Disney Enterprises, Inc. and Marvel Entertainment, LLC v. jorge martinez
Claim Number: FA1310001526139
Complainant is Disney Enterprises, Inc. and Marvel Entertainment, LLC (“Complainant”), represented by J. Andrew Coombs of J. ANDREW COOMBS, A Professional Corporation, California, USA. Respondent is jorge martinez (“Respondent”), Mexico.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <juegosdephineasyferb.com>, <juegosdespiderman.net>, <juegosdevestirdisney.com>, <juegos‑spiderman.com>, <coloreardisney.net>, <planetamarvel.com>, <princesasdisney.net>, <puzzlesdedisney.com>, <puzzlesdisney.net>, <vestirdisney.com>, and <vestirdisney.net>, registered with Moniker Online Services LLC.
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.
Ho Hyun Nahm as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 23, 2013; the National Arbitration Forum received payment on October 23, 2013.
On October 24, 2013, Moniker Online Services LLC confirmed by e-mail to the National Arbitration Forum that the <juegosdephineasyferb.com>, <juegosdespiderman.net>, <juegosdevestirdisney.com>, <juegos‑spiderman.com>, <coloreardisney.net>, <planetamarvel.com>, <princesasdisney.net>, <puzzlesdedisney.com>, <puzzlesdisney.net>, <vestirdisney.com>, and <vestirdisney.net> domain names are registered with Moniker Online Services LLC and that Respondent is the current registrant of the names. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 28, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 18, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@juegosdephineasyferb.com, postmaster@juegosdespiderman.net, postmaster@juegosdevestirdisney.com, postmaster@juegos-spiderman.com, postmaster@coloreardisney.net, postmaster@planetamarvel.com, postmaster@princesasdisney.net, postmaster@puzzlesdedisney.com, postmaster@puzzlesdisney.net, postmaster@vestirdisney.com, postmaster@vestirdisney.net. Also on October 28, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 27, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel issues 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant makes the following contentions:
i. the DISNEY mark (e.g., Reg. No. 1,162,727 registered July 28, 1981);
ii. the PHINEAS AND FERB mark (e.g., Reg. No. 3,578,149 registered February 17, 2009);
iii. the MARVEL mark (e.g., Reg. No. 870,506 registered June 3, 1969); and
iv. the SPIDER-MAN mark (e.g., Reg. No. 1,339,415 registered June 4, 1985).
See Complainant’s Exhibit F.
i. the DISNEY mark (e.g., Reg. No. 1,661,739 registered April 18, 2000);
ii. the PHINEAS AND FERB mark (e.g., Reg. No. 1,264,021 registered January 30, 2012);
iii. the MARVEL mark (e.g., Reg. No. 4,751,617 registered March 23, 2011); and
iv. the SPIDER-MAN mark (e.g., Reg. No. 1,414,134 registered December 13, 1993).
See Complainant’s Exhibit G.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the disputed domain names on the following dates:
<juegosdephineasyferb.com>, registered on July 5, 2010; <juegosdespiderman.net>, registered on February 16, 2009; <juegosdevestirdisney.com>, registered on July 17, 2009;
<juegos-spiderman.com>, registered on November 11, 2009; <coloreardisney.net>, registered on January 28, 2009;
<planetamarvel.com>, registered on January 31, 2011;
<princesasdisney.net>, registered on January 20, 2009;
<puzzlesdedisney.com>, registered on April 17, 2008;
<puzzlesdisney.net>, registered on October 17, 2010;
<vestirdisney.com>, registered on May 23, 2008; and
<vestirdisney.net>, registered on September 7, 2008.
Complainant established that it had rights in the mark contained in the disputed domain names.
Respondent has no rights to or legitimate interests in the disputed domain names.
Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain names 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."
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:
(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.
In view of Respondent's failure to submit a response, the Panel decides 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 draws 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 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.”).
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants: Disney Enterprises, Inc. and Marvel Entertainment, LLC. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny 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.”
Complainants argue that they are affiliate companies that are both owned by the Walt Disney Company, and should thus be treated as a single entity. See Complainants’ Exhibit K.
