National Arbitration Forum

 

DECISION

 

Disney Enterprises, Inc. and ESPN, Inc. v. Kanter Associates SA c/o Admin

Claim Number: FA0911001293417

 

PARTIES

Complainant is Disney Enterprises, Inc. and ESPN, Inc. (“Complainant”), represented by J. Andrew Coombs of J. Andrew Coombs, A Professional Corporation, California, USA.  Respondent is Kanter Associates SA c/o Admin (“Respondent”), represented by Maria Bergsten, Spain.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <clubepnguin.com>, <babybambi.com>, <babyeintstein.com>, <carsthevideogames.com>, <cheetahagirls.com>, <cheetahgirlsmovie.com>, <cheetahgirlstwo.com>, <cheetergirls.com>, <cinderala.com>, <cinderalla3.com>, <cindrella3.com>, <clubpanguins.com>, <clubpeingiun.com>, <clubpengnin.com>, <clubpenguinpasswords.com>, <dianeymovieclub.com>, <diisneilatino.com>, <disnary.com>, <disnev.com>, <disneycakes.com>, <disneysanimalkingdom.com>, <epspn.com>, <haighscoolmusical.com>, <hannahmontanaconcerts.com>, <hannahmontanashop.com>, <hannahmontanamusicvideos.com>, <higeschoolmusical.com>, <highschoolmsical.com>, <highschoolmuical.com>, <highschoolmusicel.com>, <highshoolmusical.com>, <highskoolmusical.com>, <mundodedisny.com>, <musicahighschoolmusical.com>, <playhawsdisne.com>, <playhousdisne.com>, <playhousediisney.com>, <playhousedinseychannel.com>, <thatsoravan.com>, <thatssoravon.com>, and <videoshighschoolmusical.com>, registered with Fabulous.com Pty Ltd.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically November 6, 2009; the National Arbitration Forum received a hard copy of the Complaint November 6, 2009.

 

On November 8, 2009, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <clubepnguin.com>, <babybambi.com>, <babyeintstein.com>, <carsthevideogames.com>, <cheetahagirls.com>, <cheetahgirlsmovie.com>, <cheetahgirlstwo.com>, <cheetergirls.com>, <cinderala.com>, <cinderalla3.com>, <cindrella3.com>, <clubpanguins.com>, <clubpeingiun.com>, <clubpengnin.com>, <clubpenguinpasswords.com>, <dianeymovieclub.com>, <diisneilatino.com>, <disnary.com>, <disnev.com>, <disneycakes.com>, <disneysanimalkingdom.com>, <epspn.com>, <haighscoolmusical.com>, <hannahmontanaconcerts.com>, <hannahmontanashop.com>, <hannahmontanamusicvideos.com>, <higeschoolmusical.com>, <highschoolmsical.com>, <highschoolmuical.com>, <highschoolmusicel.com>, <highshoolmusical.com>, <highskoolmusical.com>, <mundodedisny.com>, <musicahighschoolmusical.com>, <playhawsdisne.com>, <playhousdisne.com>, <playhousediisney.com>, <playhousedinseychannel.com>, <thatsoravan.com>, <thatssoravon.com>, and <videoshighschoolmusical.com> domain names are registered with Fabulous.com Pty Ltd. and that the Respondent is the current registrant of the names.  Fabulous.com Pty Ltd. verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 November 23, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 14, 2009, 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@clubepnguin.com, postmaster@babybambi.com, postmaster@babyeintstein.com, postmaster@carsthevideogames.com, postmaster@cheetahagirls.com, postmaster@cheetahgirlsmovie.com, postmaster@cheetahgirlstwo.com, postmaster@cheetergirls.com, postmaster@cinderala.com, postmaster@cinderalla3.com, postmaster@cindrella3.com, postmaster@clubpanguins.com, postmaster@clubpeingiun.com, postmaster@clubpengnin.com, postmaster@clubpenguinpasswords.com, postmaster@dianeymovieclub.com, postmaster@diisneilatino.com, postmaster@disnary.com, postmaster@disnev.com, postmaster@disneycakes.com, postmaster@disneysanimalkingdom.com, postmaster@epspn.com, postmaster@haighscoolmusical.com, postmaster@hannahmontanaconcerts.com, postmaster@hannahmontanashop.com, postmaster@hannahmontanamusicvideos.com, postmaster@higeschoolmusical.com, postmaster@highschoolmsical.com,  postmaster@highschoolmuical.com, postmaster@highschoolmusicel.com,  postmaster@highshoolmusical.com, postmaster@highskoolmusical.com,  postmaster@mundodedisny.com, postmaster@musicahighschoolmusical.com,  postmaster@playhawsdisne.com, postmaster@playhousdisne.com,  postmaster@playhousediisney.com, postmaster@playhousedinseychannel.com,  postmaster@thatsoravan.com, postmaster@thatssoravon.com, and  postmaster@videoshighschoolmusical.com by e-mail.

