Disney Enterprises, Inc. v. Dot Stop
Claim Number: FA0302000145227
Complainant is Disney Enterprises, Inc., Burbank, CA (“Complainant”) represented by J. Andrew Coombs, of J. Andrew Coombs, A Professional Corporation. Respondent is Dot Stop, Mahopac, NY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <disneycard.com> and <disneymovie.com>, registered with Bulkregister.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 10, 2003; the Forum received a hard copy of the Complaint on February 10, 2003.
On February 10, 2003, Bulkregister.Com, Inc. confirmed by e-mail to the Forum that the domain names <disneycard.com> and <disneymovie.com> are registered with Bulkregister.Com, Inc. and that Respondent is the current registrant of the names. Bulkregister.Com, Inc. has verified that Respondent is bound by the Bulkregister.Com, Inc. 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 February 13, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 5, 2003 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 email@example.com and firstname.lastname@example.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On March 11, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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.
A. Complainant makes the following assertions:
1. Respondent’s <disneycard.com> and <disneymovie.com> domain names are confusingly similar to Complainant’s DISNEY mark.
2. Respondent does not have any rights or legitimate interests in the <disneycard.com> or <disneymovie.com> domain names.
3. Respondent registered and used the <disneycard.com> and <disneymovie.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its DISNEY mark, including Reg. No. 1,162,727 (registered July 28, 1981) related to children’s storybooks and a newspaper. Complainant also holds a trademark for DISNEY.COM in relation to providing a wide variety of information in the fields of entertainment, education, news, weather, sports, recreation and games via multi-user global computer information networks.
Respondent registered the <disneycard.com> domain name on April 18, 2001. Respondent is using the disputed domain name to divert Internet traffic to a commercial search engine, <dotstop.com>, which links to various sites that offer free Disney movies, breast enhancement and online gambling. Respondent registered the <disneymovie.com> domain name on April 15, 2001. Respondent is using this disputed domain name to redirect Internet users to a website that provides links to Complainant’s “Disney Movie Club” website and Respondent’s <dotstop.com> website.
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.
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 has established that it has rights in the DISNEY mark through a number of trademark registrations with the USPTO.
Respondent’s <disneycard.com> and <disneymovie.com> domain names are confusingly similar to Complainant’s famous DISNEY mark because the disputed domain names incorporate Complainant’s entire mark and simply add the generic terms “card” and “movie” to the end of Complainant’s mark. Panels have consistently held that the addition of a generic term to a famous mark does not sufficiently distinguish disputed domain names to survive a confusing similarity challenge. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
Thus, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has not filed a Response. Therefore, the Panel is permitted to make reasonable inferences in favor of Complainant and to accept the allegations in the Complaint as true. See 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”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).
Furthermore, the Panel may presume that Respondent lacks any rights or legitimate interests in the disputed domain names based on Respondent’s failure to respond. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance that could demonstrate any rights or legitimate interests in the domain name).
Respondent is using the <disneycard.com> and <disneymovie.com> domain names to divert Internet users to its commercial website. The use of a confusingly similar domain name to redirect Internet traffic for Respondent’s profit is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).
Respondent has not come forward with any evidence to establish that it is commonly known by DISNEYCARD, DISNEYMOVIE, <disneycard.com> or <disneymovie.com>. Moreover, Respondent would be hard pressed to establish that it is commonly known by the disputed domain names because of the fame of Complainant’s DISNEY mark. As a result, the Panel infers that Respondent has no rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark).
Thus, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <disneycard.com> and <disneymovie.com> domain names to divert Internet users to its commercial website. The Panel may infer that Respondent is making a profit from the Internet traffic that is diverted to Respondent’s website. Respondent is therefore using confusingly similar domain names to create Internet-user confusion for its own commercial benefit, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website).
Moreover, Respondent’s registration of two domain names that are confusingly similar to Complainant’s DISNEY mark establishes a pattern of registering domain names to prevent Complainant from reflecting its mark in a corresponding domain name, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See YAHOO! Inc. v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two domain names incorporating Complainant's YAHOO! mark); see also Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct).
Thus, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <disneycard.com> and <disneymovie.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 17, 2003
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