DECISION

 

Disney Enterprises, Inc. v. Ashley Bundhun

Claim Number: FA2507002164772

 

PARTIES

Complainant is Disney Enterprises, Inc. ("Complainant"), represented by Annie S. Wang-Poloskov of Wang Law Corporation, California, USA. Respondent is Ashley Bundhun ("Respondent"), United Arab Emirates.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <disneylandabudhabi.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

Alan L. Limbury, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on July 8, 2025. Forum received payment on July 8, 2025.

 

On July 9, 2025, GoDaddy.com, LLC confirmed by e-mail to Forum that the <disneylandabudhabi.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@disneylandabudhabi.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.

 

On July 14, 2025, Respondent sent an informal email to Forum. 

 

A timely formal Response was received and determined to be complete on August 4, 2025.

 

On August 5, 2025, pursuant to the Parties' requests to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant, Disney Enterprises, Inc., is a wholly owned subsidiary of The Walt Disney Company, a worldwide leading producer of children's entertainment goods and services. Complainant owns and operates world-famous Disneyland theme parks, including Tokyo Disneyland, Disneyland Paris, Hong Kong Disneyland and Shanghai Disneyland. As a consequence, Complainant enjoys a very substantial reputation in the DISNEYLAND name and mark throughout the world. Most recently, Complainant announced its agreement with Miral, an Abu Dhabi-based leisure and entertainment company, to develop a Disney theme park and resort in Abu Dhabi, United Arab Emirates.

 

Complainant owns hundreds of registrations for the DISNEY, DISNEYLAND and other DISNEY-formative trademarks in the United States, United Arab Emirates and other countries all over the world.

 

The <disneylandabudhabi.com> domain name is confusingly similar to the DISNEY trademark and is identical to Complainant's DISNEYLAND mark, with the addition of the geographic term "Abu Dhabi" and the required ".com" generic top-level domain indicator.

 

Respondent has no legitimate interest in the <disneylandabudhabi.com> domain name. Respondent is not authorized by Complainant to use the DISNEY or DISNEYLAND marks within the domain name. The webpages to which the domain name resolves indicate "This domain is registered, but may still be available" along with a "Get this domain" button that leads the user to a domain broker service. Respondent's attempt to profit from the registration of the domain name clearly demonstrates that Respondent does not have rights or legitimate interests in the domain name. 

 

Respondent must have known when it 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 and DISNEYLAND trademarks, there is no plausible explanation for the Respondent's registration of the domain name other than to trade upon the goodwill the Complainant has developed in its trademarks and to deceive consumers. Lastly, Respondent is not and has not been commonly known by the domain name.

 

Respondent registered and uses the domain name in bad faith. The DISNEY and DISNEYLAND marks are so internationally distinctive and famous that Respondent clearly knew of them prior to registering the domain name. Respondent's use of the DISNEY and DISNEYLAND trademarks within the domain name with the mere addition of the geographical location "Abu Dhabi" – also confusingly similar to Complainant's <disneyabudhabi.com> domain name — evidences an intent to deceive Internet users by suggesting an affiliation between the Complainant and the domain name which does not exist.

 

Respondent's non-use of the domain name, in addition to evidencing the absence of a legitimate interest, also evidences bad faith, as does Respondent's attempt to sell the domain name.

 

Finally, by registering the domain name with actual knowledge of Complainant's DISNEY and DISNEYLAND marks, Respondent acted in bad faith by breaching its service agreement with the registrar because Respondent falsely represented that its domain name registration would not infringe upon or otherwise violate the rights of any third party. Thus, the registration constituted bad faith under the UDRP.

 

B. Respondent

In its informal email to Forum on July 14, 2025, Respondent said:

 

"Please advise how we can close this case, I am ready to sell the domain for USD 15,000.00."

 

In its formal Response on August 4, 2025, Respondent did not directly address the first and third elements but stated the following in relation to the second element:

 

"The respondent has purchased the domain name on godaddy.com as an investment and has not published the website or carried out any associated transactions using the said domain. Therefore any clauses pertaining to the utilization of the domain name are rejected by the respondent.

 

The respondent further confirms that he will neither be publishing nor carry out any transactions under the disputed domain name.

          

The respondent proposes as an amicable resolution to cede the rights to the domain name to the complainant against a commercial settlement agreeable to both parties."

 

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 DISNEYLAND mark through numerous registrations, including with the UAE Ministry of Economy, Reg. No. 9836 registered on April 8, 1997 and since renewed.

 

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name. WIPO Overview 3.0, ¶ 1.7.

 

The Panel finds the <disneylandabudhabi.com> domain name to be confusingly similar to Complainant's DISNEYLAND mark, differing only by the addition of the geographic term "Abu Dhabi", which is insufficient to distinguish the domain name from the 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 <disneylandabudhabi.com> domain name was registered on April 1, 2025, many years after the registration of Complainant's famous DISNEYLAND mark in the UAE, where Respondent is located, and shortly before the announcement of Complainant's plans to establish a theme park there. It resolves to a Registrar webpage stating:

 

"This domain is registered, but still may be available".

 

A "Get this domain" button leads the user to a domain broker service.

 

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 it does have rights or legitimate interests in the <disneylandabudhabi.com> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019).

 

Although the registration of domain names for resale is a legitimate industry, where the disputed domain name incorporates a distinctive and famous trademark of which the registrant was well aware when choosing the domain name, the evidentiary burden of proof on the registrant to show that it has rights or legitimate interests in the disputed domain name is heavy. In the present case Respondent has failed to discharge that burden.

 

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(a)(iii) of the Policy is expressed in the conjunctive: "the domain name has been registered and is being used in bad faith" and Paragraph 4(b) sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii), namely:

 

(i)        circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

 

(ii)        you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

 

(iii)                      you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv)                      by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant and its distinctive DISNEYLAND mark when Respondent registered the <disneylandabudhabi.com> domain name. The inclusion of the geographic term "Abu Dhabi" in the domain name indicates that Respondent was also aware of Complainant's plans to establish a DISNEYLAND theme park in that location. 

 

Taking all these circumstances into account, coupled with the fame of Complainant's DISNEYLAND mark and Respondent's statement to Forum: "I am ready to sell the domain for USD 15,000.00" the Panel concludes that Respondent registered the domain name primarily for the purpose of selling the domain name registration to Complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name. This demonstrates registration and use in bad faith under Policy ¶ 4(b)(i). 

 

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 <disneylandabudhabi.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Alan L. Limbury, Panelist

Dated: August 6, 2025