 

The Forum received a timely Response and determined it to be complete December 14, 2009.

 

No Additional Submissions or Additional Responses were submitted.

 

On December 21, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A.     Complainant makes the following allegations in this proceeding:

 

1.      Respondent registered a series of domain names containing Complainant’s protected marks.

2.   Respondent has no rights to or legitimate interests in the domain names containing Complainant’s protected marks.

3.   Respondent registered and used the disputed domain names in bad faith.

 

B. Respondent makes the following points in response:

 

1.      Respondent acquired the domain names “in a large portfolio, pursuant to written agreement.”

2.      Respondent asserts that the agreement “contained warranties and representations by the seller stating that the domain names were not in violation of the intellectual property rights of any third party.”

3.      Respondent contacted Complainant after receipt of the Complaint and offered “to resolve the matter by a voluntary transfer of the Domain Names, without charge or condition.”

4.      Respondent offers to transfer the domain names in this proceeding so long as “further findings” are not made.

5.      Respondent denies bad faith.

 

C. The parties filed no Additional Submissions.

 

Preliminary Issue #1: Multiple Complainants

 

The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e).  UDRP Rule 3(a) states: “Any person or entity may initiate an administrative proceeding by submitting a complaint.”  The National Arbitration Forum’s Supplemental Rule 1(e) defines: “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”

 

Two Complainants are identified in this matter: Disney Enterprises, Inc., and ESPN, Inc.  Disney is the parent company of American Broadcasting Companies, Inc. (“ABC”), which owns 80% of ESPN, Inc.

 

Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other.  For example, in Vancouver Organizing Committee for the 2010 Olympic and Paralymic Games and International Olympic Committee v. Hardeep Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:

 

It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.

 

In Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names.  Likewise, in American Family Health Services Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.  But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).

 

The Panel finds that the evidence submitted with the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and finds it appropriate to treat them as a single entity in this proceeding.  The Complainants will be collectively referred to as “Complainant.”

 

Preliminary Issue #2: Consent to Transfer

 

Respondent explicitly consents to transfer the disputed domain names to the  Complainant; however, after the initiation of this proceeding, the registrar, Compana LLC, placed a hold on Respondent’s account and as a result Respondent cannot transfer the disputed domain names while this proceeding is still pending. 

 

The Panel finds that absent other circumstances, where Respondent has not contested the transfer of the disputed domain names, but instead agrees to transfer the domain names in question to Complainant, the Panel may decide to forego the traditional UDRP analysis and order an immediate transfer of the disputed domain names.  See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).

 

It appears to this Panel that on November 25, 2009, Respondent wrote to Complainant offering to transfer the disputed domian names but Complainant did not respond and has not consented in its Complaint to the transfer of the disputed domain names without a decision on the merits by the Panel. 

 

The Panel also finds that the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them.  In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assoc., FA 1195954 (Nat. Arb. Forum July 17, 2008), the panel stated that:

 

Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy.  However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain names deserves to be along with the findings in accordance with the Policy.

 

FINDINGS

The Complainant demonstrated confusing similarity and legal rights in the marks contained within each of the disputed domain names except the <babyeintstein.com> domain name.

