Disney Enterprises Inc. v. Nevis Domains LLC.
Claim Number: FA0608000773199
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 Nevis Domains LLC. (“Respondent”), 222-3 Main Street, Charlestown, II Nevis, KN.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <bambi2.com>, registered with Moniker Online Services, 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 August 11, 2006; the National Arbitration Forum received a hard copy of the Complaint August 11, 2006.
On August 23, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <bambi2.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. verified that Respondent is bound by the Moniker Online Services, 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 August 24, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 13, 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@bambi2.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 19, 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 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, <bambi2.com>, is confusingly similar to Complainant’s BAMBI mark.
2. Respondent has no rights to or legitimate interests in the <bambi2.com> domain name.
3. Respondent registered and used the <bambi2.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Disney Enterprises Inc., produces, markets and distributes an animated motion picture under the WALT DISNEY’S BAMBI mark. When first released in 1942, Complainant’s motion picture received three Academy Award nominations. Since 1942, Complainant has continuously and extensively used the WALT DISNEY’S BAMBI mark in connection with this film and derivative works. In 2006, Complainant released a direct-to-video sequel to the original film, Bambi II. This film sold more than two-and-a-half million copies in its first weekend alone and generated over $14 million in theater sales in areas where Complainant released the film theatrically.
Complainant registered the WALT DISNEY’S BAMBI mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,889,386 issued September 28, 2004, filed August 27, 1998).
The disputed domain name that Respondent registered, <bambi2.com>, which it registered February 15, 2004, resolves to a website displaying links to third-party websites selling Complainant’s products under the WALT DISNEY’S BAMBI and other Disney-related marks, as well as related products made by Complainant’s competitors.
Respondent has been the subject of numerous UDRP decisions resulting in the transfer of contested domain names. See, e.g., Houston McLande Co., Inc. v. Nevis Domains LLC, FA 650935 (Nat. Arb. Forum Apr. 10, 2006); Barratt American Inc. v. Nevis Domains LLC, FA 701239 (Nat. Arb. Forum May 17, 2006); Sanofi-aventis v. Nevis Domains LLC, D2006-0303 (WIPO May 8, 2006); Am. Automobile Ass’n, Inc. v. Nevis Domains, D2006-0489 (WIPO June 13, 2006).
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 registered the WALT DISNEY’S BAMBI mark with the USPTO. Complainant filed for this trademark registration in 1998, six years before Respondent registered the <bambi2.com> domain name. Therefore, Complainant established rights in WALT DISNEY’S BAMBI mark pursuant to Policy ¶ 4(a)(i), and these rights predate Respondent’s registration of the disputed domain name. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
The disputed domain name, <bambi2.com>,
contains the predominant term of Complainant’s WALT DISNEY’S BAMBI mark, omits
the terms “Walt” and “Disney’s” and adds the numeral “2.” In WestJet Air Ctr., Inc. v. W. Jets LLC,
FA 96882 (Nat. Arb. Forum Apr. 20, 2001), the panel found the
<westjets.com> domain name to be confusingly similar to the complainant’s
WEST JET AIR CENTER mark despite the omission of two terms from the mark. The panel in Omnitel Pronto Italia S.p.A.
v. Bella, D2000-1641 (WIPO Mar. 12, 2001) found respondent did not
distinguish the <omnitel2000.com> domain name from complainant’s mark by
merely adding the numeral “2000.” Consequently,
the Panel finds that Respondent’s alterations to Complainant’s WALT DISNEY’S
BAMBI are not distinguishing differences and as a result, the <bambi2.com>
domain name is confusingly similar to the mark pursuant to Policy ¶
4(a)(i). See Hitachi, Ltd. v.
Fortune Int’l Dev. Ent. Co., D2000-0412 (WIPO July 2, 2000) (finding that
the domain name <hitachi2000.net> is confusingly similar to the
complainant’s mark); see also Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000)
(finding that the domain name <asprey.com> is confusingly similar to the
complainant’s ASPREY & GARRARD and MISS ASPREY marks).
