DECISION
Disney Enterprises, Inc. v. Khaled Hussein
Claim Number: FA2507002164500
PARTIES
Complainant is Disney Enterprises, Inc. ("Complainant"), represented by Annie S. Wang-Poloskov of Wang Law Corporation, California, USA. Respondent is Khaled Hussein ("Respondent"), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <disneyyasisland.com>, registered with GoDaddy.com, LLC.
PANEL
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Steven M. Levy and Sandra J. Franklin as Panelists and Alan L. Limbury as Chair.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on July 8, 2025. Forum received payment on July 8, 2025.
On July 8, 2025, GoDaddy.com, LLC confirmed by e-mail to Forum that the <disneyyasisland.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 July 14, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 4, 2025 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@disneyyasisland.com. Also on July 14, 2025, 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.
A timely Response was received and determined to be complete on August 4, 2025.
On August 7, 2025, Complainant submitted an Additional Submission.
On August 9, 2025, Respondent submitted a Supplemental Submission and Procedural Objection to Complainant's August 7, 2025 filing.
On August 12, 2025, pursuant to Respondent's request to have the dispute decided by a three-member Panel, Forum appointed Steven M. Levy and Sandra J. Franklin as Panelists and Alan L. Limbury as Chair.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: CLAIMED PROCEDURAL DEFECT
Respondent claims that Complainant references seven exhibits (A–G) in its Complaint but failed to annex any of them when the Complaint was filed. If true, this would violate UDRP Rule 3(b)(xiv), which requires Complainant to annex "any documentary or other evidence... together with a schedule indexing such evidence."
Respondent says Forum did not transmit the referenced exhibits until August 2, 2025, three days before the Response deadline and nearly three weeks after the Commencement Date of July 14, 2025. There were only two attachments to Forum's July 14th 2025 email notifying Respondent of the commencement of the case. Respondent claims that no evidence was available to him during the first 19 days of the Response window, and no formal notice of deficiency or timely cure was issued under UDRP Rule 4(d), which mandates that a deficient Complaint be corrected within five (5) calendar days.
Accordingly, Respondent says the Complaint remains procedurally deficient and must be dismissed. No burden can shift to Respondent when Complainant's claims are unsupported, and the annexes were not timely provided.
Complainant submits that Respondent's claim of delayed receipt of Complainant's exhibits is not supported by the record. Under the Rules, any alleged defect is also not attributable to Complainant. Complainant timely submitted its exhibits to Forum at the time of filing and Forum appears to have timely discharged its duty to email notice to Respondent of the Complaint and exhibits on the date of commencement. See UDRP Rule 2(a) ("When forwarding a complaint, including any annexes, electronically to the Respondent, it shall be the Provider's responsibility to employ reasonably available means calculated to achieve actual notice to Respondent.") (emphasis added).
On August 14, 2025, the Panel issued a Procedural Order requesting Respondent to provide any additional submission he may wish to make in response to the Exhibits to the Complaint which he claims not to have received with the Complaint and have it e-mailed to Forum and Complainant no later than August 22, 2025. Complainant was requested to provide any response to Respondent's additional submission and have it e-mailed to Forum and Respondent no later than August 27, 2025. The time period within which the Panel was required to render its Decision was extended until further directive of the Panel.
As mentioned above, on August 17, 2025, Respondent notified Forum that his August 9, 2025 filing fully complied with the Panel's request in the Procedural Order. No further submission was made.
The Panel notes from the case file that on August 2, 2025 Forum sent to Respondent a copy of its "Commencement Email 3/3" dated July 14, 2025, which attached a copy of the Complaint and all 7 annexed Exhibits. This confirmed Complainant's timely submission of all exhibits at the time of filing the Complaint and Forum's compliance with its responsibility under UDRP Rule 2(a).
Accordingly, the Panel does not accept Respondent's assertion of procedural deficiencies with respect to Complainant and Forum and declines to dismiss the case, while noting that Respondent did not request additional time to respond, filed a timely response, has claimed no harm or prejudice as a result of the alleged delay, and has declined the opportunity afforded by the Procedural Order to add any further submissions.
PARTIES' CONTENTIONS
A. Complainant
Complainant, Disney Enterprises, Inc., owns and operates world-famous theme parks, hotels, resorts, and cruise lines all over the world. For decades Complainant or its predecessors in interest has continuously used and applied the DISNEY trademark, which is famous throughout the world, for a variety of goods and services.
On May 7, 2025, Complainant announced its agreement with Miral, an Abu Dhabi-based leisure and entertainment company, to develop a Disney theme park and resort located in Yas Island in Abu Dhabi, United Arab Emirates ("UAE").
Respondent's <disneyyasisland.com> domain name is confusingly similar to the DISNEY trademark.