 

Based on the circumstances here, Complainant also established confusing similarity to the <babyeintstein.com> disputed domain name and probably also could show legal rights to, or at least common law rights to and legitimate interests in the <babyeintstein.com> domain name.

 

Moreover, the <babyeintstein.com> domain name is sufficiently well known to a generation of parents such that Respondent would have had constructive notice of another’s rights and interests to the mark contained within the <babyeintstein.com> disputed domain name.

 

Respondent purchased all of the disputed domain names on a later date but the date of registration as to each controls.

 

Respondent denies knowledge that a third party may have had an interest in each of the disputed domain names, yet the disputed domain names are so closely identified to well-known properties that Complainant produces and markets in the entertainment industry that Respondent knew or was on constructive notice of another’s rights in the marks contained within each of the disputed domain name.

 

The disputed domain names each appears on its face to be a typosquatted misspelling of Complainant’s well known marks and properties.

 

Typosquatting supports findings that Respondent acted in bad faith in registering and using each of the disputed domain names.

 

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 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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.

 

Identical to and/or Confusingly Similar

 

Complainant established rights in BAMBI (Reg. No. 2,889,386 issued Sept. 28, 2004), CARS (Reg. No. 3,522,439 issued Oct. 21, 2008 filed Dec. 28, 2004), CINDERELLA (Reg. No. 1,964,330 issued Mar. 26, 1996), DISNEY'S ANIMAL KINGDOM (Reg. No. 2,189,638 issued Sept. 15, 1998), HANNAH MONTANA (Reg. No. 3,610,379 issued Apr. 21, 2009 filed Sept. 24, 2005), HIGH SCHOOL MUSICAL (Reg. No. 3,350,438 issued Dec. 4, 2007 filed Mar. 27, 2006), and THE CHEETAH GIRLS (Reg. No. 3,459,321 issued July 1, 2008 filed July 21, 2004) via registration of each of the marks with the United States Patent and Trademark Office (“USPTO”) and the Panel so finds pursuant to Policy ¶ 4(a)(i).  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).

 

Complainant also contends that it has established rights in the CLUB PENGUIN, DISNEY, and PLAYHOUSE DISNEY marks.  Complainant submitted evidence of registration of the CLUB PENGUIN (Reg. No. 1,151,975 issued Dec. 12, 2008 filed Dec. 12, 2006), DISNEY (Reg. No. 198,329 issued Nov. 2, 2965), and PLAYHOUSE DISNEY (Reg. No. 995, 410 issued Sept. 19, 2005) marks with Intellectual Property Australia.  The Panel finds that Complainant established rights in the CLUB PENGUIN, DISNEY, and PLAYHOUSE DISNEY marks under Policy ¶ 4(a)(i).  See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).

 

Additionally, the Panel finds that registration in Respondent’s primary country of doing business is not necessary to establish rights in the marks under Policy ¶ 4(a)(i).  See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).

 

The Panel further finds that Complainant’s rights in the marks under Policy ¶ 4(a)(i) date back to the date the application was filed with the federal trademark authority that subsequently granted the registration.  See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”); see also 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).

 

Complainant also contends that it has established rights in the ESPN and THAT’S SO RAVEN marks, but did not submit evidence of registration of these marks with a federal trademark authority.  The Panel finds that registration of the marks with a governmental trademark authority is not necessary for Complainant to establish rights in the mark pursuant to Policy ¶ 4(a)(i).  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).

 

Complainant states that ESPN is the largest sports cable network in the United States and reaches more than 77 million homes in the United States.  Complainant claims that the website resolving from the <espn.com> domain name is the most visited sports website on the internet.  Complainant submitted evidence that it registered the <espn.com> domain name October 4, 1994.  Prior Panels have found that Complainant has rights in the ESPN mark via its “extensive number of registrations” of the mark with the USPTO and around the world.  See, e.g., ESPN, Inc. v. Naughtya Page LLC, FA94397 (Nat. Arb. Forum May 17, 2000).  The Panel finds that Complainant established rights in the ESPN mark by showing secondary meaning in the mark under Policy ¶ 4(a)(i).  See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); see also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)).