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 Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. 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 Invs., 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 Am. Family Health Srvs. 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.
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants; it treats them all as a single entity in this proceeding. Throughout the below decision, the Complainants will be collectively referred to as “Complainant.”
Complainant alleges that it owns rights in the DISNEY, DISNEY PRINCESS, PHINEAS AND FERB, and SPIDER-MAN marks. Complainant alleges that it registered the DISNEY mark with the USPTO (e.g., Reg. No. 1,162,727 registered July 28, 1981) as well as the MIIP (e.g., Reg. No. 1,661,739 registered April 18, 2000). See Complainant’s Exhibits F & G. Complainant alleges that it registered the PHINEAS AND FERB mark with the UPSTO (e.g., Reg. No. 3,578,149 registered February 17, 2009) and the MIIP (e.g., Reg. No. 1,264,021 registered January 30, 2012). See id. Complainant alleges that it registered the MARVEL mark with the USPTO (e.g., Reg. No. 870,506 registered June 3, 1969) and the MIIP (e.g., Reg. No. 4,751,617 registered March 23, 2011). See id. Complainant also alleges that it registered the SPIDER-MAN mark with the USPTO (e.g., Reg. No. 1,339,415 registered June 4, 1985) and the MIIP (e.g., Reg. No. 1,414,134 registered December 13, 1993). See id. The Panel notes that it has previously been held that a complainant establishes its rights in a mark under Policy ¶ 4(a)(i) by registering the mark with various national trademark authorities around the world. See, e.g., Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world). Accordingly, the Panel holds that Complainant’s registrations of the DISNEY, PHINEASE AND FERB, MARVEL and SPIDER-MAN marks with both the USPTO and the MIIP sufficiently establish Complainant’s rights in these marks pursuant to Policy ¶ 4(a)(i).
Complainant alleges that each of the disputed domain names is confusingly similar to Complainants’ DISNEY, DISNEY PRINCESS, SPIDER-MAN, or PHINEAS AND FERB marks under Policy ¶ 4(a)(i). The Panel notes that the <juegosdevestirdisney.com>, <coloreardisney.net>, <princesasdisney.net>, <puzzlesdedisney.com>, <puzzlesdisney.net>, <vestirdisney.com>, and <vestirdisney.net> fully incorporate the DISNEY mark while adding a generic top-level domain (“gTLD”) and a term or phrase. The Panel notes that the addition of a gTLD such as “.com” or “.net” has been found to be irrelevant for the purposes of a confusing similarity analysis under Policy ¶ 4(a)(i). See, e.g., Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The Panel also notes that previous panels have held that a domain name is confusingly similar to a complainant’s mark where the domain name fully incorporates that mark while adding a descriptive term or a generic term or terms. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also 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). The Panel determines that the added word “princesas” (the Spanish word for “princesses”) in the <princesasdisney.net> domain name is a word that describes the well-known fictional characters marketed under Complainant’s DISNEY mark, and accordingly holds that the <princesasdisney.net> domain name is confusingly similar to Complainant’s DISNEY mark under Policy ¶ 4(a)(i). The Panel further determines that the added words “colorear” (the Spanish word for “coloring”), “puzzles,” and “vestir” (the Spanish word for “dressing”) are generic terms, and thus holds that the <coloreardisney.net>, <puzzlesdisney.net>, <vestirdisney.com>, and <vestirdisney.net> are confusingly similar to Complainant’s DISNEY mark under Policy ¶ 4(a)(i). The Panel also notes that the added phrases “juegos de vestir” (the Spanish translation of “dressing games”) and “puzzles de” (the Spanish translation of “puzzles of”) are each comprised of generic terms, and may thus reason that the addition of these generic phrases are insufficient to distinguish the <juegosdevestirdisney.com> and <puzzlesdedisney.com> domain names from Complainant’s DISNEY mark. The Panel thus holds that these <juegosdevestirdisney.com> and <puzzlesdedisney.com> domain names are confusingly similar to Complainant’s DISNEY mark under Policy ¶ 4(a)(i).
