Disney Enterprises, Inc. v. Domain Admin / Whois protection, this company does not own this domain name s.r.o.
Claim Number: FA1708001743802
Complainant is Disney Enterprises, Inc. (“Complainant”), represented by J. Andrew Coombs of J. ANDREW COOMBS, A Professional Corporation, California. Respondent is Domain Admin / Whois protection, this company does not own this domain name s.r.o. (“Respondent”), Czech Republic.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mydisneyphotpass.com>, registered with Gransy, s.r.o. d/b/a subreg.cz.
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, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 9, 2017; the Forum received payment on August 9, 2017.
On August 15, 2017, Gransy, s.r.o. d/b/a subreg.cz confirmed by e-mail to the Forum that the <mydisneyphotpass.com> domain name is registered with Gransy, s.r.o. d/b/a subreg.cz and that Respondent is the current registrant of the name. Gransy, s.r.o. d/b/a subreg.cz has verified that Respondent is bound by the Gransy, s.r.o. d/b/a subreg.cz 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 August 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 6, 2017 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@mydisneyphotpass.com. Also on August 17, 2017, 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 September 11, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant is a global producer of children’s entertainment and entertainment-related goods and services. Complainant uses the DISNEY and DISNEY PHOTOPASS marks (“DISNEY marks”) in conjunction with its business practices. Complainant registered the DISNEY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,162,727, registered July 28, 1981). Complainant also registered the DISNEY PHOTOPASS mark with USPTO (e.g., Reg. No. 4,495,801, registered Mar. 11, 2014). Additionally, Complainant registered the DISNEY marks with the Czech Republic’s Industrial Property Office (e.g., Reg. No. 253882, registered Apr. 28, 2003). Respondent’s <mydisneyphotpass.com> is confusingly similar to Complainant’s DISNEY PHOTOPASS mark because it incorporates the mark in its entirely, integrating the generic term “my,” eliminating the spaces, misspelling the word “photo,” and adding the “.com” generic top level domain (“gTLD”).
ii) Respondent does not have rights or legitimate interests in <mydisneyphotpass.com>. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the DISNEY marks in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <mydisneyphotpass.com> resolves to a website offering goods and services in direct competition with Complainant’s business.
iii) Respondent registered and is using <mydisneyphotpass.com> in bad faith. The disputed domain name attracts internet users to Respondent’s website for commercial gain. Respondent has engaged in the practice of typosquatting to create confusion among internet users. Respondent registered <mydisneyphotpass.com> with actual knowledge of Complainant and its rights to the DISNEY marks.
B. Respondent
Respondent did not submit a Response. The Panel notes that Respondent registered <mydisneyphotpass.com> on January 29, 2014.
Complainant established that it had rights in the marks contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected marks.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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 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 (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 is a global producer of children’s entertainment and entertainment-related goods and services. Complainant uses the DISNEY and DISNEY PHOTOPASS marks (“DISNEY marks”) in conjunction with its business practices. Complainant claims it registered the DISNEY mark with USPTO (e.g., Reg. No. 1,162,727, registered July 28, 1981). Complainant also claims it registered the DISNEY PHOTOPASS mark with USPTO (e.g., Reg. No. 4,495,801, registered Mar. 11, 2014). Additionally, Complainant claims it registered the DISNEY marks with the Czech Republic’s Industrial Property Office (e.g., Reg. No. 253882, registered Apr. 28, 2003). The general consensus among panels is that registrations with USPTO and other government trademark entities are sufficient to show rights in a mark. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”). Therefore, the Panel determines that Complainant’s multiple registrations with government entities are sufficient to show rights in the DISNEY marks.
Complainant asserts that Respondent’s <mydisneyphotpass.com> is confusingly similar to Complainant’s DISNEY PHOTOPASS mark because it incorporates the mark in its entirely, integrating the generic term “my,” eliminating the spaces, misspelling the word “photo,” and adding the “.com” generic top level domain
(“gTLD”). “Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate.” Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015). Additionally, 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 Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007). Likewise, “[t]he addition of the generic word ‘my’ . . . does not prevent a finding that the disputed domain name and mark are identical or confusingly similar.” BBY Solutions, Inc. v Best Buy Online / M/S Best Buy Online, FA 1620654 (Forum July 2, 2015). In the instant case, the Panel concludes that Respondent’s <mydisneyphotpass.com> is confusingly similar to Complainant’s DISNEY PHOTOPASS mark.
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 (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 (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 asserts that Respondent does not have rights or legitimate interests in <mydisneyphotpass.com>. In support of its assertion, Complainant illustrates that Respondent is not commonly known by the disputed domain name. WHOIS information associated with this case identifies Respondent as “GRANSY S.R.O D/B/A SUBREG.CZ.” Panels have determined that the respondent is not commonly known by the disputed domain name where there is no evidence in the record, including the WHOIS information, suggesting that the respondent is commonly known by that name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006). Therefore, “[g]iven the WHOIS contact information for the disputed domain name,” the Panel infers that Respondent . . . is not commonly known by the disputed domain name in any derivation. See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003).
Complainant avers it has not authorized or licensed Respondent to use the DISNEY marks in any regard, nor is Respondent affiliated with Complainant. Complainant argues that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. To support its argument, Complainant demonstrates that Respondent’s <mydisneyphotpass.com> resolves to a website offering goods and services in direct competition with Complainant’s business. The “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).” General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016). As such, the Panel finds that Respondent lacks rights and legitimate interests in <mydisneyphotpass.com> under the Policy.
Complainant maintains that Respondent registered and is using <mydisneyphotpass.com> in bad faith. The Panel recalls that Respondent’s <mydisneyphotpass.com> resolves to a website offering goods and services in direct competition with Complainant. Complainant contends that the disputed domain name attracts internet users to Respondent’s website for commercial gain. Panels have found bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site. See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000).
Next, Complainant asserts that Respondent has engaged in the practice of typosquatting, further evincing bad faith. “Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant.” Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016). Panels have determined that “[t]yposquatting is independent evidence of bad faith in the registration and use of a domain name.” Homer TLC, Inc. v. Artem Ponomarev, FA1506001623825 (Forum July 20, 2015). Given the evidence provided, the Panel concludes that Respondent registered and is using <mydisneyphotpass.com> in bad faith.
Finally, Complainant contends that Respondent registered <mydisneyphotpass.com> with actual knowledge of Complainant and its rights to the DISNEY marks. “[A]lthough the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith,” panels have found “actual knowledge through the name used for the domain and the use made of it.” Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014). Complainant also contends that in light of the fame, notoriety, and long-standing use of the DISNEY marks, it is inconceivable that Respondent could have registered the disputed domain name without actual and/or constructive knowledge of Complainant's rights in the mark. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel infers that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Therefore, where the circumstances indicate that Respondent had actual knowledge of Complainant's mark when it registered <mydisneyphotpass.com>, the Panel finds bad faith. Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mydisneyphotpass.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: September 25, 2017
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