 

Complainant also claims rights in the THAT’S SO RAVEN mark under Policy ¶ 4(a)(i).  Complainant submitted proof of a copyright registration for the THAT’S SO RAVEN mark with the United States Copyright Office (Reg. No. PA 1-609-098 eff. date Feb. 26, 2008) in connection with the movie entitled That’s So Raven: “Where there is smoke.” The copyright registration states that the movie was completed in 2006 and first published November 10, 2007.  The Panel finds that Complainant established rights in the THAT’S SO RAVEN mark under Policy ¶ 4(a)(i) through sufficient secondary meaning in the mark.  See Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning); see also Goepfert  v. Rogers, FA 861124 (Nat. Arb. Forum Jan. 17, 2007) (“[T]here is no particular amount of evidence required in order to establish common law rights.  The determination of what is sufficient is ad hoc based on the specific facts and circumstances involved, as is the scope of the rights once established.”).

 

As a preliminary matter, the disputed domain names all include the generic top-level domain (“gTLD”) “.com.”  The Panel finds that addition of a gTLD is irrelevant to an analysis under Policy ¶ 4(a)(i).  See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). 

 

The following paragraphs divide the forty-one disputed domain names into groups based on Complainant’s marks, ignoring the gTLD “.com” that was added to each disputed domain name.

 

Complainant contends that the <clubepnguin.com>, <clubpanguins.com>, <clubpeingiun.com>, <clubpengnin.com>, and <clubpenguinpasswords.com> domain names are confusingly similar to its CLUB PENGUIN mark.  The <clubepnguin.com>, <clubpanguins.com>, <clubpeingiun.com>, and <clubpengnin.com> domain names are various misspellings of Complainant’s CLUB PENGUIN mark.  See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that the domain names <beanybaby.com>, <beaniesbabies.com>, <beanybabies.com> are confusingly similar to the complainant’s mark BEANIE BABIES).  The <clubpenguinpasswords.com> domain name contains Complainant’s CLUB PENGUIN mark omitting the space between the words and adding the generic word “passwords.”  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term).  The Panel finds that the <clubepnguin.com>, <clubpanguins.com>, <clubpeingiun.com>, <clubpengnin.com>, and <clubpenguinpasswords.com> domain names are confusingly similar to Complainant’s CLUB PENGUIN mark pursuant to Policy ¶ 4(a)(i).

 

The <babybambi.com> domain name inserts the generic word “baby” in front of Complainant’s BAMBI mark.  The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).  See Arthur Guinness Son & Co, supra.; see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent failed to differentiate the <aimprofiles.com> domain name from the complainant’s AIM mark by merely adding the term “profiles”).

 

Complainant contends that the <carsthevideogames.com> domain name is confusingly similar to its CARS mark.  The disputed domain name contains Complainant’s mark along with the generic phrase “the video games.”  The Panel finds that the <carsthevideogames.com> domain name is confusingly similar to Complainant’s CARS mark under Policy ¶ 4(a)(i).  See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); see also Disney Enters. Inc. 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).

 

