Disney Enterprises, Inc. v. swsfiaw / iomkkwwf fezos / bilo sopz / bill Louis
Claim Number: FA2304002039880
Complainant is Disney Enterprises, Inc. (“Complainant”), USA, represented by Annie S. Wang-Poloskov of Wang Law Corporation, California, USA. Respondent is swsfiaw / iomkkwwf fezos / bilo sopz / bill Louis (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <boutiques-disney.com>, <boutique-disney.com>, <soldedisney.com>, and <boutiqusedisney.com>, registered with Name.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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on April 12, 2023; Forum received payment on April 12, 2023.
On April 14, 2023, Name.com, Inc. confirmed by e-mail to Forum that the <boutiques-disney.com>, <boutique-disney.com>, <soldedisney.com>, and <boutiqusedisney.com> domain names are registered with Name.com, Inc. and that Respondent is the current registrant of the names. Name.com, Inc. has verified that Respondent is bound by the Name.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 April 18, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 8, 2023 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@boutiques-disney.com, postmaster@boutique-disney.com, postmaster@soldedisney.com, postmaster@boutiqusedisney.com. Also on April 18, 2023, 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 May 15, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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 names be transferred from Respondent to Complainant.
Preliminary Issue: Multiple Respondents
Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. 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 contends that each of the domain names is virtually identical other than the specific email accounts at the same email server. Complainant notes that each of the domain names uses the same Registrar service, uses the same phone number, has fictitious address information, and uses one of two email addresses. Additionally, the resolving content at each domain name is extremely similar to each other. The Panel finds the disputed domain names are commonly owned/controlled by a single Respondent who is using multiple aliases. Respondents are collectively referred to as ‘Respondent.’
A. Complainant
i) Complainant, Disney Enterprises, Inc., is a producer of children’s entertainment goods and services. Complainant has rights in the DISNEY and DISNEY STORE marks (collectively the “DISNEY” marks) through its registration with multiple trademark organizations including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,162,727, registered on July 28, 1981 for “DISNEY”); and the European Union Intellectual Property Office (“EUIPO”) (e.g., Reg. No. 009005745, registered on October 19, 2010 for “DISNEY STORE”). The disputed domain names are identical or confusingly similar to Complainant’s DISNEY marks as they incorporate the “DISNEY” mark while two domain names add a hyphen, and each of the domain names add one of the generic terms: boutique, boutique, solde, and boutiquse. The term “boutique” means “shop”/”shops” or “stores”/”stores” in French, the term “boutiquse” is a misspelling of “boutique,” and the term “solde” means “sale” in French. Each of the domain names adds the “.com” generic top-level domain (“gTLD”).
ii) Respondent lacks rights and legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its DISNEY marks in the disputed domain names. Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead passes off as Complainant.
iii) Respondent registered and uses the disputed domain names in bad faith. Respondent passes off as Complainant and failed to respond to Complainant’s cease-and-desist letter. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the DISNEY marks.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The <boutiques-disney.com> and <boutique-disney.com> domain names were registered on April 8, 2021 and June 2, 2020, respectively. The <soldedisney.com> and <boutiqusedisney.com> domain names were registered on December 16, 2019.
2. Complainant has established rights in the DISNEY and DISNEY STORE marks through its registration with multiple trademark organizations including the USPTO (e.g., Reg. No. 1,162,727, registered on July 28, 1981 for “DISNEY”); and the EUIPO (e.g., Reg. No. 009005745, registered on October 19, 2010 for “DISNEY STORE”).
3. The disputed domain names’ resolving websites copy and use Complainant’s trademarks throughout thereby attempting to pass Respondent off as Complainant.
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”).
Complainant asserts rights in the DISNEY and DISNEY STORE marks through its registration with multiple trademark organizations including the USPTO (e.g., Reg. No. 1,162,727, registered on July 28, 1981 for “DISNEY”); and the EUIPO (e.g., Reg. No. 009005745, registered on October 19, 2010 for “DISNEY STORE”). Registration of a mark with multiple trademark organizations is evidence of a complainant’s rights in the mark under Policy ¶ 4(a)(i). Since Complainant has provided evidence of trademark registrations with the USPTO and the EUIPO, the Panel finds Complainant has rights in the DISNEY marks under Policy ¶ 4(a)(i).
Complainant asserts the disputed domain names <boutiques-disney.com>, <boutique-disney.com>, <soldedisney.com>, and <boutiqusedisney.com> are identical or confusingly similar to Complainant’s DISNEY marks. Under Policy ¶ 4(a)(i), adding a hyphen, a generic term, and the “.com” gTLD is insufficient in differentiating from the mark. See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug, 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”). The disputed domain names incorporate the DISNEY mark while two domain names add a hyphen, and each of the domain names adds one of the generic terms: boutique, boutique, solde, and boutiquse. The term “boutique” means “shop”/”shops” or “stores”/”stores” in French, the term “boutiquse” is a misspelling of “boutique,” and the term “solde” means “sale” in French. Each of the domain names adds the “.com” gTLD. The Panel therefore finds that each of the disputed domain names is confusingly similar to Complainant’s DISNEY marks under 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), then the burden shifts to Respondent to show 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 asserts Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its DISNEY marks in the disputed domain names. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. See Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). 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 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). The WHOIS information for each of the disputed domain names <boutiques-disney.com>, <boutique-disney.com>, <soldedisney.com>, and <boutiqusedisney.com> identifies Respondent as swsfiaw; iomkkwwf fezos; bilo sopz; and bill Louis respectively. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Additionally, Complainant asserts Respondent is not using the disputed domain names for any bona fide offering of goods or services, nor any noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), passing off as a complainant is not a bona fide offering of goods or services, nor any noncommercial or fair use. See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”). Complainant provides screenshots of the resolving webpages located at the disputed domain names, which imitate Complainant’s shopdisney.com domain name and displays Complainant’s marks and products. The Panel therefore finds Respondent is not using the disputed domain names for any bona fide offering of goods or services, nor any noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant argues Respondent registered and uses the disputed domain names in bad faith by passing off as complainant. Under Policy ¶ 4(b)(iv), passing off as a complainant is evidence of bad faith registration and use. See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Complainant provides screenshots of the disputed domain names’ resolving websites, which copy and use Complainant’s trademarks throughout thereby attempting to pass Respondent off as Complainant. Thus, the Panel finds Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Complainant further argues Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the DISNEY marks given the distinctive and famous nature of the marks. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient in demonstrating bad faith, and may be established through incorporation of a well-known/registered mark into a domain name. See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (finding Respondent had actual knowledge of Complainant’s rights in the USPS mark “given the widespread use of Complainant’s mark and the fact that Respondent registered four separate domain names all of which include Complainant’s USPS mark in its entirety”). The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain names that Respondent had knowledge of Complainant’s rights in Complainant’s DISNEY marks at the time of registering the disputed domain names, and finds that Respondent registered the disputed domain names in bad faith under 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 <boutiques-disney.com>, <boutique-disney.com>, <soldedisney.com>, and <boutiqusedisney.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: May 22, 2023
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