Disney Canada, Inc. (formerly Club Penguin Entertainment Inc.) v. Nikola Petkovic
Claim Number: FA1709001751333
Complainant is Disney Canada, Inc. (formerly Club Penguin Entertainment Inc.) (“Complainant”), represented by J. Andrew Coombs of WANG LAW CORPORATION, California. Respondent is Nikola Petkovic (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clubpenguinrewritten.pw>, registered with NameCheap, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Jonathan Agmon as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 28, 2017; the Forum received payment on September 28, 2017.
On Sep 29, 2017, NameCheap, Inc. confirmed by e-mail to the Forum that the <clubpenguinrewritten.pw> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 October 10, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 2017 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 email@example.com. Also on October 10, 2017, 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 October 30, 2017.
A timely additional submission was received and determined to be complete on November 3, 2017.
On November 1, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jonathan Agmon as Panelist.
On November 13, 2017 a Procedural Order was issued requesting additional information from Respondent and allowing Complainant and Registrar to provide additional submissions.
On November 14, 2017 an e-mail response was received from both Respondent and the Registrar. Complainant did not file additional submissions.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant, Disney Canada, Inc., is the entity formerly known as Club Penguin Entertainment Inc. and Disney Online Studios Canada, Inc. and is a subsidiary of The Walt Disney Company. Complainant owns and operates an online portal for kids widely known as CLUB PENGUIN, which has been recently relaunched as a mobile phone application “Club Penguin Island.” Complainant has rights in the CLUB PENGUIN mark based upon registration with the United States Patent and Trademark Office (“USPTO”) as well as other trademark offices throughout the world (e.g. Reg. No. 4,150,662, registered May 29, 2012 and Reg. No. 5,114,772 in class 41, registered on January 3, 2017). See Compl. Ex. F.
Complainant argues that Respondent’s <clubpenguinrewritten.pw> is confusingly similar to Complainant’s mark, as it contains the mark in its entirety—less the space—and adds the generic term “rewritten” and the “.pw” country code top-level domain (“ccTLD”).
Complainant further argues that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the CLUB PENGUIN mark for any reason. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the domain name redirects Internet users to a website which features an unauthorized version of Complainant’s CLUB PENGUIN online game. See Compl. Ex. K.
Complainant argues that Respondent’s registration and use of the disputed domain name has been in bad faith. The registration is part of a pattern of bad faith registration of domain names infringing on trademarks owned by Complainant. Additionally, Respondent is using the domain name to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s marks. Furthermore, Respondent is using the domain name and resolving website to host infringing and pirated content of Complainant. Respondent also provided false information in registering the domain name.
Finally, Complainant argues that it is clear that Respondent had constructive and actual knowledge of Complainant and its rights in the CLUB PENGUIN mark at the time it registered and subsequently used the disputed domain name.
Respondent, Nikola Petkovic, claims it is a group of teenagers under 18 years of age who have decided to recreate the CLUB PENGUIN game, which Disney Interactive has closed. Respondent claims that it does not gain commercially from such work, and is using the domain name and resolving website for an educational fair use.
Respondent is not the owner of <onceuponatime.pw> or <clubpenguin.pw> as claimed by Complainant, nor is Respondent affiliated with the <ebay.com> or <twitter.com> accounts attached to the Complaint.
Complainant ceased the website referenced by the disputed domain name on 29 March 2017 and replaced it with a mobile application called “Club Penguin island”
C. Additional Submissions of Complainant
Complainant argues that Respondent confirmed in his response that he has actual knowledge of Complainant’s CLUB PENGUIN mark.
Complainant argues that Respondent showed bad faith since he had previously tried to use Complainant CLUB PENGUINE trademark. (see Disney Canada, Inc. (formerly Club Penguin Entertainment Inc.) and Disney Enterprises, Inc. v. Nikola Petkovic, FA1605001676278 (Forum Jun. 14, 2016).
Complainant argues that Respondent’s argument that use of the disputed domain is fair use for educational purposes is not applicable in domain name disputes. (see Disney Canada, Inc. (formerly Club Penguin Entertainment Inc.) and Disney Enterprises, Inc. v. Nikola Petkovic, FA1605001676278 (Forum Jun. 14, 2016).
Complainant further argues that Respondent’s bad faith is evidenced by his moving of the website to which the disputed domain name directs after receipt of the Complaint.
Respondent did not file additional submissions.
Respondent contends that he is under 18 years of age. Specifically, on October 30, 2017, the Forum received email communication from Respondent stating that the disputed domain name is in ownership of teenagers under 18 years of age. A few issues arise from Respondent’s declared age.
According to Policy ¶ 4(j), “[a]ll decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.” In Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Forum Dec. 30, 2004) and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Forum May 19, 2005), the panels omitted Respondents’ personal information from the decisions, pursuant to Policy ¶ 4(j), in an attempt to protect Respondents who claimed to be victims of identity theft from becoming aligned with acts the actual registrants appeared to have sought to impute to Respondents.