The <cheetahagirls.com>, <cheetahgirlsmovie.com>, <cheetahgirlstwo.com>, and <cheetergirls.com> domain names incorporate Complainant’s THE CHEETAH GIRLS mark.  These four disputed domain names omit the article “the” that is present in the mark and omit the spaces from the mark.  Previous Panels have found that omission of an article and space fails to sufficiently distinguish the domain name from the mark pursuant to Policy ¶ 4(a)(i).  See Saul Zaentz Co. v. Dodds, FA 233054 (Nat. Arb. Forum Mar. 16, 2004) (the domain name merely omitted the definite article “the” and the preposition “of” from the complainant’s mark and thus, failed to “sufficiently distinguish the domain name from the mark pursuant to Policy ¶ 4(a)(i)”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., supra.  The <cheetergirls.com> domain name replaces the word “cheetah” in the mark with the word “cheeter.”  Prior Panel have found that replacing a word in a mark with a phonetically similar word creates confusing similarity under Policy ¶ 4(a)(i).  See Barnes & Noble College Bookstores, Inc. v. Leasure Interactive, D2001-1216 (WIPO Mar. 25, 2002) (“The Panel further finds that the domain name <bunsandnoble.com> is confusingly similar to the BARNES & NOBLE marks in so far as the domain name is similar in sound to Complainant’s marks.”).  The <cheetahgirlsmovie.com> and <cheetahgirlstwo.com> domain names add generic words to Complainant’s THE CHEETAH GIRLS mark.  Prior Panels have found that adding generic words to a mark creates confusing similarity under Policy ¶ 4(a)(i).  See AOL LLC v. AIM Profiles, supra.  The <cheetahagirls.com> domain name adds the letter “a” between the last two words of Complainant’s THE CHEETAH GIRLS mark.  Previous Panels have found that adding a letter to a mark does not create distinctiveness under Policy ¶ 4(a)(i).  See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”).  The Panel therefore finds that the <cheetahagirls.com>, <cheetahgirlsmovie.com>, <cheetahgirlstwo.com>, and <cheetergirls.com> domain names are confusingly similar to Complainant’s THE CHEETAH GIRLS mark under Policy ¶ 4(a)(i).

 

The <cinderala.com>, <cinderalla3.com>, and <cindrella3.com> domain names incorporate Complainant’s CINDERELLA mark.  The Panel finds that the <cinderala.com> and <cinderalla3.com> domain names misspell Complainant’s CINDERELLA mark in a way that makes the pronunciation identical to the mark.  See YAHOO! Inc. v. Murray, D2000-1013 (WIPO Nov. 17, 2000) (finding that the domain name <yawho.com> is confusingly similar to the complainant’s YAHOO mark).  The Panel finds that adding the numeral “3” to the mark in the <cinderalla3.com> and <cindrella3.com> domain names creates confusing similarity under Policy ¶ 4(a)(i).  See Am. Online, Inc. v. Oxford Univ., FA 104132 (Nat. Arb. Forum Mar. 19, 2002) (finding several domain names that added the numeral “7” or the term “seven” to the complainant’s AOL mark were confusingly similar to the mark under Policy ¶ 4(a)(i)).  Therefore, the Panel finds that the <cinderala.com>, <cinderalla3.com>, and <cindrella3.com> domain names are confusingly similar to Complainant’s CINDERELLA mark under Policy ¶ 4(a)(i).

 

Respondent’s <dianeymovieclub.com>, <diisneilatino.com>, <disnary.com>, <disnev.com>, <disneycakes.com>, and <mundodedisny.com> domain names incorporate Complainant’s DISNEY mark.  The <dianeymovieclub.com>, <diisneilatino.com>, <disnary.com>, <disnev.com>, and <mundodedisny.com> domain names utilize various misspellings of Complainant’s DISNEY mark.  Previous Panels have found that misspellings such as these create confusing similarity under Policy ¶ 4(a)(i).  See Belkin Components v. Gallant, supra; see also Ty, Inc. v. O.Z. Names, supra; see also Barnes & Noble College Bookstores, Inc. v. Leasure Interactive, supra; see also YAHOO! Inc. v. Murray, supra.  The <dianeymovieclub.com>, <diisneilatino.com>, <disneycakes.com>, and <mundodedisny.com> domain names add generic words to Complainant’s DISNEY mark.  Previous Panels have found that adding generic words to a mark creates confusing similarity under Policy ¶ 4(a)(i).  See AOL LLC v. AIM Profiles, supra; see also Warner Bros. Entm’t Inc. v. Sadler, supra.  Therefore the Panel finds that the <dianeymovieclub.com>, <diisneilatino.com>, <disnary.com>, <disnev.com>, <disneycakes.com>, and <mundodedisny.com> domain names are confusingly similar to Complainant’s DISNEY mark under Policy ¶ 4(a)(i).

 

The <disneysanimalkingdom.com> domain name incorporates Complainant’s DISNEY'S ANIMAL KINGDOM mark, omitting the spaces and the apostrophe.  The Panel finds these changes insufficient to create distinctiveness under Policy ¶ 4(a)(i).  See LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., supra.  The Panel finds that the <disneysanimalkingdom.com> domain name is identical to Complainant’s DISNEY'S ANIMAL KINGDOM mark under Policy ¶ 4(a)(i).

