Disney Enterprises, Inc. v. SAILENDRA UPENDRAM
Claim Number: FA2011001920700
Complainant is Disney Enterprises, Inc. (“Complainant”), represented by Annie S. Wang of Wang Law Corporation, California, USA. Respondent is SAILENDRA UPENDRAM (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <disneybundle.com>, registered with GoDaddy.com, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 14, 2020; the Forum received payment on November 13, 2020.
On November 16, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <disneybundle.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 November 17, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 7, 2020 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@disneybundle.com. Also on November 17, 2020, 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 substantive response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 14, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, 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
Complainant is a worldwide leading producer of entertainment products and services such as movies, television programs, books, and merchandise. Complainant also owns and operates Disney+ (“Disney Plus”), Hulu and ESPN+ (“ESPN Plus”), which are subscription video on-demand streaming services that are offered as a discounted bundle. Complainant has rights in the trademark DISNEY through Complainant’s use in commerce for many decades and its multiple registrations of the mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <disneybundle.com>, registered on April 11, 2019, is identical or confusingly similar to Complainant’s DISNEY mark as it merely adds the word “bundle” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <disneybundle.com> domain name. Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to use the DISNEY mark or the disputed domain name. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent use the disputed domain name to host hyperlinks that compete with Complainant’s products and services.
Respondent registered and uses the <disneybundle.com> domain name in bad faith. Respondent uses the disputed domain name to divert Internet traffic to a webpage featuring competitive hyperlinks. Furthermore, Respondent engaged in opportunistic bad faith and had actual knowledge of Complainant’s rights to the DISNEY mark prior to registering the disputed domain name by virtue of the famous nature of Complainant’s mark and its registration of the domain name on the same date as Complainant’s public announcement of the discounted offering of its online streaming service bundle. Respondent also breached its service agreement with its registrar. Finally, Respondent failed to respond to Complainant’s cease and desist letter.
B. Respondent
Upon being formally served with the Complaint by the Forum, Respondent submitted a reply email stating, in its entirety, “None of the domains I own are live and I dont have any plans to market them. thx.”
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent 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 and evidentiary submissions 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 and supported allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the DISNEY mark through Complainant’s registration thereof with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has demonstrated rights in the DISNEY mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <disneybundle.com> is identical or confusingly similar to Complainant’s DISNEY mark as it merely adds the word “bundle” and the “.com” gTLD. Adding a generic term and a gTLD to a mark fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). As the <disneybundle.com> domain name contains the DISNEY mark in its entirety and adds the word “bundle” (which apparently relates to Complainant’s streaming video offering) and the “.com” gTLD, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per 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). Should Complainant succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent lacks rights or legitimate interests in the <disneybundle.com> domain name as Respondent is not commonly known by the disputed domain name and Respondent is not, and has not been, commonly known by the disputed domain name. In considering this issue, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “SAILENDRA UPENDRAM,” and Complainant argues there is no other evidence to suggest that Respondent is known otherwise or that it was authorized to use the DISNEY mark. Respondent has not filed a substantive Response and its only submission in this case does not address the issues raised by Policy ¶ 4(c)(ii). As such, upon the available evidence, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant next argues that Respondent fails to use the <disneybundle.com> domain name in connection with a bona fide offering of goods or services and that it does not make a legitimate noncommercial or fair use thereof as Respondent uses the disputed domain name to host hyperlinks that compete with Complainant’s products and services. Using a confusingly similar domain name to host competing hyperlinks may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA 1626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”) Here, Complainant argues that Respondent uses the disputed domain name to redirect users to a landing page which has links to sites related to Complainant’s products or services, specifically including goods and services that compete with and are not licensed or authorized by Complainant. In support of this claim Complainant submits a single screenshot of what appears to be a typical pay-per-click page listing categories such as “Bundle Deals”, “Disney Package Deals”, and “Comcast Cable Deals”. While Complainant does not submit further screenshots that show the result of a user clicking on any of these categories, the Panel has taken the initiative to view the website and has confirmed that these categories do, in fact, lead to third-party sites in what appears to be a commercial, pay-per-click arrangement. For its part, Respondent states: “None of the domains I own are live and I dont have any plans to market them. thx.” In light of the evidence provided by Complainant and observed by the Panel, Respondent’s statement is both inaccurate and it also does not support a finding that it is making a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). Based upon the available evidence the Panel concludes that Complainant has stated a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name and this has not been rebutted by Respondent.