The Panel notes that the <juegosdephineasyferb.com> domain name incorporates Complainant’s PHINEAS AND FERB mark while substituting the word “and” found in the mark with the Spanish translation “y” and adding the phrase “juegos de.” The Panel also observes that the <juegosdephineasyferb.com> domain name eliminates the space found between words in the PHINEAS AND FERB mark and adds the gTLD “.com.” The Panel determines that the eliminated spaces between words in the mark and the added gTLD “.com” do not sufficiently distinguish the <juegosdephineasyferb.com> domain name from Complainant’s PHINEAS AND FERB 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)). The Panel further reasons that the added phrase “juegos de” (the Spanish translation of “games of”) is comprised of two generic terms that are insufficient to distinguish the <juegosdephineasyferb.com> domain name from Complainant’s PHINEAS AND FERB mark. See Warner Bros. Entm’t Inc., supra (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). As to the substitution of the word “and” found in the mark with the Spanish translation “y,” the Panel notes that in Disney Enters., Inc. v. Artmidia Comunicacao Visual Criacao E Arte Ltda., FA 603590 (Nat. Arb. Forum Jan. 16, 2006), the panel held that “[t]he term ‘disneylandia’ is the Portuguese translation of the DISNEYLAND mark…[t]herefore, the <disneylandia.com> and <disneylandia.net> domain names are confusingly similar to [the] [c]omplainant’s mark.” The Panel similarly reasons that the disputed domain name incorporates the phrase “Phineas y Ferb,” the Spanish translation of the PHINEAS AND FERB mark, and thus holds that the replacement of the word “and” with the word “y” does not create distinctiveness under Policy ¶ 4(a)(i). For the foregoing reasons, the Panel holds that the <juegosdephineasyferb.com> domain name is confusingly similar to the PHINEAS AND FERB mark under Policy ¶ 4(a)(i).
The Panel also notes that the <planetamarvel.com> domain name incorporates Complainant’s MARVEL mark while adding the gTLD “.com” and the term “planeta” (the Spanish translation of “planet”). The Panel again reasons that the added gTLD does not sufficiently distinguish the <planetamarvel.com> domain name from Complainant’s MARVEL mark. See Rollerblade, Inc., supra (finding that the top level of the domain name such as “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). As to the addition of the word “planeta,” the Panel determines that this is a generic word and accordingly holds that its addition to the MARVEL mark does not create distinctiveness from the mark under the Policy. See Am. Express Co., supra (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Therefore, the Panel holds that the <planetamarvel.com> domain name is confusingly similar to Complainant’s MARVEL mark pursuant to Policy ¶ 4(a)(i).
The Panel notes that the <juegosdespiderman.net> and <juegos-spiderman.com> domain names incorporate Complainant’s SPIDER-MAN mark while adding a gTLD and making various other alterations to the mark. The Panel holds that the addition of the “.net” and “.com” gTLDs does not sufficiently distinguish the <juegosdespiderman.net> and <juegos-spiderman.com> domain names from Complainant’s SPIDER-MAN mark. See Rollerblade, Inc., supra (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The Panel observes that both of the <juegosdespiderman.net> and <juegos‑spiderman.com> domain names eliminate the hyphen found in Complainant’s SPIDER-MAN mark. The Panel notes that it has previously been held that a domain name’s elimination of a hyphen found in a mark has been held to be insufficient to create a distinction between the domain name and the mark under the Policy, and thus holds that the <juegosdespiderman.net> and <juegos‑spiderman.com> domain names’ elimination of the hyphen found in the SPIDER-MAN mark does not preclude a finding of confusing similarity. See, e.g., Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to the complainant's mark). The Panel further observes that the <juegosdespiderman.net> adds the phrase “juegos de” (the Spanish translation of “games of”), and determines that this phrase is comprised of two generic terms that are insufficient to distinguish the disputed domain name from Complainant’s SPIDER-MAN mark. See Warner Bros. Entm’t Inc., supra (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). The Panel further notes that the <juegos-spiderman.com> domain name adds the generic term “juegos” (the Spanish translation of “games”) and a hyphen to Complainant’s mark. The Panel notes that it has previously been determined that a domain name that incorporates a complainant’s mark but adds a hyphen and a generic word is confusingly similar to the complainant’s mark. See Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar). For the foregoing reasons, the Panel holds that both the <juegosdespiderman.net> and the <juegos‑spiderman.com> are confusingly similar to Complainant’s SPIDER-MAN mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden 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.”).
