Disney Enterprises, Inc. v.
Dayanand Kamble
Claim Number: FA0702000918556
PARTIES
Complainant is Disney Enterprises, Inc. (“Complainant”), represented by J.
Andrew Coombs, of J. Andrew Coombs, A Professional Corporation,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <disneycomics.com>, registered with Lead
Networks Domains Pvt. Ltd.
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.
Richard Hill as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 15, 2007; the
National Arbitration Forum received a hard copy of the Complaint on February 16, 2007.
On February 20, 2007, Lead Networks Domains Pvt. Ltd. confirmed by
e-mail to the National Arbitration Forum that the <disneycomics.com>
domain name is registered with Lead Networks
Domains Pvt. Ltd. and that the Respondent is the current registrant of
the name. Lead Networks Domains Pvt. Ltd. has verified that Respondent is
bound by the Lead Networks Domains Pvt. Ltd.
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 February 22, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of March 14, 2007 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@disneycomics.com by e-mail.
A Response was received electronically before the deadline for
Response, but the National Arbitration Forum did not receive a hard copy of the
Response until after the deadline. As a
result, the Response has been deemed deficient pursuant to Supplemental Rule
5(a).
An Additional Submission was received from Complainant on March 19,
2007. The Additional Submission was
compliant with Supplemental Rule 7.
On March 19, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Richard Hill as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant Disney
Enterprises, Inc. (“Disney” or “Complainant”) has been for many years the owner
of hundreds of registrations for the DISNEY trademark (the “Trademark”) and
other trademarks in countries all over the world (collectively the
“Trademarks”). For decades, Complainant,
or its predecessor in interest, has continuously used and applied the
Trademarks for a variety of goods and services.
The Trademark
is so widely accepted in the mind of the general public that the Trademark has
become unquestionably famous and distinctive and has acquired secondary meaning
and distinctiveness throughout the
The disputed domain name is confusingly similar to the Trademark, as it incorporates the Trademark in its entirety with only the addition of a generic word “comics.”
Several distinct grounds support the conclusion that Respondent has no legitimate interest in the Domain Name. First, Respondent is not authorized by Complainant to use the Domain Name.
Further, Respondent’s use of the
domain name does not constitute a bona
fide offering of goods or services. See 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
names incorporating the Trademark, Trademarks, or any of them. Respondent must have known when it selected
the Domain Name that the public would incorrectly associate it with Complainant’s
marks. In fact, given the distinctiveness
and fame of the Trademark, specifically, there is no plausible explanation for Respondent’s
registration of the Domain Name other than to trade upon the goodwill Complainant
has developed in its marks. Madonna
Ciccione a/k/a Madonna, supra. Respondent
had no legitimate interest in registering the Domain Name.
Lastly, Respondent is not and has not been commonly known by the Domain Name. Respondent does not use the Trademark to identify itself on its website or for any other legitimate purpose.
Respondent’s registration and use
of the Domain Name meets the bad faith elements set forth in Section 4(b)(i) of
the UDRP. First, the fame of the
Trademark combined with widespread marketing of Complainant’s goods and
services and the registration of the Trademark put Respondent on notice of
Complainant’s Trademark. The Trademark is so internationally distinctive and
famous Respondent must have had actual knowledge of the Trademark prior to the
Domain Name’s registration. Also, use of
the trademarks DISNEY and UNCLE SCROOGE on the website to which the Domain Name
directs Internet users demonstrates actual knowledge of Complainant’s Trademarks.
Respondent’s registration and use
of the Domain Name also 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, while offering non-Disney branded
merchandise through the website. Warner Bros. Entertainment Inc. v. Rana,
FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the respondent’s
reliance on confusion for commercial gain constitutes bad faith). By using the disputed Domain Name and
diverting Internet traffic to websites other than those owned or otherwise
approved by Complainant, Respondent is trading on the value of the Trademarks
established by Complainant.
B. Respondent
Respondent denies each and every allegation,
submission and contention in the Complaint.
Respondent alleges that the Complaint suffers
from gross delay and laches and therefore on this ground alone the same is
liable to be and should be dismissed.
He further submits that Complainant has filed
the Complaint so that Respondent succumb to the illegal and unreasonable
demands of Complainant and therefore Complainant has not approached this Forum
with clean hands and therefore no relief, much less, equitable be granted to
the Complaint and on this ground alone the same is liable to be and the case
should be dismissed.
