Disney Enterprises, Inc. v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2308002056449
Complainant is Disney Enterprises, Inc. (“Complainant”), represented by Annie S. Wang-Poloskov of Wang Law Corporation, California, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enchanteddisneyfinejewelry.com>, registered with Media Elite Holdings Limited.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to Forum electronically on August 7, 2023; Forum received payment on August 7, 2023.
On August 10, 2023, Media Elite Holdings Limited confirmed by e-mail to Forum that the <enchanteddisneyfinejewelry.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 11, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 31, 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@enchanteddisneyfinejewelry.com. Also, on August 11, 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 September 1, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Sandra J. Franklin 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
1. Respondent’s <enchanteddisneyfinejewelry.com> domain name is confusingly similar to Complainant’s DISNEY mark.
2. Respondent does not have any rights or legitimate interests in <enchanteddisneyfinejewelry.com> domain name.
3. Respondent registered and uses the <enchanteddisneyfinejewelry.com> domain name in bad faith.
B. Respondent did not file a Response.
Complainant, Disney Enterprises, Inc., holds registrations for its well-known DISNEY marks with the United States Patent and Trademark Office (“USPTO”) (e.g. DISNEY Reg. No. 1,162,727, registered July 28, 1981). Complainant also uses the registered mark ENCHANTED DISNEY FINE JEWELRY.
Respondent registered the <enchanteddisneyfinejewelry.com> domain name on November 13, 2020, and uses it to resolve to a parked page.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 Panel finds that Complainant has rights in DISNEY and ENCHANTED DISNEY FINE JEWELRY marks through registration with the USPTO. 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).”)
Respondent’s <enchanteddisneyfinejewelry.com> domain name uses Complainant’s DISNEY and ENCHANTED DISNEY FINE JEWELRY marks and simply adds the and the “.com” gTLD to the latter. This change does not distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Caterpillar Inc. v. Patricia Wee, FA 2001265 (Forum July 20, 2022) (finding the addition of the term “mr, “the numbers “181” and “.com” gTLD to complainant’s CAT mark in the <mrcat181.com> domain name did not prevent a finding of confusing similarity.) Therefore, the Panel finds that Respondent’s <enchanteddisneyfinejewelry.com> domain name is virtually identical to Complainant’s ENCHANTED DISNEY FINE JEWELRY mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 contends that Respondent has no rights or legitimate interests in the <enchanteddisneyfinejewelry.com> domain name, as Respondent is not commonly known by the domain name. Complainant has not given Respondent permission to use its DISNEY or ENCHANTED DISNEY FINE JEWELRY marks. The WHOIS identifies “Domain Administrator / Fundacion Privacy Services LTD” as the registrant of the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <enchanteddisneyfinejewelry.com> domain name and thus has no rights under Policy ¶ 4(c)(ii). See Navistar International Corporation v. N Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Complainant argues that Respondent does not use the <enchanteddisneyfinejewelry.com> domain name for a bona fide offering of goods or service or a legitimate noncommercial or fair use as Respondent uses it to resolve to a parked page and makes no active use of the domain name. Using a disputed domain name merely to resolve to a parked page is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Flor-John Films, Inc. v. Larson, FA 94974 (Forum July 25, 2000) (finding that Respondent’s failure to develop the site demonstrates a lack of legitimate interests in the domain name). Complainant provides evidence showing that the disputed domain name resolves to a parked page. The Panel finds that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <enchanteddisneyfinejewelry.com> domain name in bad faith by failing to make an active use of the domain name. Using a disputed domain name to resolve to a parked page with no active content evinces bad faith under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See Hewlett-Packard Co. v. Martineau, FA 95359 (Forum Aug. 30, 2000) (finding that passive holding of a domain name evinces both bad faith registration and bad faith use); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”) Accordingly, the Panel finds bad faith under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv).
Complainant also argues Respondent registered the disputed domain name with knowledge of Complainant’s rights in the DISNEY and ENCHANTED DISNEY FINE JEWELRY marks, due to the fame of the marks. The Panel agrees, noting that Respondent uses the exact ENCHANTED DISNEY FINE JEWELRY mark, and finds that Respondent registered the disputed domain name in bad faith under 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 "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds that Complainant has satisfied 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 <enchanteddisneyfinejewelry.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 5, 2023
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