Disney Enterprises, Inc. v. My Disney
Vacation
Claim
Number: FA0509000553392
Complainant is Disney Enterprises, Inc. (“Complainant”),
represented by J. Andrew Coombs of J. Andrew Coombs, A Professional Corporation, 450 North Brand Boulevard, Suite 600, Glendale, CA 91203-2349. Respondent is My Disney Vacation (“Respondent”), 30349 Gratiot Roseville,
Michigan 48066.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <mydisneyvacation.com>, registered with Bulkregister,
Llc.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on September
6, 2005; the National Arbitration Forum received a hard copy of the Complaint
on September 7, 2005.
On
September 7, 2005, Bulkregister, Llc. confirmed by e-mail to the National
Arbitration Forum that the <mydisneyvacation.com> domain name is
registered with Bulkregister, Llc. and that Respondent is the current
registrant of the name. Bulkregister,
Llc. has verified that Respondent is bound by the Bulkregister, Llc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On
September 8, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of September 28, 2005 by which Respondent could file a response to
the Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@mydisneyvacation.com by
e-mail.
Having
received no response from Respondent, the National Arbitration Forum transmitted
to the parties a Notification of Respondent Default.
On
October 5, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed the
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <mydisneyvacation.com>
domain name is confusingly similar to Complainant’s DISNEY mark.
2. Respondent does not have any rights or
legitimate interests in the <mydisneyvacation.com> domain name.
3. Respondent registered and used the <mydisneyvacation.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Disney Enterprises, Inc. or its predecessors-in-interest have continuously used
and applied the DISNEY mark and DISNEY-formative marks for a variety of
entertainment-related goods and services, specifically including travel-related
services connected with its world famous theme parks. For the purposes of this dispute, Complainant has submitted U.S.
Patent and Trademark Office (“USPTO”) registrations as evidence of its rights
in the DISNEY and related marks: DISNEY for children’s story books (Reg. No.
1,162,727) registered on July 28, 1981; DISNEY ONLINE for computer services
(Reg. No. 2,194,742) registered on October 13, 1998; and DISNEYLAND for a
variety of goods and services (Reg. No. 1,037,788) registered on April 13,
1976.
Respondent, My
Disney Vacation, registered the <mydisneyvacation.com> domain name
on June 6, 2001. The disputed domain
name refers to a website that offers a “relaxing residential rest stop for
tourists” located in Kissimmee Florida, which is near Complainant’s Walt Disney
World Resort. The resultant website
also includes links to DISNEY resorts as well as hyperlinked text linking to
Complainant’s competitors: “Universal Studio’s [sic], Islands of
Adventure, and Sea World are only a fifteen to twenty minute drive.”
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."
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(e), 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 and inferences set forth in the Complaint as true unless
the evidence is clearly contradictory. See
Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat.
Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond
allows all reasonable inferences of fact in the allegations of the complaint to
be deemed true); see also Talk
City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence
of a response, it is appropriate to accept as true all allegations of the
Complaint.”).
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.
Complainant
asserts rights in the DISNEY mark based on its registration of the mark with
the USPTO. It is well established under
the Policy that a complainant’s registration of a mark with a federal authority
establishes a prima facie case of the complainant’s rights. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (“Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive.”); see
also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
Complainant
contends that the <mydisneyvacation.com> domain name is confusingly similar to
Complainant’s DISNEY mark because the domain name incorporates Complainant’s
mark in its entirety. The additions of
the common terms “my” and “vacation” to the mark do not negate the confusing
similarity between the domain name and the mark. See ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat.
Arb. Forum Sept. 5, 2000) (finding that the “domain name MYSPORTSCENTER.COM
registered by Respondent is confusingly similar to Complainant’s SportsCenter
mark”); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May
18, 2000) (finding the <westfieldshopping.com> domain name confusingly
similar because the WESTFIELD mark was the dominant element). Nor is the addition of the generic top-level
domain (“gTLD”) “.com” sufficient to distinguish the disputed domain name. See Nev. State Bank v. Modern Ltd.
– Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been
established that the addition of a generic top-level domain is irrelevant when
considering whether a domain name is identical or confusingly similar under the
Policy.”).
The Panel finds,
therefore, that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant
asserts that Respondent has appropriated Complainant’s mark to advertise
“relaxing residential rest stop for tourists.” Because these advertisements have links to Complainant’s Disney
World theme park as well as competitors’ theme parks and entertainment
offerings, the Panel deduces that Respondent is specifically targeting
Complainant’s customers. Appropriating
a party’s mark to target its customers with competing services is neither a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a
non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Nike, Inc. v. Dias, FA 135016
(Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods
or services where the respondent used the complainant’s mark without
authorization to attract Internet users to its website, which offered both the
complainant’s products and those of the complainant’s competitors); see also
Nat’l Collegiate Athletic Ass’n v.
Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to
sell the complainant’s goods without the complainant’s authority, as well as
others’ goods, is not bona fide use).
The Panel finds
that, although the WHOIS information for the disputed domain name identifies
Respondent as “My Disney Vacation,” Respondent is not commonly known by the <mydisneyvacation.com>
domain name. Therefore, Respondent has
not established rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(c)(ii). See
Yahoo! Inc. v. Dough, FA 245971 (Nat. Arb. Forum May 5, 2004) (finding that
although “the WHOIS information for the <yasexhoo.com> domain name states
that the registrant is YASEXHOO . . . this alone is insufficient to show that
Respondent is commonly known by the domain name.”); see also Qwest Commc’ns
Int’l, Inc. v. Qwest Networking, FA 238004 (Nat. Arb. Forum Apr. 8, 2004)
(“The Panel determines that, because of the fame of Complainant’s mark,
Respondent does not have rights or legitimate interests in the
<qwestcommunications.net> domain name, despite the presence of the word
‘qwest’ in the domain name registration WHOIS information.”).
The Panel finds,
therefore, that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is
appropriating Complainant’s mark to market competing services to Complainant’s
customers. The Panel infers that
Respondent receives revenues through its referrals. The Panel finds that this appropriation of Complainant’s mark for
commercial benefit is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶
4(b)(iii) [and] (iv).”); see also EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb.
Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users
through to the respondent’s competing business).
Respondent is
also appropriating Complainant’s mark to market services for Complainant’s
competitors. Appropriating
Complainant’s mark to refer Complainant’s customers to its competitors is
evidence of bad faith pursuant to Policy ¶ 4(c)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat.
Arb. Forum June 23, 2003) (finding that the respondent’s use of the
<saflock.com> domain name to offer goods competing with the complainant’s
illustrates the respondent’s bad faith registration and use of the domain name,
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14,
2001) (finding bad faith where the respondent used the domain name, for
commercial gain, to intentionally attract users to a direct competitor of the
complainant).
The Panel finds,
therefore, 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 <mydisneyvacation.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
October 18, 2005
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