However, according to Forum Supplemental Rule 15(b), “All requests pursuant to Policy paragraph 4(j) and Rule 16(b) to have a portion of the decision redacted, must be made in the Complaint, the Response, or an Additional Submission that is submitted before the Panel’s decision is published.” (emphasis added). In this case, neither Claimant nor Respondent have explicitly requested such redaction. Therefore, the Panel will not redact Respondent’s name.
Respondent’s stated that the disputed domain name is in the ownership of “teenagers under the age of 18”. If Respondent represents a group or a single individual, the fact of the matter is that Respondent has declared that he an underage minor. We therefore must first consider how Respondent’s age affects this case, if at all. Since the Registrar is located in California, the Registration agreement is subject to California law. The Panel research led it to believe that under California law an underage minor cannot make a contract relating to any personal property not in the immediate possession or control of the minor. California Family Code §6700-6701. This, the Panel believes, will include a domain name Respondent registered.
On November 13, 2017, the Panel has therefore issued a Procedural Order instructing Respondent, if he/they are indeed under 18, to provide his/their parent(s) with the case file and for them (or their counsel) to provide proof of his/their age, his/their real name (the current name seems to be fake because Nikola Petkovic is a famous football player) and address(s); and how he/they came to become the registrant(s) of this domain name, even though they are underage minors.
The Panel also invited the Registrar, to provide any comment it may have as to the matter, in view of the fact that they allowed an underage minor to register a domain name.
On November 13, 2017, Respondent responded by email simply stating that the Panel should transfer the disputed domain name to Complainant since the issue was “too stressful.” Respondent failed to respond to the Procedural Order by clarifying its statement.
Complainant did not respond to the Procedural Order. The Registrar responded providing that it refuses registration of domain names to underage minors and will revoke a domain name registration if verification is provided that a registrant is an underage minor.
As no meaningful reply was received from Respondent to the Procedural Order, the Panel will proceed to provide a decision in the matter.
3. Standard of Proof
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."
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 claims rights in the CLUB PENGUIN and evidences these rights in registration of the mark with the USPTO (e.g. Reg. No. 4,150,662, registered May 29, 2012). See Compl. Ex. F. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish Complainant’s rights in the HOME DEPOT mark).
Furthermore, Complainant is the owner of international trademark registrations. Therefore, the Panel finds that Complainant has established its Policy ¶ 4(a)(i) rights in the CLUB PENGUIN mark. See Compl. Ex. G.
It is the Panel’s finding that the <clubpenguinrewritten.pw> domain name is confusingly similar to its CLUB PENGUIN mark, as the domain name contains the mark in its entirety—less the space—and merely adds the generic term “rewritten” and the ccTLD “.pw.” The addition of a generic term and a TLD to a mark in order to form a domain name does not distinguish the resultant domain name from the mark per Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). The addition of a ccTLD such as “.pw” likewise does not distinguish a the domain name. See Crocs, Inc. v. [Registrant], FA 1043196 (Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”); see also Bloomberg Finance L.P. v. Cesar R Shepard, FA 1742833 (Forum Sept. 5, 2017) (“Respondent’s <bloomberg.pw> domain name is identical to Complainant’s mark because it merely appends the top-level domain (TLD) “.pw” to the fully incorporated mark.”).
The Panel also took under consideration Complainant’s arguments in the Additional Submission, in which he indicates that that Respondent did not deny confusing similarity of between the disputed domain Complainant’s mark.
As a result, this Panel rules that the disputed domain name is confusingly similar to the mark under Policy ¶ 4(a)(i).
Complainant must next make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to Respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant filed evidence showing a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not and has not been commonly known by the Domain Name. In addition, Respondent is not authorized by Complainant to use Complainant’s CLUB PENGUIN mark nor the disputed domain name. "[I]n the absence of any license or permission from Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the Domain Name could be claimed by Respondent.” Guerlain S.A. v. Peikang, D2000-0055 (WIPO Mar. 21, 2000).
Complainant argues Respondent’s lack of rights or legitimate interests in the disputed domain name is evidenced by Respondent’s failure to use the name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Rather, the domain name directs to an unauthorized version of Complainant’s CLUB PENGUIN video game. See Compl. Ex. K. Use of a domain name to serve an unauthorized reproduction of a complainant’s product is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) and (iii). See Airbnb, Inc. v. Nima Rahnemoon, FA 1737766 (Forum July 25, 2017) (“It is clear from the evidence that Respondent has used the site attached to the Domain Name to promote illegal unauthorized use of Complainant’s systems… As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name.”); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found Respondent’s attempt to pass itself of as Complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when Respondent used the disputed domain name to present users with a website that was nearly identical to Complainant’s website).
