area. Part of our function is rent the homes to people wanting to visit the area on vacation. Our clients come for a number of reasons including visiting the attractions in the area as well as business functions at the convention center and the coast.
When Disney first made contact with us asking us to remove certain items from the website this was immediately done for them. There are a large number of Companies that are using Disney in their domain names together with other trade mark protected items. We have always tried not to offend Disney with anything that may conflict with their trademarked products.
We do not want to and cannot fight
Disney on this complaint but would ask for their compassion on allowing us to
carry on using the domain until the end of April and then we would cease to use
the name there afterwards.”
FINDINGS
The domain name will be
transferred because:
(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.
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.
The Panel will not be used as a forum to conduct settlement
negotiations between the parties. Those
should have occurred before this proceeding was brought or outside this
proceeding. The Panel was asked to make
a ruling and it will do so. Panels do
not act as mediators.
Complainant has established rights in the DISNEY mark pursuant to Policy ¶4(a)(i) through registration with the USPTO. See 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.”); see also 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”).
The domain name incorporates the entirely of Complainant’s registered and distinctive trademark. The addition of the top-level domain “.com” is irrelevant in determining whether the domain name is confusingly similar to Complainant’s mark. See Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the 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").
Likewise the addition the common words “select” and “vacations” does not sufficiently differentiate this domain name. Complainant actually sells vacations similar (but not identical) to the ones Respondent is selling. The parties certainly are in direct competition, especially from Respondent’s viewpoint. Confusion is inevitable.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant asserts Respondent does not have rights or legitimate interests in the <SelectDisneyVacations.com> domain name. When a complainant establishes a prima facie case pursuant to Policy ¶4(a)(ii), the burden shifts to the respondent to prove that it has rights or legitimate interests. Respondent agrees it has no rights to the Disney mark.
Respondent is not commonly known by the <SelectDisneyVacations.com> domain name. Respondent has not established rights or legitimate interests in the disputed 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 interest where respondent was not commonly known by the mark and never applied for a license or permission from complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that the respondent has no rights or legitimate interests in domain names because it is not commonly known by the complainant’s marks and the respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
The Panel finds Policy ¶4(a)(ii) satisfied.
Given the fact the Respondent:
1.
had no rights
to the Disney mark when it registered the domain name and knew it;
2.
has no rights
to the domain name now and knows it;
3.
wishes to
continue trading under the domain name until it expires, making a profit by
using Complainant’s registered trademark;
it is clear Respondent registered and uses
the domain name in bad faith.
The Panel finds Policy ¶4(a)(iii) satisfied.
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 <selectdisneyvacations.com>
domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator,
Panelist
Dated: January 24, 2006
Click Here to return to
the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum