Disney Enterprises, Inc. v. Online Admin / DotBadger Domains
Claim Number: FA2210002015605
Complainant is Disney Enterprises, Inc. (“Complainant”), represented by Annie S. Wang of Wang Law Corporation, US. Respondent is Online Admin / DotBadger Domains (“Respondent”), Czech Republic.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <disneyfantasy.com>, registered with Rebel.ca Corp..
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on October 11, 2022; Forum received payment on October 11, 2022.
On October 17, 2022, Rebel.ca Corp. confirmed by e-mail to Forum that the <disneyfantasy.com> domain name is registered with Rebel.ca Corp. and that Respondent is the current registrant of the name. Rebel.ca Corp. has verified that Respondent is bound by the Rebel.ca Corp. 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 October 18, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 7, 2022 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@disneyfantasy.com. Also on October 18, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On November 14, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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., offers children’s entertainment goods and services such as movies and merchandise.
Complainant asserts rights in the DISNEY FANTASY mark based upon registration with the United States Patent and Trademark Office (“USPTO”) and other trademark agencies worldwide.
Respondent’s <disneyfantasy.com> domain name is identical or confusingly similar to Complainant’s mark because it contains the DISNEY FANTASY mark in its entirety, merely adding the generic top-level domain (“gTLD”) “.com”.
Respondent does not have rights or legitimate interests in the <disneyfantasy.com> domain name. Respondent is not licensed or authorized to use Complainant’s DISNEY FANTASY mark and is not commonly known by the at-issue domain name. Additionally, Respondent does not use the at-issue domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to redirect internet users to a parking page where it hosts content and links largely unrelated to Complainant’s goods and services. Furthermore, Respondent has offered the domain name for sale.
Respondent registered and uses the <disneyfantasy.com> domain name in bad faith. Respondent has attempted to sell the at-issue domain name and has participated in a pattern of bad faith registration. Furthermore, Respondent registered the domain name with actual knowledge of Complainant’s rights in the DISNEY FANTASY mark. Finally, Respondent failed to respond to Complainant’s cease-and-desist letter.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the DISNEY FANTASY trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the DISNEY FANTASY trademark
Respondent uses the at-issue domain name to address a parking page hosting content and links to content.
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 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”).
The at-issue domain name is confusingly similar or identical to a trademark in which Complainant has rights.
Complainant’s registration of the DISNEY FANTASY mark with the USPTO or with any other national registration is sufficient to establish Complainant’s rights in a mark under Policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)).
Respondent’s <disneyfantasy.com> domain name is composed of Complainant’s entire DISNEY FANTASY trademark less its irrelevant space, with all followed by the “.com” generic top-level domain name. The differences between Complainant’s trademark and Respondent’s domain name do nothing to distinguish the at-issue domain name from Complainant’s trademark. Therefore, the Panel concludes that Respondent’s <disneyfantasy.com> domain name is confusingly similar or identical to Complainant’s DISNEY FANTASY trademark pursuant to Policy ¶ 4(a)(i). See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”); see also, F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
The WHOIS information for the at-issue domain name ultimately identifies the domain name’s registrant as “Online Admin / DotBadger Domains” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <disneyfantasy.com> domain name or by DISNEY FANTASY. The Panel therefore concludes that Respondent is not commonly known by <disneyfantasy.com> for the purposes of Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”); see also, Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). Likewise, Respondent’s general offering of the at-issue domain name for sale via a banner on <disneyfantasy.com> webpage suggests that the Respondent lacks rights and legitimate interests pursuant to pursuant to Policy ¶ 4(c)(ii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name).
Furthermore, Respondent uses the confusingly similar <disneyfantasy.com> domain name to address a parking page that hosts content and links primarily unrelated to Complainant. Respondent’s use of the domain name in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See TGI Friday’s of Minnesota, Inc. v. Tulip Company / Tulip Trading Company, FA 1691369 (Forum Oct. 10, 2016) (”Respondent uses the domain for a parking page displaying various links that consumers are likely to associate with Complainant, but that simply redirect to additional advertisements and links that divert traffic to third-party websites not affiliated with Complainant… The Panel here finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services.”); see also, The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) (“Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of the at-issue domain name under Policy ¶4(a)(ii).
Respondent’s <disneyfantasy.com> domain name was registered and used in bad faith. As discussed below without limitation, circumstances are present that permit the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First and as mentioned above regarding rights and interests, Respondent uses its confusingly similar/identical <disneyfantasy.com> domain name to address a parked webpage featuring content and links to third party content primarily unrelated to Complainant. Respondent’s use of the domain name diverts internet users away from Complainant’s genuine website and to Respondent’s <disneyfantasy.com> webpage by confusing such users into falsely believing that the domain name is affiliated with Complainant. Such use of the domain name indicates Respondent’s bad faith under Policy ¶ 4(b)(iv). See Vivint, Inc. v. Online Management, FA1403001549084 (Forum Apr. 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links).
Next, Respondent has suffered adverse findings as a respondent in previous UDRP disputes. Respondent’s prior cybersquatting demonstrates a pattern of bad faith domain name registration and is evidence of Respondent’s bad faith in the instant case under Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations); see also, Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)).
As also mentioned above regarding rights and interests, Respondent purportedly seeks to sell the at-issue domain name by offering it for sale via a banner on the <disneyfantasy.com> webpage. However, the Panel does not see the particular for sale banner to be a clear offer to sell the domain name for an amount in excess of its cost and thus the Panel does not find the banner offer compelling evidence of bad faith per Policy ¶ 4(b)(i).
Moreover, Respondent registered the <disneyfantasy.com> domain name knowing that Complainant had trademark rights in DISNEY FANTASY. Respondent’s prior knowledge is evident from the notoriety of Complainant’s famous DISNEY trademark and shows that Respondent registered and used <disneyfantasy.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <disneyfantasy.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 14, 2022
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