 

The <epspn.com> domain name mispells Complainant’s ESPN mark by adding the letter “p.”  The Panel finds that the <epspn.com> domain name is confusingly similar to Complainant’s ESPN mark under Policy ¶ 4(a)(i).  See Google, Inc. v. DktBot.org, supra; see also Ty, Inc. v. O.Z. Names, supra.

 

The <haighscoolmusical.com>, <higeschoolmusical.com>, <highschoolmsical.com>, <highschoolmuical.com>, <highschoolmusicel.com>, <highshoolmusical.com>, <highskoolmusical.com>, <musicahighschoolmusical.com>, and <videoshighschoolmusical.com> domain names incorporate Complainant’s HIGH SCHOOL MUSICAL mark.  The <haighscoolmusical.com>, <higeschoolmusical.com>, <highschoolmsical.com>, <highschoolmuical.com>, <highschoolmusicel.com>, <highshoolmusical.com>, and <highskoolmusical.com> domain names all are comprised of a misspelling of the mark.  The Panel finds that the <haighscoolmusical.com>, <higeschoolmusical.com>, <highschoolmsical.com>, <highschoolmuical.com>, <highschoolmusicel.com>, <highshoolmusical.com>, and <highskoolmusical.com> domain names are confusingly similar to Complainat’s HIGH SCHOOL MUSICAL mark under Policy ¶ 4(a)(i).  See Am. Online, Inc. v. Triple E Holdings Ltd., FA 281584 (Nat. Arb. Forum July 15, 2004) (“Words that are spelled differently but are phonetically similar do not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).”); see also Belkin Components v. Gallant, supra; see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., supra.  The <musicahighschoolmusical.com> and <videoshighschoolmusical.com> domain names add the generic words “musica” and “video,” respectively to Complainant’s HIGH SCHOOL MUSICAL mark with the spaces removed.  The Panel finds that these disputed domain names are confusingly similar to Complainant’s HIGH SCHOOL MUSICAL mark under Policy ¶ 4(a)(i).  See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., supra; see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, supra.

 

Respondent’s <hannahmontanaconcerts.com>, <hannahmontanashop.com>, and <hannahmontanamusicvideos.com> domain names include Complainant’s HANNAH MONTANA mark with the spaces removed and generic words added.  The Panel finds that theses three disputed domain names are confusingly similar to Complainant’s HANNAH MONTANA mark under Policy ¶ 4(a)(i).  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, supra; see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., supra.

 

The <playhawsdisne.com>, <playhousdisne.com>, <playhousediisney.com>, and <playhousedinseychannel.com> domain names all incorporate misspellings of Complainant’s PLAYHOUSE DISNEY mark with the space omitted.  The <playhousedinseychannel.com> domain name also adds the generic word “channel” to the mark.  The Panel finds that these four disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).  See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., supra; see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, supra; see also Am. Online, Inc. v. Triple E Holdings Ltd., supra.

 

Respondent’s <thatsoravan.com> and <thatssoravon.com> domain names incorporate a misspelled version of Complainant’s THAT’S SO RAVEN mark.  The Panel finds that the misspelling and omission of periods creates a confusing similarity under Policy ¶ 4(a)(i).  See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., supra; Belkin Components v. Gallant, supra; see also Ty, Inc. v. O.Z. Names, supra.

 

Complainant requests the transfer of the <babyeintstein.com> domain name.  The marks Complainant mentions having rights in are the BAMBI, CARS, CINDERELLA, DISNEY'S ANIMAL KINGDOM, HANNAH MONTANA, HIGH SCHOOL MUSICAL, THE CHEETAH GIRLS, CLUB PENGUIN, DISNEY, PLAYHOUSE DISNEY, ESPN, and THAT’S SO RAVEN marks.  The Panel finds that the Baby Einstein productions are such a well-known purchase by Complainants and that much publicity has been generated as to claimed educational value for infants and the lack thereof that an acquirer of domain names would have been on constructive notice of any domain name containing Baby and Einstein in combination. The Panel finds that the Complainant’s acquisition and development of the brand is so well known that common law rights would probably result with a proper showing.  However, Complainant did not make that showing in this application and did not base its rights under Policy ¶ 4(a)(i) on a claim of common law acquisition. Complainant failed to make a showing to establish rights in a mark for which the <babyeintstein.com> domain name would be confusingly similar. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)). 