Complainant alleges that Respondent is not commonly known by the disputed domain names and Complainant has not authorized Respondent to use its DISNEY, PHINEAS AND FERB, MARVEL, or SPIDER-MAN mark in a domain name. The Panel notes that it has previously been held that a respondent is not commonly known by a disputed domain name where there is no evidence in the record, including the WHOIS information, to suggest otherwise and the complainant did not authorize the use of its mark in a domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel notes that as in Braun, supra, Complainant alleges that it has not authorized Respondent to use its DISNEY, PHINEAS AND FERB, MARVEL, or SPIDER-MAN marks in a domain name. The Panel further observes that the WHOIS information in the instant proceedings identifies “jorge martinez” as the registrant of all eleven of the disputed domain names, which tends to show that Respondent is known as “jorge martinez” and not as <juegosdephineasyferb.com>, <juegosdespiderman.net>, <juegosdevestirdisney.com>, <juegos‑spiderman.com>, <coloreardisney.net>, <planetamarvel.com>, <princesasdisney.net>, <puzzlesdedisney.com>, <puzzlesdisney.net>, <vestirdisney.com>, or <vestirdisney.net>. The Panel also reasonably concludes that there is no other evidence in the record to suggest Respondent is commonly known by any of the dispute domain names. Accordingly, the Panel holds that Respondent is not commonly known as <juegosdephineasyferb.com>, <juegosdespiderman.net>, <juegosdevestirdisney.com>, <juegos‑spiderman.com>, <coloreardisney.net>, <planetamarvel.com>, <princesasdisney.net>, <puzzlesdedisney.com>, <puzzlesdisney.net>, <vestirdisney.com>, or <vestirdisney.net> pursuant to Policy ¶ 4(c)(ii).
Complainant next alleges that Respondent is not using the <juegosdephineasyferb.com>, <juegosdespiderman.net>, <juegosdevestirdisney.com>, <juegos‑spiderman.com>, <coloreardisney.net>, <planetamarvel.com>, <princesasdisney.net>, <puzzlesdedisney.com>, <vestirdisney.com> and <vestirdisney.net> domain names for 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) because these domain names resolve to websites featuring pirated versions of online games offered under Complainant’s marks. See Complainant’s Exhibit I. Based on the screenshots provided by Complainant, the Panel concludes that each of these domain names resolves to a website hosting online games that appear to feature fictional characters that are notoriously associated with Complainant’s DISNEY, PHINEAS AND PHERB, MARVEL, and SPIDER-MAN marks. See id. The Panel notes that in Disney Enterprises, Inc. v. online No.1 / OS1, FA 1512060 (Nat. Arb. Forum September 13, 2013), the panel held that the respondent’s use of the disputed domain name was not protected under Policy ¶¶ 4(c)(i) or 4(c)(iii) where the complainant asserted that respondent used the domain name to offer unauthorized copies of the complainant’s online video games, reasoning that under these circumstances, the panel “may comfortably presume that [the] [r]espondent profits from such use of the domain name.” See also eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name). Under this precedent, as the Panel determines that the online games promoted by the <juegosdephineasyferb.com>, <juegosdespiderman.net>, <juegosdevestirdisney.com>, <juegos‑spiderman.com>, <coloreardisney.net>, <planetamarvel.com>, <princesasdisney.net>, <puzzlesdedisney.com>, <vestirdisney.com> and <vestirdisney.net> domain names are pirated or counterfeit versions of those offered by Complainant, the Panel holds that Respondent’s use of these domain names is not protected as 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).