The Panel concludes that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established with extrinsic evidence in this
proceeding that it has rights to and legitimate interests in the mark contained
within the domain name. Complainant
asserts that Respondent has no such rights to or legitimate interests in the <bambi2.com> domain name. Complainant must first make a prima facie
case in support of its allegations, and then the burden shifts to
Respondent to show it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). See Hanna-Barbera Productions, Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must
first make a prima facie case that the respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before
the burden shifts to the respondent to show that it does have rights or
legitimate interests in a domain name); see also Document
Tech., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO Jun. 6, 2000)
(“Although Paragraph 4(a) of the Policy requires that the Complainant prove the
presence of this element (along with the other two), once a Complainant makes
out a prima facie showing, the burden of production on this factor
shifts to the Respondent to rebut the showing by providing concrete evidence
that it has rights to or legitimate interests in the Domain Name.”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <bambi2.com> domain name. See Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where the respondent fails to respond); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June
20, 2000) (“By not submitting a response, Respondent has failed to invoke any
circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any
rights or legitimate interests in the domain name”).
However, the Panel will now
examine the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c).
Respondent registered the domain name under the name “Nevis
Domains LLC,” and no evidence in the record suggests that Respondent is
commonly known by the <bambi2.com> domain
name. Thus, Respondent failed to
establish rights or legitimate interests in the <bambi2.com>
domain name, pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that respondent was not commonly
known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii)
based on the WHOIS information and other evidence in the record); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the
WHOIS contact information for the disputed domain [name], one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
‘welsfargo’ in any derivation.”).
The Panel concludes that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant alleged that
Respondent acted in bad faith in registering and using domain name containing
Complainant’s protected mark. Respondent has registered and used numerous
domain names containing the trademarks of other entities. Respondent’s bad faith registration and use
as to some of these domain names has been established by previous panels in
UDRP proceedings. Consequently, the
Panel finds that Respondent has demonstrated a pattern of registering domain
names containing others’ marks in order to prevent these parties from
reflecting their marks in domain names.
Such conduct is prohibited under Policy ¶ 4(b)(ii). See Yahoo! Inc. v. Deiana, FA 339579
(Nat. Arb. Forum Nov. 22, 2004) (“It is found and determined that Respondent is in
violation of Policy ¶ 4(b)(ii) because Respondent registered the disputed
domain names to prevent Complainant from reflecting its YAHOO! mark in the
corresponding domain names. The
registration of the [<ayhooo.com>, <ayhooo.net >,
<ayhooo.org>, <ayhoooindia.com>, <ayhoookids.com>,
<ayhooorealty.com>, <ayhooorealty.net>, <ayhoooshopping.com>,
<ayhooo-uk.com>, and <searchayhooo.com>] domain names herein
constitutes a pattern of registering trademark-related domain names in bad
faith.”); see also Nat’l Abortion Fed’n v. Dom 4
Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith
pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant
from reflecting its mark in a domain name and the respondent had several
adverse decisions against it in previous UDRP proceedings, which established a
pattern of cybersquatting).
In addition, Respondent has registered and is using the <bambi2.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because it is diverting Internet users seeking Complainant’s products under the WALT DISNEY’S BAMBI mark to a website providing links to other websites selling these products and the products of Complainant’s competitors. The Panel infers that Respondent receives click-through fees for each consumer it diverts to other websites. Consequently, Respondent is taking advantage of the confusing similarity between Complainant’s WALT DISNEY’S BAMBI mark and the <bambi2.com> domain name in order to profit from the goodwill associated with the mark, and this practice constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods).
Furthermore, by registering a domain name that is
confusingly similar to Complainant’s WALT DISNEY’S BAMBI mark and by using it
to maintain a web page with links to third-party websites selling the products
of Complainant and its competitors, Respondent has registered the domain name
in order to disrupt Complainant’s business.
Such use of the disputed domain name to divert and disrupt Complainant’s
business constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶
4(b)(iii) [and] (iv).”); see also S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business).
The Panel concludes 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 <bambi2.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 3, 2006.
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