 

The Panel is aware that Respondent made no argument under Policy ¶ 4(a)(i) for the

<babyeintstein.com> domain name and that Respondent offered to transfer the name.  The Panel ruled that because Complainant had not consented to the transfer that a decision on the merits would be made.  The Panel finds that as to the <babyeintstein.com> domain name, Complainant did not meet its primary burden of showing rights in the disputed domain name and Complainant may not prevail on its request to transfer that domain name.

           

The Panel finds as to the remaining forty domain names at issue, Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Except as to the <babyeintstein.com> Complainant made a prima facie case showing rights to or legitimate interests in the disputed domain names as well as showing that Respondent lacks such rights to and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).  Once Complainant does so, then the burden of proof shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., 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 UDRP ¶ 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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

The WHOIS information associated with the disputed domain names identifies the registrant as “Kanter Associates SA c/o Admin.”  The Panel finds that Respondent is not commonly known by any of the disputed domain names under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the 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).

 

Complainant contends that Respondent is using the disputed domain names to resolve to pay-per-click advertising websites displaying links to third parties, some of whom are Complainant’s direct competitors.  The Panel finds that this is 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).  See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); 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 confusingly similar 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)).

 

Typosquatting occurs when a respondent purposefully includes typographical errors in a domain name to divert Internet users who commit the typographical error the particular domain name takes advantage of.  The Panel finds that most of the disputed domain names here take advantage of common mistakes by Internet users who mistype a Complainant’s marks.  The Panel therefore finds that Respondent has engaged in typosquatting and that such typosquatting is further evidence that Respondent does not have rights to or legitimate interests in any of the disputed domain names pursuant to Policy ¶ 4(a)(ii).  See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding confusing similarity has been established because the prefix “www” does not sufficiently differentiate the <wwwneimanmarcus.com> domain name from the complainant's NEIMAN-MARCUS mark).

 

            Respondent makes no arguments under Policy ¶ 4(a)(ii).

 

The Panel finds that Complainant satisfied the elements of  ICANN Policy ¶ 4(a)(ii) as to each of the disputed domain names except <babyeintstein.com>.

 

Registration and Use in Bad Faith

 

Respondent registered the disputed domain names on the following dates:

 