However, without prejudice to what is stated
hereinabove and at the further outset, and without prejudice to his rights in
the disputed domain name, Respondent offers to transfer the domain name to Complainant
on payment of the out of pocket expenses of US$ 296.95. Respondent states that he is well within his
rights as per the UDRP ¶ 4(b)(i) to ask for out of pocket expenses. If Complainant is unwilling to pay this amount
then on this ground alone the Complaint is liable to be dismissed.
Further, Respondent denies that he is aware of
the various trademarks of Complainant and further denies that Complainant is
entitled to the disputed domain name. That
domain name consists of 15 letters. Out
of the 15 letters Complainant is claiming a trademark to 6 letters. The balance of convenience is in favour of Respondent
that there are 9 letters which do not consists of the trademark of Complainant,
hence Complainant should not be entitled to the domain name. The domain cannot be said to be similar or
confusingly similar to the trademark of Complainant. On this ground alone the same is liable to be
and should be dismissed.
Respondent states that he has legitimate
interest in the disputed domain name as he had paid for it and has renewed the
domain from time to time. He is entitled
to the domain name and has rights in the domain and no one can claim them until
he assigns the rights to the domain to the any person.
Further, Respondent states that he has not
registered the domain for selling it to Complainant or for extracting money
from Complainant for the said domain in excess to the out of pocket expenses
for the said domain name. Hence it
cannot be said that he is using the domain in bad faith.
C. Additional Submissions
According to Complainant, Respondent admits all elements of Disney’s claim in his Response. His attempt to inject irrelevant and/or unsupported argument in opposition to Disney’s claim should be rejected as i) the purported affirmative defense of laches does not apply in law or in fact, and, ii) bad faith is not only effectively admitted by failure to contradict facts adduced in support of Disney’s petition, they are underscored by a further demand for payment exceeding any documented out of pocket costs.
According to Complainant, the
doctrine of laches has been held to be improper for complaints under the UDRP,
and regardless, would not apply in this particular instance. Many decisions state uncertainty as to
whether the doctrine even applies to these proceedings. See, e.g.,
Kevin Spacey v. Alberta Hot Rods, FA 114437 (Nat. Arb. Forum August 1, 2002); The State Bar of
In addition to the above, Disney’s last letter to Respondent was dated December 15, 2006. This proceeding was initiated in February of 2007. As the doctrine of laches requires knowledge, and Respondent cannot show Disney’s knowledge of the infringement prior to the December 15, 2006 letter, a mere two months should not be considered an unreasonable delay despite Respondent’s unfounded contentions.
According to evidence submitted by Complainant, Respondent had previously sought an amount above out of pockets costs for transfer of the disputed domain name. As stated in the Response, Respondent now seeks more than double that amount for the said transfer, without justification, and without supporting documentation, further evidencing bad faith.
Further, despite being on notice of
the infringing nature of the website to which the Domain Name directs,
Respondent continues to park unauthorized advertising links utilizing some of
Disney’s most famous trademarks, including DISNEY, MICKEY MOUSE, DONALD DUCK,
and UNCLE SCROOGE. Respondent’s behavior
evidences not only Respondent’s knowledge of Disney’s Trademarks, contrary to
his assertions, but also further highlights Respondent’s bad faith in this
matter.
FINDINGS
Complaint owns the famous mark DISNEY.
Respondent registered and is using the
disputed domain name to point to a web site that offers advertising links and products,
some related to Complainant’s mark and some unrelated.
Respondent does not have any license or other
agreement to use Complainant’s famous mark.
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.
However, before discussing the merits, the Panel will deal with two
procedural issues:
a.
The
formal deficiency in the Response
b.
Respondent’s
allegation that the Complaint should be dismissed because it is tardy or under
the theory of laches.
The Forum has determined that Respondent has submitted a deficient Response according to Supplemental Rule 5(a), because the Forum did not receive a hard copy of the Response until after the deadline for Response. The Panel may still consider the late Response in addition to materials timely received but has no obligation to consider it in light of its deficient nature. See Bd. of Governors of the Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (finding that a panel may consider a response which was one day late, and received before a panelist was appointed and any consideration made); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Feb. 28, 2007) (deciding to consider the respondent’s response even though it was deficient because it provided useful information to the panel in making its decision).
