Disney Enterprises, Inc. v. Chao Hu
Claim Number: FA1809001805316
Complainant is Disney Enterprises, Inc. ("Complainant"), represented by Annie S. Wang of Wang Law Corporation, California, USA. Respondent is Chao Hu ("Respondent"), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shops-disney.com>, registered with Zhengzhou Zitian Network Technology Co., Ltd.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 10, 2018; the Forum received payment on September 10, 2018. The Complaint was submitted in both Chinese and English.
On September 11, 2018, Zhengzhou Zitian Network Technology Co., Ltd confirmed by email to the Forum that the <shops-disney.com> domain name is registered with Zhengzhou Zitian Network Technology Co., Ltd and that Respondent is the current registrant of the name. Zhengzhou Zitian Network Technology Co., Ltd has verified that Respondent is bound by the Zhengzhou Zitian Network Technology Co., Ltd 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 September 12, 2018, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of October 2, 2018 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@shops-disney.com. Also on September 12, 2018, the Chinese language Written Notice of the Complaint, notifying Respondent of the email 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 3, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a worldwide producer of children's entertainment goods and services. Complainant owns and uses various trademarks in connection with this business, including DISNEY, which is the subject of longstanding trademark registrations in the United States, France, China, and other jurisdictions, and which Complainant asserts has become famous.
Respondent registered the disputed domain name in June 2017. The domain name is being used for a French-language website that displays Complainant's marks in the distinctive stylized form used by Complainant and otherwise imitates the appearance of Complainant's ecommerce store ShopDisney.com. The website offers, or purports to offer, what appear to be Complainant's products for sale. Complainant asserts that the site is being used to deceive Internet users into providing credit card account information and other personal data. Complainant states that it has not authorized Respondent's use of its marks and that Respondent is not commonly known by the domain name.
Complainant contends on the above grounds that the disputed domain name <shops-disney.com> is confusingly similar to its DISNEY mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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.
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(f), 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 Management, Inc. v. webnet-marketing, inc., FA 95095 (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.").
The Panel notes that the Registration Agreement is written in Chinese, thereby making that the language of the proceeding. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceeding may be conducted in English. See, e.g., Disney Enterprises, Inc. v. Liang Tang/Zhi Ming Tang, FA 1797074 (Forum Aug. 20, 2018).
The disputed domain name <shops-disney.com> incorporates Complainant's registered DISNEY trademark, with the addition of the generic term "shops," a hyphen, and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Disney Enterprises, Inc. v. Liang Tang/Zhi Ming Tang, supra (finding <shopdisneyes.com> confusingly similar to DISNEY); Disney Enterprises, Inc. v. Milen Radumilo, FA 1769992 (Forum Mar. 12, 2018) (finding <movies‑disney.com> confusingly similar to DISNEY); Disney Enterprises, Inc. v. P.O.P. Plastics, Inc., FA 320150 (Forum Oct. 18, 2004) (finding <disneyshop.com> confusingly similar to DISNEY). Accordingly, the Panel considers the disputed domain name to be confusingly similar to Complainant's registered mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it apparently is being used to promote the sale of infringing and possibly counterfeit merchandise, or to deceive Internet users into disclosing personal and financial information to Respondent, or both. Neither of these uses would likely give rise to rights or legitimate interests. See, e.g., Disney Enterprises, Inc. v. Liang Tang/Zhi Ming Tang, supra (finding lack of rights or interests under similar circumstances).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] 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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name incorporating Complainant's famous mark and is using it to promote the sale of infringing and possibly counterfeit merchandise, to deceive Internet users into disclosing personal and financial information, or both. Such conduct is indicative of bad faith registration and use under both of the cited provisions of the Policy. See, e.g., Disney Enterprises, Inc. v. Liang Tang/Zhi Ming Tang, supra (finding bad faith registration and use under similar circumstances). The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shops-disney.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: October 4, 2018
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