Domain Name

Registration Date

<clubepnguin.com>

April 20, 2006

<babybambi.com>

January 28, 2007

<babyeintstein.com>

November 18, 2004

<carsthevideogames.com>

January 29, 2007

<cheetahagirls.com>

July 16, 2006

<cheetahgirlsmovie.com>

January 13, 2004

<cheetahgirlstwo.com>

July 25, 2006

<cheetergirls.com>

October 3, 2003

<cinderala.com>

October 12, 2004

<cinderalla3.com>

January 24, 2007

<cindrella3.com>

January 23, 2007

<clubpanguins.com>

June 18, 2006

<clubpeingiun.com>

July 7, 2006

<clubpengnin.com>

September 17, 2006

<clubpenguinpasswords.com>

October 7, 2006

<dianeymovieclub.com>

July 18, 2006

<diisneilatino.com>

January 4, 2007

<disnary.com>

October 6, 2006

<disnev.com>

July 20, 2004

<disneycakes.com>

June 12, 2008

<disneysanimalkingdom.com>

April 2, 2008

<epspn.com>

March 13, 2008

<haighscoolmusical.com>

October 16, 2006

<hannahmontanaconcerts.com>

July 7, 2006

<hannahmontanashop.com>

January 1, 2007

<hannahmontanamusicvideos.com>

November 5, 2006

<higeschoolmusical.com>

June 17, 2006

<highschoolmsical.com>

January 30, 2006

<highschoolmuical.com>

January 18, 2006

<highschoolmusicel.com>

January 8, 2006

<highshoolmusical.com>

January 12, 2006

<highskoolmusical.com>

October 5, 2006

<mundodedisny.com>

February 9, 2007

<musicahighschoolmusical.com>

September 13, 2006

<playhawsdisne.com>

October 4, 2006

<playhousdisne.com>

July 9, 2006

<playhousediisney.com>

March 18, 2008

<playhousedinseychannel.com>

February 8, 2007

<thatsoravan.com>

November 18, 2003

<thatssoravon.com>

December 19, 2003

<videoshighschoolmusical.com>

September 22, 2006

 

Complainant asserts that Respondent is using the disputed domain names to resolve to websites that contain links for third-party websites, some of which directly compete with Complainant.  The Panel finds that Respondent is using the disputed domain names, which are confusingly similar to Complainant’s marks, to divert Internet users to Complainant’s competitors and thereby disrupt Complainant’s business and that this constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).

 

According to Complainant, the websites that resolve from the disputed domain names display advertisements and links to websites that are both related and unrelated to Complainant’s business and associated marks.  Complainant contends that Respondent receives pay-per-click fees for these links and advertisements.  The Panel finds that Respondent is taking advantage of the inherent confusion between the disputed domain names and Complainant’s marks for Respondent’s own financial gain, conduct that supports findings of bad faith registration and use under 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 Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name).

 

Furthermore, the Panel finds that Respondent engaged in typosquatting with respect to some or all of the disputed domain names, and also finds that this evidence supports findings that Respondent registered and is using these disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii).  See Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith.”); see also Sports Auth. Mich., Inc. v. Skander, FA 135598 (Nat. Arb. Forum Jan. 7, 2002) (stating that “[b]y registering the ‘typosquatted’ domain name I   n [Complainant’s] affiliate program, Respondent profits on the goodwill of [Complainant’s] protected marks and primary Internet domain names,” which is evidence of bad faith registration and use).

 

            Respondent makes no arguments under ICANN Policy ¶ 4(a)(iii).

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii) as to each of the disputed domain names except <babyeintstein.com>.

 

DECISION

Complainant’s having failed to establish rights in the < babyeintstein.com> disputed domain name, the Panel concludes that relief shall be DENIED without prejudice to refilling as to the <babyeintstein.com> domain name.

 

Accordingly, it is Ordered that the <babyeintstein.com> NOT be transferred at this time.

 

Complainant’s having satisfied the three elements of  ICANN Policy ¶ 4(a) as to each of the remaining disputed domain names, the Panel concludes that the relief Complainant requests shall be GRANTED as to the following domain names and, accordingly, it is ORDERED that the disputed domain names <clubepnguin.com>, <babybambi.com>, <carsthevideogames.com>, <cheetahagirls.com>, <cheetahgirlsmovie.com>, <cheetahgirlstwo.com>, <cheetergirls.com>, <cinderala.com>, <cinderalla3.com>, <cindrella3.com>, <clubpanguins.com>, <clubpeingiun.com>, <clubpengnin.com>, <clubpenguinpasswords.com>, <dianeymovieclub.com>, <diisneilatino.com>, <disnary.com>, <disnev.com>, <disneycakes.com>, <disneysanimalkingdom.com>, <epspn.com>, <haighscoolmusical.com>, <hannahmontanaconcerts.com>, <hannahmontanashop.com>, <hannahmontanamusicvideos.com>, <higeschoolmusical.com>, <highschoolmsical.com>, <highschoolmuical.com>, <highschoolmusicel.com>, <highshoolmusical.com>, <highskoolmusical.com>, <mundodedisny.com>, <musicahighschoolmusical.com>, <playhawsdisne.com>, <playhousdisne.com>, <playhousediisney.com>, <playhousedinseychannel.com>, <thatsoravan.com>, <thatssoravon.com>, and <videoshighschoolmusical.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Hon. Carolyn Marks Johnson, Panelist
Dated: January 4, 2010.

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page

 

National Arbitration Forum