Complainant contends that Respondent registered the <disneybundle.com> domain name in bad faith as Respondent had actual knowledge of Complainant’s rights to the DISNEY mark prior to registration of the disputed domain name by virtue of the famous nature of Complainant’s DISNEY mark. Worldwide prominence of a mark can support a reasonable presumption that a respondent has actual knowledge of a complainant’s rights in a mark at registration of a disputed domain name. See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Here, Complainant argues that Complainant’s mark is famous because the DISNEY mark is so widely accepted in the mind of the general public and is internationally distinctive due to the widespread marketing of Complainant’s goods and services. In support, it provides copies of news articles discussing the DISNEY mark. Further, Prior Panels have found the mark to be famous. Disney Enterprises, Inc. v. Hodson, FA 158165 (Forum July 1, 2003) (“association of the name Disney [with the Complainant is] widely accepted in the mind of the general public”). The Panel agrees with Complainant and finds it highly likely that Respondent registered the disputed domain name with knowledge of Complainant’s trademark.
Complainant also contends that Respondent registered and uses the <disneybundle.com> domain name in bad faith as Respondent uses the disputed domain name to divert Internet traffic to a webpage featuring competitive hyperlinks. Registering a confusingly similar domain name to divert internet users to a respondent’s webpage featuring competitive hyperlinks can demonstrate bad faith per Policy ¶¶ 4(b)(iii) and (iv). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”); see also American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). Here, Complainant argues that Respondent uses the disputed domain name to divert Internet traffic to a landing page featuring links to third party sites, including sites that offer goods and/or services that compete with Complainant’s authorized goods and/or services. As noted, Complainant submits a screenshot of the <disneybundle.com> home page but the Panel has visited the site and confirmed that these pay-per-click links do, in fact, bring users to commercial third-party sites. As supported by the available evidence, and not substantively rebutted by Respondent, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Complainant also contends that Respondent registered the <disneybundle.com> domain name with opportunistic bad faith. Registering a disputed domain name the same day as a public announcement by a complainant can demonstrate bad faith per Policy ¶ 4(a)(iii). See Pettigo Comercio Internacional Lda v. Siju Puthanveettil, FA 1600741 (Forum Feb. 18, 2015) (concluding that because the respondent registered the <lycaradio.com> domain name within hours of a UK media report announcing the acquisition of Sunrise Radio by Lyca, the complainant, the respondent had acted in opportunistic bad faith according to Policy ¶ 4(a)(iii)). Here, Complainant notes that Respondent registered the disputed domain name on the same date as Complainant’s announcement of a discounted bundle of its three video streaming services: Disney Plus, Hulu and ESPN Plus and it provides copies of news articles covering this announcement. Therefore, the Panel finds further support for its conclusion that Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant contends that Respondent registered and uses the <disneybundle.com> domain name in bad faith as Respondent failed to respond to Complainant’s cease and desist letter. Failing to respond to a cease and desist letter can further support a finding of bad faith per Policy ¶ 4(a)(iii). See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). Here, Complainant argues that Respondent failed to cease and desist from wrongful use of the disputed domain name by not stopping its use of the disputed domain name and transferring it to Complainant after being notified by Complainant of the unauthorized use. The Panel agrees and finds that Respondent’s failure to respond to Complainant’s cease and desist letter provides supporting evidence that it registered and uses the disputed domain name in bad faith per 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 <disneybundle.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: December 16, 2020
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