Disney Enterprises, Inc. v. Kaleem Khan
Claim Number: FA1403001547549
Complainant is Disney Enterprises, Inc. (“Complainant”), represented by Michael W.O. Holihan of Michael W.O. Holihan, P.A., Florida, USA. Respondent is Kaleem Khan (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <disneyworldtransportation.net>, registered with Wild West Domains, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 7, 2014; the National Arbitration Forum received payment on March 7, 2014.
On March 7, 2014, Wild West Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <disneyworldtransportation.net> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 March 13, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 2, 2014 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@disneyworldtransportation.net. Also on March 13, 2014, 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 April 11, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Disney Enterprises, Inc. of Burbank, CA, USA. Complainant is the owner of domestic and international registrations for WALT DISNEY WORLD and DISNEY as well as the DISNEY family of related marks. Complainant has continuously used these marks since at least as early as 1971 in connection with the sale, distribution and offer of various entertainment products and services including transportation services.
Respondent is Kaleem Khan of Oviedo, FL, USA. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. The Panel notes that the <disneyworldtransportation.net> domain name was registered on or about March 7, 2007.
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 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 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.”).
Complainant has used the WALT DISNEY WORLD mark to identify entertainment and transportation services in Florida since at least 1971. Complainant has registered the WALT DISNEY WORLD mark with the USPTO (e.g., Reg. No. 980,955, registered Mar. 26, 1974). The Panel finds that Complainant’s USPTO registrations satisfy the Policy ¶ 4(a)(i) requisite showing of rights. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant claims that Respondent’s <disneyworldtransportation.net> domain name is confusingly similar to the WALT DISNEY WORLD trademark. The Panel notes that the domain name features the generic top-level domain (“gTLD”) “.net,” the removal of the mark’s spacing, the removal of the first name “Walt,” and the addition of the descriptive term “transportation.” The Panel further notes that the mark’s confusing similarity is not dampened by the absence of the term “Walt.” See, e.g., Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks). see also Google Inc. v. Private Person / Andrey Skorodubov, FA 1506184 (Nat. Arb. Forum Jul. 28, 2013) (finding that the disputed domain name is confusingly similar to the complainants mark regardless of the omission of a letter and spaces in the mark and the addition of hyphens, a descriptive term, and a gTLD). The Panel here finds that the domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant claims that Respondent is not commonly known as the <disneyworldtransportation.net> domain name and could never be named as such because Complainant did not authorize Respondent to use any of Complainant’s marks in domain names. The Panel notes that the WHOIS information for the <disneyworldtransportation.net> domain name lists “KALEEM KHAN” as the registrant of record. The Panel finds there is no basis for a conclusion that Respondent has ever been commonly known as the <disneyworldtransportation.net> domain name. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant further asserts that Respondent uses the <disneyworldtransportation.net> domain name to promote its own business of transporting individuals to Complainant’s WALT DISNEY WORLD theme park. The Panel notes that the domain name resolves to a website promoting Respondent’s transport and limo services. In Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) the panel determined that the respondent’s competitive use of the disputed domain name defeated any finding of a Policy ¶ 4(c)(i) bona fide offering, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. The Panel here finds that Respondent’s conduct is not protectable under Policy ¶¶ 4(c)(i) or (iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent seeks to disrupt Complainant’s own shuttling and transport business. The Panel again notes that Respondent operates its own transport business through the disputed <disneyworldtransportation.net> domain name. The Panel finds that Respondent’s use of the confusingly similar domain name for purposes of operating a competing business is evidence of intent to unfairly disrupt Complainant’s business under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant also claims that Respondent profits from the likelihood that Internet users may reasonably believe this disputed domain name will take them to services affiliated with the WALT DISNEY WORLD mark. Complainant believes that Respondent can gain increased sales through this confusion. In Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) the panel found that there was a likelihood of confusion when the disputed domain name sent Internet users to a website that offered services that were nearly identical to those offered by the complainant. The Panel here finds Policy ¶ 4(b)(iv) bad faith based on Respondent’s use of the disputed domain name.
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <disneyworldtransportation.net> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: April 25, 2014
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