Complainant next asserts that Respondent is also not using the <puzzlesdisney.com> domain name for 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) because Respondent has failed to make an active use of this domain name. See Complainant’s Exhibit I. However, the Panel determines that based on the screenshot submitted by Complainant, the <puzzlesdisney.com> resolves to a website that promotes a series of generic hyperlinks, including links entitled “Disney Juegos,” “Search Disney Channel,” “Puzzles.com,” and “Matha Puzzles,” among others. See id. The Panel notes that it has previously been held that a respondent’s use of a disputed domain name is not protected under Policy ¶¶ 4(c)(i) or 4(c)(iii) where the domain name resolves to a website featuring a list of hyperlinks, some of which advertise competitors of the complainant. See Skyhawke Techs., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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 concludes that “Puzzles.com” and “Matha Puzzles,” entities are listed on the website resolving from the <puzzlesdisney.com>, are competitors of Complainant, because Complainant alleges that it offers games and puzzles under its DISNEY mark. Therefore, the Panel holds that Respondent’s use of the <puzzlesdisney.com> domain name is not protected as 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).
Complainant alleges that Respondent has demonstrated a pattern of bad faith registrations pursuant to Policy ¶ 4(b)(ii) by registering the eleven disputed domain names. The Panel notes that it has previously been held that a respondent demonstrates bad faith registration and use under Policy ¶ 4(b)(ii) where the case involves several infringing domain names. Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also 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”). The Panel notes that the instant proceedings involve eleven domain names, each of which incorporates Complainant’s DISENY, PHINEAS AND FERB, MARVEL, or SPIDER-MAN mark. The Panel notes that by registering eleven infringing domain names, Respondent has registered even more infringing domain names than the respondent in Yahoo!, supra, who registered ten domain names. Accordingly, the Panel holds that Respondent has engaged in a pattern of bad faith domain registrations, which tends to show that Respondent registered and used the eleven disputed domain names in bad faith pursuant to Policy ¶ 4(b)(ii).
Complainant next alleges that Respondent’s registration and use of the <juegosdephineasyferb.com>, <juegosdespiderman.net>, <juegosdevestirdisney.com>, <juegos‑spiderman.com>, <coloreardisney.net>, <planetamarvel.com>, <princesasdisney.net>, <puzzlesdedisney.com>, <vestirdisney.com> and <vestirdisney.net> domain names disrupts Complainant’s business by diverting Complainant’s customers to Respondent’s own websites that offer pirated or counterfeited versions of the online games offered by Complainant. The Panel recalls that according to screenshots provided by Complainant, each of these disputed domain names resolves to a website hosting online games that appear to feature fictional characters that are notoriously associated with Complainant’s DISNEY, PHINEAS AND PHERB, MARVEL, and SPIDER-MAN marks. See Complainant’s Exhibit I. The Panel notes that it has previously been held that a respondent demonstrates bad faith registration and use of a disputed domain name under Policy ¶ 4(b)(iii) where the domain name resolves to a website offering counterfeit versions of Complainant’s products. See Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products). Accordingly, as the Panel accepts that the online games offered on the <juegosdephineasyferb.com>, <juegosdespiderman.net>, <juegosdevestirdisney.com>, <juegos‑spiderman.com>, <coloreardisney.net>, <planetamarvel.com>, <princesasdisney.net>, <puzzlesdedisney.com>, <vestirdisney.com> and <vestirdisney.net> domain names are pirated or counterfeited versions of those offered by Complainant, the Panel holds that Respondent has demonstrated bad faith registration and use of these domain names pursuant to Policy ¶ 4(b)(iii).
