Disney Enterprises, Inc. v. Theo Giannioses
Claim Number: FA0704000956256
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 <disneylink.com>, registered with Go Daddy Software, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 6, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 6, 2007.
On April 6, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <disneylink.com> domain name is registered with Go Daddy Software, Inc. and that 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 April 11, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 1, 2007, by which Respondent could file a Response to the Complaint, was delivered to Respondent by e-mail, post and fax, as well as to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and by e-mail to postmaster@disneylink.com.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 8, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is one of the world’s largest children’s entertainment goods and services companies and has continuously and extensively used the DISNEY mark for many years.
Complainant maintains numerous domain names, including <disney.com>, <disneybooks.com>, <disneychannel.com>, and <disneyland.com>.
Complainant has registered the DISNEY mark with numerous trademark authorities, including with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,162,727, issued July 28, 1981).
Respondent’s <disneylink.com> domain name, which it registered on August 17, 2006, resolves to a website featuring links to various commercial websites, some of which contain Complainant’s DISNEY mark but nonetheless redirect Internet users to unrelated third-party websites which are not authorized to market Complainant’s goods.
Respondent’s <disneylink.com> domain name is confusingly similar to Complainant’s DISNEY mark.
Respondent does not have any rights or legitimate interests in the <disneylink.com> domain name.
Respondent registered and uses the <disneylink.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 draw such inferences it 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 a 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s trademark registration for the DISNEY mark
adequately demonstrates its rights in the mark under Policy ¶ 4(a)(i). See Google, Inc. v.
DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that a
complainant established rights in the GOOGLE mark through its holding of
numerous trademark registrations around the world); see also Microsoft Corp. v.
Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has
established rights in the MICROSOFT mark through registration of the mark with
the USPTO.”).
The <disneylink.com>
domain name incorporates Complainant’s DISNEY mark in its entirety, and merely
appends the term “link,” as well as the generic top-level domain (“gTLD”)
“.com.” In Sony
Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000), a panel
found that the addition of generic words to the end of a complainant’s SONY
mark rendered a respondent’s domain names confusingly similar because
“[n]either the addition of an ordinary descriptive word . . . nor
the suffix ‘.com’ detract from the overall impression of the dominant part of
the name in each case.” Likewise,
Respondent’s addition of a common dictionary term and a gTLD fail to
distinguish the disputed domain name from the DISNEY mark. Therefore, the domain name is confusingly
similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Experian Info. Solutions, Inc. v. Credit
Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain
names incorporating a complainant’s entire EXPERIAN mark and merely adding the
term “credit” were confusingly similar to the mark).
The Panel thus finds that Complainant has satisfied this element of the Policy.
Under Policy ¶ 4(a)(ii), the burden is on Complainant to make out a prima facie case that Respondent lacks rights and legitimate interests in the domain name in dispute. Once Complainant makes out such a case, the burden shifts to Respondent to demonstrate that it nonetheless has such rights or legitimate interests. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by a complainant under Policy ¶ 4(c), the burden then shifts to a respondent to demonstrate its rights or legitimate interests in a disputed domain name); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (finding that Policy ¶ 4(a)(ii) requires that a complainant show that a respondent has no rights to or legitimate interests in a domain name, and that once the complainant makes this showing, the burden of production shifts to that respondent to rebut that complainant’s allegations).
Respondent has not responded to this Complaint. This raises a presumption that Respondent has no rights or legitimate interests in the <disneylink.com> domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, a respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in a domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that a respondents’ failure to respond can be construed as an admission that it has no legitimate interest in a domain name). Nevertheless, the Panel will examine the evidence in the record to see if there is any basis for determining that Respondent has rights or legitimate interests under any of the factors listed in Policy ¶ 4(c).
We first note in this regard that the WHOIS information for
the <disneylink.com> domain
name lists “Theo Giannioses” as the registrant of the disputed domain name, and
that there is no other evidence in the record indicating that Respondent is
commonly known by the domain name in dispute.
Hence Respondent has not satisfied Policy ¶ 4(c)(ii). See
Moreover, there is no dispute that Respondent is utilizing the <disneylink.com> domain name by posting links to various commercial websites with content unrelated to Complainant. Respondent presumably profits from click-through fees for each Internet user it diverts to these third-party websites. As a result, Respondent is not using the <disneylink.com> domain name 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). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that a respondent’s use of a complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to that respondent’s website for commercial gain does not constitute either 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 also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a contested domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel therefore finds that Complainant has satisfied this element of the Policy.
Respondent does not deny that it is using the <disneylink.com> domain name to
operate a pay-per-click website that displays links to various other websites unrelated
to Complainant. Some of these links bear
Complainant’s registered DISNEY mark but resolve to unrelated websites or
websites unauthorized to sell goods bearing Complainant’s mark. Respondent has thus taken advantage of the
confusing similarity between the disputed domain name and the DISNEY mark and
profits from the goodwill associated with the mark in the form of click-through
fees. Such registration and use
constitutes bad faith according to Policy ¶ 4(b)(iv). See
GMAC LLC v. WhoisGuard Protected, FA 924715 (Nat. Arb. Forum May 2, 2007)
(“Under Paragraph 4(b) of the Policy, evidence that a domain name registrant
has intentionally attempted to attract, for commercial gain, Internet users to
the registrant’s website by creating a likelihood of confusion with the
complainant’s mark serves as evidence of bad faith.”); see also Williams-Sonoma, Inc. v. Fees, FA 937704
(Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar
domain name to display links to various third-party websites demonstrated bad
faith registration and use pursuant to Policy ¶ 4(b)(iv)).
In addition, it appears that Respondent registered the <disneylink.com> domain name
with at least constructive knowledge of Complainant’s rights in the DISNEY trademark by virtue of Complainant’s prior
registration of that mark with the United States Patent and Trademark
Office. Registration of a confusingly similar
domain name despite such constructive knowledge is, without more, evidence of
bad faith registration and use of the domain name pursuant to Policy ¶
4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct.
24, 2002); see also
For these distinct reasons, the Panel finds that Complainant has satisfied this element of the Policy.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <disneylink.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 16, 2007
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