Respondent has no legitimate interest in the <disneyyasisland.com> domain name. Respondent is not authorized by Complainant to use the DISNEY mark within the domain name and Respondent must have known when he selected the domain name that the public would incorrectly associate it with Complainant and Complainant's marks. Given the distinctiveness and fame of the DISNEY trademark, there is no plausible explanation for Respondent's registration of the domain name other than to trade upon the goodwill Complainant has developed in its trademarks and to deceive consumers. The domain name currently resolves to a parked page that is neither licensed nor approved by Complainant. The unauthorized page contains a search engine with links to commercial websites related to Complainant's products or services, although not limited to Complainant's own goods and services. Lastly, Respondent is not and has not been commonly known by the domain name.
Respondent registered and is using the domain name in bad faith. The DISNEY trademark is so internationally distinctive and famous that Respondent must have had actual knowledge of the mark prior to the domain name's registration. Respondent's use of the DISNEY mark within the domain name with the mere addition of the geographical location "Yas Island" evidences an intent to deceive Internet users by suggesting an affiliation between Complainant and the domain name which does not exist. Respondent's bad faith intent to trade off the DISNEY trademark is underscored by this undeniable knowledge of Complainant's rights in the trademark. Respondent's prolonged period of non-use of the domain name, in addition to evidencing the absence of a legitimate interest, also evidences bad faith. Respondent's use of the confusingly similar domain name to intentionally attract Internet users and profit through the receipt of click-through fees by creating a strong likelihood of confusion with Complainant's trademark is evidence of bad faith pursuant to Section 4(b)(iv) UDRP policy. Finally, Respondent acted in bad faith by breaching his service agreement with the registrar by falsely representing that the domain name registration would not infringe upon or otherwise violate the rights of any third party.
B. Respondent
Respondent, Khaled Hussein, lawfully registered the <disneyyasisland.com> domain name on October 6, 2023. At that time, Complainant had not made any public announcement or disclosed any project, branding, or commercial activity involving "Disney" in connection with Yas Island, Abu Dhabi. Complainant's Yas Island project was first publicly revealed on May 7, 2025 — more than 19 months after Respondent's domain registration.
The domain name has never been used; has never been monetized; has never generated ad revenue; was never offered for sale; and is passively held.
Complainant submitted no annexes with its initial Complaint and provided no timely evidence that Respondent used the domain name in any misleading, monetized, or trademark-targeting way. No screenshots, WHOIS changes, or web traffic evidence were presented. Respondent notes that a parked page briefly displayed GoDaddy auto-placed ads (e.g., Crown Plaza, Towers Beach Hotel), all completely unrelated to Disney. These ads were neither configured nor monetized by Respondent and were promptly removed upon discovery. Numerous WIPO panels have confirmed that such registrar-placed PPC ads when unrelated, unmonetized, and not targeting the complainant do not support a finding of bad faith, particularly where the domain name was passively held and not misleadingly used. Registrar-placed PPC ads, passive holding, and descriptive domain combinations do not meet the UDRP's bad faith threshold unless the complainant provides clear evidence of targeting, deception, or profit. No such evidence exists here. Respondent registered the <disneyyasisland.com> domain name over 19 months before Complainant's Yas Island branding was announced, never used or monetized it, and promptly removed unrelated registrar ads upon discovery. Accordingly, there is no bad faith registration or use under UDRP ¶ 4(a)(iii).
No Confusing Similarity – UDRP ¶ 4(a)(i).
The <disneyyasisland.com> domain name includes the descriptive geographic term "Yas Island", a public tourism and entertainment hub in Abu Dhabi since 2009. The inclusion of a trademark plus a well-known geographic descriptor does not automatically create confusion especially
where the domain name is unused and passive; the domain name was registered before any branding announcement; and there is no impersonation or false affiliation. Respondent's domain name is passive, descriptive, and predates any public Disney Yas Island branding by 19 months.
Respondent Has Legitimate Interest – UDRP ¶ 4(a)(ii).
Complainant did not establish a prima facie case. Respondent's legitimate interest arises from lawful passive holding; descriptive geographic logic; early registration (Oct. 2023); and lack of any targeting or monetization. Per WIPO Overview 3.0 §§2.9 and 2.10, geographic or dictionary-word domains may establish a legitimate interest if used (or intended) in accordance with their plain meaning and not for brand exploitation.
No Bad Faith – UDRP ¶ 4(a)(iii).
Complainant's bad faith argument fails on all counts: the domain name was registered 19 months before the Complainant's Yas Island branding; no evidence of use, sale, or PPC revenue; and the term "Yas Island" was a public descriptor long before Disney adopted it.
Abuse of UDRP Process.
This is not a trademark protection case. It is a retroactive domain grab. Complainant waited 19 months after registration then filed a Complaint without annexes or exhibits (Rule 3(b)(xiv) violation); without curing the deficiency (Rule 4(d) violation); and without showing targeting, monetization, or confusion.
DisneyNews.com: Selective Enforcement
The domain name <disneynews.com> is not owned by Complainant. The website states: "This site is NOT AFFILIATED WITH THE WALT DISNEY COMPANY! I'm just a huge Disney fan…". It remains active, despite featuring Disney content, unlike Respondent's domain which is unused and passive. This selective targeting underscores the opportunistic nature of the Complaint.
