Disney Enterprises, Inc. v. Alex Hamel / Disney Legal Group
Claim Number: FA1601001658435
Complainant is Disney Enterprises, Inc. (“Complainant”), represented by J. Andrew Coombs of J. ANDREW COOMBS, A Professional Corporation, California, USA. Respondent is Alex Hamel / Disney Legal Group (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <disneylegalgroup.com>, registered with Register.com, Inc.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 27, 2016; the Forum received payment on January 27, 2016.
On January 28, 2016, Register.com, Inc. confirmed by e-mail to the Forum that the <disneylegalgroup.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, Inc. 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 January 28, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 17, 2016 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@disneylegalgroup.com. Also on January 28, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On February 22, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Disney Enterprises Inc., has registered and owned the DISNEY mark in countries throughout the world for many years. Complainant has rights in the DISNEY mark from registration of the mark with trademark agencies such as the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,162,727, registered July 28, 1981). Respondent’s disputed domain <disneylegalgroup.com> is confusingly similar to the DISNEY mark as the domain includes Complainant’s entire DISNEY mark, adds the generic top-level domain (“gTLD”) “.com,” and the generic terms “legal” and “group.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been commonly known by the disputed domain name, nor has Respondent been authorized to use the DISNEY mark in any manner. Additionally, Respondent’s use of the domain, to resolve to a generic landing page hosting links to sites related to Complainant’s products and products of Complainant’s competitors, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and is using the disputed domain name in bad faith. Respondent has shown bad faith through advertising goods and services that compete with Complainant. Respondent has attempted to use Complainant’s mark for commercial gain through confusing and attracting Internet users who believe they are reaching a domain associated with Complainant. Further, due to the fame and pervasiveness of Complainant’s mark, it is inconceivable that Respondent could have registered the domain without actual knowledge of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a worldwide leading producer of children’s entertainment goods and services such as movies, television programs, books, and merchandise. Complainant owns rights in the DISNEY mark through registration of the mark with trademark agencies such as the USPTO (e.g., Reg. No. 1,162,727, registered July 28, 1981). Respondent’s disputed domain <disneylegalgroup.com> is confusingly similar to the DISNEY mark as the domain includes Complainant’s entire DISNEY mark, adds the gTLD “.com,” and the generic terms “legal” and “group.”
Respondent, Alex Hamel / Disney Legal Group, registered the <disneylegalgroup.com> domain name on July 20, 2015. Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been commonly known by the disputed domain name, nor has Respondent been authorized to use the DISNEY mark. Respondent’s use of the domain, to resolve to a generic landing page hosting links to sites related to Complainant’s products and products of Complainant’s competitors, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and is using the <disneylegalgroup.com> domain name in bad faith. Respondent advertises goods and services that compete with Complainant, presumably for commercial gain. Respondent registered the domain with actual knowledge of Complainant’s mark.
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(f), 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 rights in the DISNEY mark under Policy ¶ 4(a)(i) through registration with various trademark agencies including the USPTO. See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).
Respondent’s disputed domain <disneylegalgroup.com> is confusingly similar to the DISNEY mark. The disputed domain differs from the mark through the addition of the gTLD “.com” and the generic terms “legal” and “group.”
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).
Respondent has not been commonly known by the <disneylegalgroup.com> domain name. Complainant has not authorized Respondent to use the DISNEY mark. The WHOIS information for the disputed domain identifies Respondent as “Alex Hamel” of the organization “Disney Legal Group.” Because Respondent has not responded to the complaint, there is no evidence showing that Respondent was actually commonly known by the <disneylegalgroup.com> domain despite appearances to the contrary. See Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’ However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.”).
Respondent’s use of the <disneylegalgroup.com> domain name, to resolve to a generic landing page hosting links to sites related to Complainant’s products and products of Complainant’s competitors, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain resolves to a website listing various click-through links for products and services such as, “Cosmetic Surgery,” “Bowling Equipment,” and “Cheese.” The domain also includes a search tool that allows users to search for advertisements using terms that will result in display of competing advertisements. The use of another’s mark to display commercial advertisements is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain. See 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)).
Respondent has shown bad faith through advertising goods and services that compete with Complainant. The use of a confusingly similar domain to resolve to a website hosting competing links shows bad faith under Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”)
Respondent registered and uses the <disneylegalgroup.com> domain name in bad faith under Policy ¶ 4(b)(iv). Respondent’s use of a confusingly similar domain name for commercial gain to divert Internet users to a generic parked website hosting commercial links is evidence of bad faith. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Respondent had actual knowledge of Complainant's rights in the DISNEY mark prior to registering the <disneylegalgroup.com> domain name. Therefore, Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <disneylegalgroup.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 5, 2016
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