As in the case cited above, the Panel chooses to admit the Response.
As Complainant correctly points out, previous Panels have found that the doctrine of laches does not apply to UDRP cases. Indeed, subtle or complex questions of national law are best handled by the competent national courts, not by Panels constituted under the Policy.
Therefore, the Panel decides to
proceed with this decision despite Respondent’s claims of delay. See Drown Corp. v. Premier Wine & Spirits,
FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (finding that the laches
defense was inappropriate under the Policy and that the time frame within which
the complainant brought the proceeding was of no consequential value); see also Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006)
(“Respondent’s efforts at arguing related equitable defenses such as estoppel
and acquiescence are equally misplaced as these legal arguments are not
contemplated by the Policy. Moreover,
recognition of these arguments in accordance with Respondent’s desires requires
the Panel to make a legal determination regarding the continuing validity of
Complainant’s DISNEY mark. Such action
is beyond the scope of the UDRP proceeding and if Respondent desires such an
outcome it should avail itself of the proper judicial proceedings by which such
a result might be accomplished.”).
The disputed domain name is obviously
confusingly similar to Complainant’s famous mark DISNEY, in the sense of the
Policy. Contrary to what Respondent
argues, the relative lengths of various character strings in the disputed domain
name are not a determining factor when assessing the issue of confusing
similarity. See Disney v. McSherry, FA
154589 (Nat. Arb. Forum June 17, 2003) (finding the
<disneyvacationvillas.com> domain name to be confusingly similar to
Complainant’s DISNEY mark because it incorporated Complainant’s entire famous
mark and merely added two terms to it); see
also Google Inc. v. Xtraplus Corp., D2001-0125
(WIPO Apr. 16, 2001) (finding that the respondent’s domain names were
confusingly similar to Complainant’s GOOGLE mark where the respondent merely
added common terms such as “buy” or “gear” to the end).
Complainant provides evidence that
Respondent’s website at the disputed domain name contains links such as “Comic
Books,” “Disney Comic Books,” and “Scrooge McDuck Comic Books” and appears to
be a pay-per-click website where Respondent earns click-through fees for each
consumer it diverts to other websites.
The Panel finds that Respondent is
redirecting Internet users interested in Complainant’s products and services to
its own website for commercial gain and that such use does not fall within the
parameters of a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See The Royal Bank of Scot.
Group v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006)
(finding that the operation of a commercial web directory displaying various
links to third-party websites was 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 pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned
“click-through” fees for each consumer it redirected to other websites); see
also Persohn
v. Lim, FA 874447 (Nat. Arb. Forum
Feb. 19, 2007) (finding that the respondent was not using a disputed domain
name in connection with a bona fide offering
of goods or services or a legitimate noncommercial or fair use by redirecting
Internet users to a commercial search engine website with links to multiple
websites that may be of interest to the complainant’s customers and presumably
earning “click-through fees” in the process).
Respondent’s assertion that he was unaware of Complainant’s famous marks is contradicted by Respondent’s own website, which features those marks prominently. Thus, Respondent’s actions show that his submissions to the panel are false or misleading which is, in and of itself, an indication of bad faith in the sense of the Policy.
Further, it is
difficult to conceive of any possible bona fide use of Complainant’s
famous mark (unless of course there is a license to use such a mark). Therefore, any use of Complainant’s mark is
likely to be, prima facie, in bad faith.
And indeed
Respondent’s actual use of the disputed domain name (as noted above) is clearly
not bona fide, because Respondent is operating what appears to be a
pay-per-click website at the disputed domain name. This indicates that Respondent has registered
and is using the disputed domain name to take advantage of the confusing
similarity between the disputed domain name and Complainant’s famous DISNEY
mark in order to profit from the goodwill associated with the mark in bad faith
under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v.
Siddiqi, FA 721969 (Nat.
Arb. Forum July 18, 2006) (finding that the respondent engaged in bad
faith registration and use by using a domain name that was confusingly similar
to the complainant’s mark to offer links to third-party websites that offered
services similar to those offered by the complainant); see also The Ass’n of Junior Leagues Int’l Inc. v.
This Domain Name My Be For
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 <disneycomics.com> domain name be TRANSFERRED
from Respondent to Complainant.
Richard Hill, Panelist
Dated: 27 March 2007
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