Reverse Domain Name Hijacking – UDRP Rule 15(e)
This Complaint was filed without required evidence; was not cured after commencement; relies on inapposite default rulings; misuses the UDRP to target a passive, descriptive domain registered long before Disney's Yas Island plans. The Complaint was filed in bad faith and constitutes an abuse of process under UDRP Rule 15(e).
Respondent respectfully requests that the Panel:
1. Dismiss the Complaint in full with prejudice, as Complainant failed to establish any of the three required UDRP elements under Paragraph 4(a), and no re-filing is warranted under ICANN Rule 15(e) due to procedural defects and lack of evidence.
2. Declare that Complainant engaged in Reverse Domain Name Hijacking under UDRP Rule 15(e), based on failure to annex evidence under Rule 3(b)(xiv); lack of targeting, monetization, or use; filing long after a passive registration; citing irrelevant, commercial, or default-only precedents.
3. Order that the domain name remain with Respondent.
4. Grant any further relief the Panel deems appropriate to protect the integrity of the UDRP and deter future misuse.
FINDINGS
Complainant has established all the elements entitling it to relief.
DISCUSSION
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.
Identical and/or Confusingly Similar
Complainant has shown that it has rights in the mark DISNEY, e.g. USPTO Registration No. 1,162,727, registered on July 28, 1981 for "children's story books and a newspaper" in International Class 16, and Registration No. 2,888,282, registered on September 28, 2004 for "computer software featuring music, stories, activities, games, and other such educational and entertainment topics for children", in International Class 9. It further owns UAE Registration No. 022824, registered on December 6, 1999 for "spectacles, scientific, navigational, surveying, electrical, photographic, cinematographic, optical, weighing, measuring, signalling, surveillance, rescue and teaching equipment and instruments, sound and image recording or transmission equipment, magnetic data carriers and recording discs, coin-operated apparatus, money-counting apparatus, calculating machines and processing apparatus" in International Class 9.
The Panel finds Respondent's <disneyyasisland.com> domain name to be confusingly similar to Complainant's DISNEY mark, only differing by the addition of the geographical location "Yas Island" which is insufficient to distinguish the domain name from Complainant's DISNEY mark. The inconsequential ".com" generic top-level domain ("gTLD") may be ignored under this element. See, for example, Rollerblade, Inc. v. Chris McCrady, D2000-0429 (WIPO June 25, 2000).
Complainant has established this element.
Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate Respondent's rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <disneyyasisland.com> domain name was registered on October 6, 2023, many years after the registration of Complainant's DISNEY mark, which is famous. It does not currently resolve to an active website.
These circumstances, together with Complainant's assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that he does have rights or legitimate interests in the <disneyyasisland.com> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019).
As noted above, the <disneyyasisland.com> domain name is confusingly similar to Complainant's DISNEY mark, which is famous and distinctive. In the absence of circumstances such as those set out in Paragraph 4(c) of the Policy, the Panel finds that the passive holding of such a mark cannot alone give rise to rights or legitimate interests in a disputed domain name. The addition to the DISNEY mark of the geographical location "Yas Island" does not negate the impression created by the domain name that it belongs to or is otherwise associated with Complainant. Likewise, the registration of the domain name prior to the public announcement of Complainant's Yas Island theme park does not negate that impression. Although there may be no monetization, the unauthorized registration of the famous and distinctive DISNEY mark is indicative of targeting. Further, the combination within the domain name of the distinctive and famous DISNEY mark with the "Yas Island" geographic term does not constitute a geographic or dictionary-word domain and is evidence of brand exploitation. Finally, apart from claiming passive holding, Respondent has not provided any indication of its intended bona fide use for the domain name nor has it submitted evidence of any demonstrable preparations for any such use.
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out some circumstances which shall be evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy. As noted in the WIPO Overview 3.0, Section 3.1, those circumstances are not exclusive and a complainant may demonstrate bad faith under paragraph 4(a)(iii) by showing that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to the complainant's trademark.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent, located in the USA, was fully aware of Complainant and its famous and distinctive DISNEY trademark when Respondent registered the <disneyyasisland.com> domain name and that, even assuming that Respondent was then unaware of Complainant's as yet unannounced plan to establish a theme park on Yas Island, Respondent did so in bad faith with intent to take unfair advantage of Complainant's DISNEY mark.
Although the <disneyyasisland.com> domain name does not resolve to an active website, as in the leading case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the dominant feature of the domain name, DISNEY, corresponds to a particularly distinctive and famous mark. Respondent has not proposed, and the Panel finds that there is no conceivable active use that could be made of the domain name that would not be illegitimate, such as by passing himself off as Complainant or affiliated with Complainant; an infringement of consumer protection legislation; a domain name intended for sale to Complainant; or an infringement of Complainant's rights under trademark law. Accordingly, the Panel finds that Respondent's hitherto passive use of the domain name demonstrates registration and use in bad faith.
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <disneyyasisland.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Chair
Steven M. Levy, Panelist
Sandra J. Franklin, Panelist
Dated: August 25, 2025
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