Respondent did not deny Complainant has legitimate rights in the CLUB PENGUIN mark and acknowledged its purpose was to “re-create our childhood game”, seeking to generate legitimate rights through arguing protection under the Copyright Act Fair Use exemption for educational purposes. The Panel notes that the Copyright Act and its exemptions, including Fair Use, are not applicable in this proceeding and cannot serve as a viable defence to Respondent’s actions nor to generate legitimate rights, where none exist.
The Panel therefore rules that Respondent lacks rights and legitimate interests in the disputed domain name.
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
Complainant argues that Respondent has registered and used the disputed domain name as part of a pattern of bad faith registrations. A history of adverse UDRP findings against a respondent can be evidence of such a pattern. See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“Complainant has provided evidence that Respondent has a history of UDRP and USDRP decisions decided against it. This establishes bad faith within the meaning of Policy ¶ 4(b)(ii).”). Complainant contends Respondent has been ordered to transfer domain names in previous UDRP cases, including <clubpenguin.pw>. See Disney Canada, Inc. (formerly Club Penguin Entertainment Inc.) and Disney Enterprises, Inc. v. Nikola Petkovic, FA1605001676278 (Forum Jun. 14, 2016). The Panel therefore rules that Respondent’s history indicates its registration of the disputed domain name is part of a pattern of bad faith registration per Policy ¶ 4(b)(ii).
Complainant provided ample evidence to show that Respondent uses the disputed domain name domain name to attract Internet users by creating a likelihood of confusion with Complainant’s marks. Use of a domain name to pass off as a complainant and trade on the value of Complainant’s mark can be evidence of Policy ¶ 4(b)(iv) bad faith. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”). Complainant claims Respondent benefits commercially from the domain name by redirecting visitors to its site to an eBay offers page. See Compl. Ex. K (printouts of eBay offers to which Internet users are redirected after clicking the “Toys” link on the website resolving from the domain name). The Panel therefore finds Respondent gains commercially from infringing on Complainant’s mark and thus demonstrates Policy ¶ 4(b)(iv) bad faith.
Complainant also provided evidence showing Respondent’s hosting of infringing content of Complainant’s on the website resolving from the disputed domain name indicates its bad faith. Use of a domain name to host illegal content can be indicative of bad faith. See Google Inc. v. Domain Admin, FA 1502001605239 (Forum Mar. 22, 2015) (finding that use of a disputed domain name to aid illegal activities under Complainant’s trademark suggests Respondent’s bad faith); see also Disney Enterprises, Inc. v. Cano, FA 1443902 (Forum Jun. 10, 2012) (offering pirated copies of copyrighted works is evidence of bad faith). Complainant contends that the domain name directs to a page which hosts an unauthorized and/or pirated version of its copyrighted CLUB PENGUIN game. See Compl. Ex. K. The Panel finds Complainant’s evidence to be overwhelming showing Respondent has decided to provided significant amount of infringing materials on the website under the disputed domain name and under Complainant’s CLUB PENGUIN mark. This behavior by Respondent is clear evidence of bad faith under Policy ¶ 4(a)(iii).
Complainant asserts that, due to its extensive list of trademark registrations, Respondent must have had constructive knowledge of Complainant's rights in the CLUB PENGUIN mark when Respondent registered the disputed domain name. Complainant further argues that Respondent’s use of the domain name to infringe on Complainant’s intellectual property indicates Respondent had actual knowledge of Complainant’s rights. Also, as Complainant points out in the additional submission, Respondent’s response confirms its knowledge of Complainant’s CLUB PENGUINE. Respondent by its own submissions and actions has confirmed he was aware of Complainant CLUB PENGUIN mark and has determined to usurp Complainant’s rights, among others through the disputed domain name. Therefore, Respondent, as far as he was legally capable, has also infringed the Registration agreement. Entering into a domain name registration agreement with the knowledge that the registrant will infringe the rights of another is evidence of bad faith registration of the disputed domain name.
Finally, Respondent failed to provide his true name or age, despite a Procedural Order being issued by the Panel. It is incumbent upon the parties to these proceedings to provide truthful and accurate information, especially when the nature of the proceedings negate the possibility of one party testing the evidence presented by the other. Moreover, if Respondent was indeed an underage minor by registering the disputed domain name he has breached the general terms of service of the Registrar. See Universal Terms of Service, ¶2. The Panel finds that Respondent behavior is yet another indication of bad faith registration and use of the disputed domain name.
Accordingly, the Panel finds that Respondent had actual knowledge of Complainant’s marks and therefore registered and used the disputed domain name in in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under 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 <clubpenguinrewritten.pw> domain name be transferred from Respondent to Complainant.
Jonathan Agmon, Panelist
Dated: November 15, 2017
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