Disney Enterprises, Inc. v. Richard Jones
Claim Number: FA0607000749607
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 Richard Jones (“Respondent”), Residence Emeraude, Apt 160 Building D 5, Rue Insel, Toulouse 31 200 FR.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <disnay.com>, registered with Enom, Inc.
The undersigned certifies that she has 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 July 14, 2006; the National Arbitration Forum received a hard copy of the Complaint July 14, 2006.
On July 17, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <disnay.com> domain name 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 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 July 19, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 8, 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@disnay.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 15, 2006, 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 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, <disnay.com>, is confusingly similar to Complainant’s DISNEY mark.
2. Respondent has no rights to or legitimate interests in the <disnay.com> domain name.
3. Respondent registered and used the <disnay.com> 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 United States Patent and Trademark Office (“USPTO”).
Respondent registered the <disnay.com> domain name February 22, 2001. Respondent is using the disputed domain name to redirect Internet users to Respondent’s commercial website that purports to sell Complainant’s goods and services without Complainant’s authorization.
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, <disnay.com> is confusingly similar to
Complainant’s mark. The only difference
is the substitution of the letter “a” for the letter “e.” The Panel finds that such a small difference
does not significantly distinguish the domain name from the DISNEY mark. See Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by
only one letter from a trademark has a greater tendency to be confusingly
similar to the trademark where the trademark is highly distinctive); see
also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18,
2000) (finding that, by misspelling words and 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).
The Panel finds that Complainant established Policy ¶ 4(a)(i).
Complainant established that it has rights to and legitimate interests in the mark contained in the disputed domain name. Complainant alleged that Respondent has no such rights to or legitimate interests in the <disnay.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). 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 <disnay.com> domain name to
redirect Internet users to Respondent’s commercial website that purports to
sell Complainant’s goods and services without Complainant’s authorization. Respondent’s use of a domain name that is
confusingly similar to Complainant’s DISNEY mark to redirect Internet users
interested in Complainant’s goods and services to a website that offers
Complainant’s goods and services without Complainant’s authorization is not a
use in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the
domain name pursuant to Policy ¶ 4(c)(iii).
See G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum
June 12, 2002) (finding the respondent’s use of the disputed domain name to
solicit pharmaceutical orders without a license or authorization from the
complainant does not constitute a bona fide offering of goods or
services under Policy ¶ 4(c)(i)); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001)
(finding that use of the complainant’s mark to sell the complainant’s perfume,
as well as other brands of perfume, is not bona fide use); see also Nat’l Collegiate Athletic Ass’n v. Halpern,
D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the
complainant’s goods without the complainant’s authority, as well as others’
goods, is not bona fide use).
Moreover, Respondent offered no evidence and no evidence in the record suggests that Respondent is commonly known by the <disnay.com> domain name. Thus, Respondent has not established rights or legitimate interests in the <disnay.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 respondent was not commonly known by the disputed domain name and was not using the domain name in connection with a legitimate or fair use).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant also alleged that Respondent acted in bad faith in registering and using a domain name containing Complainant’s mark without authorization to do so. The <disnay.com> domain name resolves to Respondent’s commercial website that purports to sell Complainant’s goods and services without Complainant’s authorization. Additionally, Respondent’s use of Complainant’s distinctive DISNEY mark in the domain name creates a likelihood of confusion and suggests an attempt to attract Internet users to Respondent’s website for Respondent’s commercial gain. The Panel finds that this is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). 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).
The Panel finds that Complainant satisfied 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 <disnay.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 29, 2006.
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