Disney Enterprises, Inc. v. Liang Tang/Zhi Ming Tang
Claim Number: FA1807001797074
Complainant is Disney Enterprises, Inc. ("Complainant"), represented by Annie S. Wang of Wang Law Corporation, California, USA. Respondents are Liang Tang and Zhi Ming Tang ("Respondents"), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <shopdisneyes.com> and <storedisneyspain.com>, registered with Zhengzhou Zitian Network Technology Co., Ltd.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 17, 2018; the Forum received payment on July 17, 2018.
On July 17, 2018, Zhengzhou Zitian Network Technology Co., Ltd confirmed by email to the Forum that the <shopdisneyes.com> and <storedisneyspain.com> domain names are registered with Zhengzhou Zitian Network Technology Co., Ltd; that Respondent Liang Tang is the current registrant of <shopdisneyes.com>; and that Respondent Zhi Ming Tang is the current registrant of <storedisneyspain.com>. Zhengzhou Zitian Network Technology Co., Ltd has verified that Respondents are bound by the Zhengzhou Zitian Network Technology Co., Ltd registration agreement and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 20, 2018, the Forum served the Complaint in both English and Chinese and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 9, 2018 by which Respondents could file a Response to the Complaint, via email to all entities and persons listed on the domain name registrations as technical, administrative, and billing contacts, and to postmaster@shopdisneyes.com, postmaster@storedisneyspain.com. Also on July 20, 2018, the Written Notice of the Complaint, notifying Respondents of the email addresses served and the deadline for a Response, was transmitted to Respondents via post and fax, to all entities and persons listed on the domain name registrations as technical, administrative and billing contacts.
Having received no response from Respondents, the Forum transmitted to the parties a Notification of Respondent Default.
On August 13, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 Respondents.
Complainant requests that the domain names be transferred from Respondents to Complainant.
A. Complainant
Complainant is a worldwide producer of children's entertainment goods and services. Complainant owns and uses various trademarks in connection with this business, including DISNEY, which is the subject of longstanding trademark registrations in the United States, China, and other jurisdictions, and which Complainant asserts has become famous. Complainant also owns trademark registrations for SHOPDISNEY and DISNEYSTORE.
Respondents registered the disputed domain names on December 4, 2017. The domain name <shopdisneyes.com> is being used for a Spanish-language website entitled "Tienda Disney" ("Disney Store"), while the domain name <storedisneyspain.com> is being used for a similar Spanish-language website entitled "Disney España" ("Disney Spain"). Both sites offer, or purport to offer, what appear to be Complainant's products for sale; Complainant asserts that the sites are being used to deceive Internet users into providing credit card account information and other personal data. Complainant states that it has not authorized Respondents' use of the mark in the domain names, and that Respondents are not commonly known by the domain names.
Complainant contends on the above grounds that the disputed domain names <shopdisneyes.com> and <storedisneyspain.com> are confusingly similar to its DISNEY mark; that Respondents lack rights or legitimate interests in the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
B. Respondent
Respondents failed to submit a Response in this proceeding.
The Panel finds that each of the disputed domain names is confusingly similar to a mark in which Complainant has rights; that Respondents lack rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used 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 Respondents' 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.").
Paragraph 3(c) of the Rules provides that a "complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder." Complainant alleges that the disputed domain names in this proceeding are effectively controlled by the same person or entity. Although the domain names are registered in different names, the registration records reflect the same telephone number and email address, and the domain names were registered on the same day (within four seconds of one another). In addition, the domain names are similar to one another, and they are being used for similar websites. Furthermore, neither Respondent has objected to this proceeding going forward with multiple respondents. Under the circumstances, the Panel considers it appropriate to treat Respondents as being the same person or entity for purposes of this proceeding.
The Panel notes that the Registration Agreement is written in Chinese, thereby making that the language of the proceedings. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceedings may be conducted in English. See, e.g., C.V. Starr & Co., Inc. & Starr Int'l Co., Inc. v. Shen Zhong Chao, FA 1712431 (Forum Feb. 24, 2017).
The disputed domain names <shopdisneyes.com> and <storedisneyspain.com> both incorporate Complainant's registered DISNEY mark, adding in each case the generic term "shop" or "store"; the geographic term "Spain" or "es" (an abbreviation for "Spain"); and the ".com" top-level domain. These additions do not substantially distinguish the disputed domain names from Complainant's mark. See, e.g., Disney Enterprises, Inc. v. Maddisyn Fernandes / Fernandes Privacy Holdings, FA 1750672 (Forum Nov. 5, 2017) (finding <shopdisneyparks.com> confusingly similar to DISNEY); Disney Enterprises, Inc. v. Nusair Bawla, FA 1225829 (Forum Oct. 30, 2008) (finding <mydisneystore.com> confusingly similar to DISNEY); Google Inc. v. Domain Admin, C/O ID#10760 / Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1732138 (Forum June 16, 2017) (finding <google‑spain.com> confusingly similar to GOOGLE); Michelin North America, Inc. v. Chartops Anushree, FA 1694266 (Forum Oct. 24, 2016) (finding <es‑michelin.com> confusingly similar to MICHELIN); see also Disney Enterprises, Inc. c. D. Alfredo Juan López-Sidro Gil, DES2015-0003 (WIPO Apr. 2, 2015) (finding <tiendadisney.es> identical or confusingly similar to DISNEY under similar policy). Accordingly, the Panel considers both of the disputed domain names to be confusingly similar to Complainant's registered DISNEY mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain names incorporate Complainant's famous mark without authorization, and they apparently are being used to promote the sale of infringing and possibly counterfeit merchandise, or to deceive Internet users into disclosing personal and financial information to Respondent, or both. Neither of these uses would likely give rise to rights or legitimate interests. See, e.g., United States Postal Service v. Uspsx Account / USpsx, FA 1786048 (Forum June 8, 2018) (no rights or interests where domain name was used to promote competing services or collect personal information); Capital One Financial Corp. v. Dewaldt Botha, FA 1737107 (Forum July 27, 2017) (no rights or interests where domain name was used to market competing services, generate sales leads, or harvest personal information); Griffin Technology, Inc. v. Huahuagongzi, FA 1612122 (Forum May 8, 2015) (no rights or interests where domain name was used to promote to promote infringing and likely counterfeit goods).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain names were registered and are being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondents registered domain names incorporating Complainant's famous mark and promptly began using them to promote the sale of infringing and possibly counterfeit merchandise, to deceive Internet users into disclosing personal and financial information to Respondents, or both. Such conduct is indicative of bad faith registration and use under both of the cited provisions of the Policy. See, e.g., United States Postal Service v. Uspsx Account / USpsx, supra; Capital One Financial Corp. v. Dewaldt Botha, supra; Griffin Technology, Inc. v. Huahuagongzi, supra. The Panel finds that the disputed domain names were registered and are being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shopdisneyes.com> and <storedisneyspain.com> domain names be TRANSFERRED from Respondents to Complainant.
David E. Sorkin, Panelist
Dated: August 20, 2018
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