Complainant further argues that Respondent has demonstrated bad faith registration and use of the <juegosdephineasyferb.com>, <juegosdespiderman.net>, <juegosdevestirdisney.com>, <juegos‑spiderman.com>, <coloreardisney.net>, <planetamarvel.com>, <princesasdisney.net>, <puzzlesdedisney.com>, <vestirdisney.com> and <vestirdisney.net> domain names pursuant to Policy ¶ 4(b)(iv) because the disputed domain names attract Internet users seeking products or services under Complainant’s mark for Respondent’s commercial gain. As discussed above, screenshots provided by Complainant suggest that these domain names resolve to websites hosting online games that appear to feature fictional characters notoriously associated with Complainant’s DISNEY, PHINEAS AND PHERB, MARVEL, and SPIDER-MAN marks. See Complainant’s Exhibit I. Complainant alleges that the online games promoted by these disputed domain names are counterfeited or pirated versions of the similar online games offered by Complainant. The Panel also recalls that in Disney Enterprises, Inc., supra, the panel presumed that the respondent was obtaining a commercial benefit where the complainant alleged that the disputed domain name was being used to offer unauthorized copies of the complainant’s online video games. Thus, the Panel in the instant proceedings similarly infers that Respondent is commercially benefitting from its use of the disputed domain names. The Panel notes that a respondent demonstrates bad faith under Policy ¶ 4(b)(iv) where the disputed domain name is used to sell counterfeit products, because the selling of counterfeit products creates a likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion. See H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion). Pursuant to this precedent, as the Panel accepts Complainant’s contention that the online games promoted using the <juegosdephineasyferb.com>, <juegosdespiderman.net>, <juegosdevestirdisney.com>, <juegos‑spiderman.com>, <coloreardisney.net>, <planetamarvel.com>, <princesasdisney.net>, <puzzlesdedisney.com>, <vestirdisney.com> and <vestirdisney.net> domain names are pirated or counterfeited versions of games offered by Complainant, the Panel holds that Respondent has demonstrated bad faith registration and use of these domain names pursuant to Policy ¶ 4(b)(iv).
Complainant suggests that Respondent’s failure to make an active use of the <puzzlesdisney.com> domain name demonstrates its bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). However, the Panel recalls from the discussion above that according to screenshots submitted by Complainant, this disputed domain name actually resolves to a website that promotes a series of generic hyperlinks, including links entitled “Disney Juegos,” “Search Disney Channel,” “Puzzles.com,” and “Matha Puzzles,” among others. See Complainant’s Exhibit I. The Panel thus declines to find that Respondent has failed to make an active use of the <puzzlesdisney.com> domain name. See T.R. World Gym-IP, supra (concluding that the respondent had no rights or legitimate interests in the <worldgyms.com> domain name because it contained no substantive content, just the phrase “coming soon” and a picture of someone working out). The Panel notes that it has previously been determined that a respondent demonstrates bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolves to a website that features a series of generic hyperlinks including some links to competitors of the complainant. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). In the instant proceedings, the Panel concludes that “Puzzles.com” and “Matha Puzzles,” entities are listed on the website resolving from the <puzzlesdisney.com>, are competitors of Complainant, because Complainant alleges that it offers games and puzzles under its DISNEY mark. Therefore, the Panel holds that Respondent has demonstrated bad faith registration and use of the <puzzlesdisney.com> domain name pursuant to Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the DISNEY, PHINEAS AND FERB, MARVEL, and SPIDER-MAN marks. The Panel notes that previous panels have held that a respondent demonstrates bad faith registration and use of a disputed domain name under Policy ¶ 4(a)(iii) where the respondent registers the disputed domain name with actual notice of the complainant and its rights in the appropriated mark. Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Previous panels have inferred that a respondent has actual notice of the complainant and its rights in a mark where the at-issue mark is widely famous or popular. See, e.g., Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that the respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where the complainant’s BEANIE BABIES mark was famous and the respondent should have been aware of it); see also Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that the respondent, at the time of registration, had notice of the complainant’s POKÉMON and PIKACHU trademarks given their extreme popularity). In the instant proceedings, the Panel determines that Complainant’s DISNEY, PHINEAS AND FERB, MARVEL and SPIDER-MAN marks are just as popular as the BEANIE BABIES, POKÉMON, and PIKACHU marks at issue in Ty Inc., supra and Nintendo of Am. Inc., supra. Accordingly, the Panel infers that Respondent registered the disputed domain names with actual notice of Complainant’s rights in the DISNEY, PHINEAS AND FERB, MARVEL, and SPIDER-MAN marks, which supports a finding of bad faith registration and use pursuant to 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 <juegosdephineasyferb.com>, <juegosdespiderman.net>, <juegosdevestirdisney.com>, <juegos‑spiderman.com>, <coloreardisney.net>, <planetamarvel.com>, <princesasdisney.net>, <puzzlesdedisney.com>, <puzzlesdisney.net>, <vestirdisney.com>, and <vestirdisney.net> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Panelist
Dated: December 4, 2013
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