Disney Enterprises, Inc. v. Nicolas Noel
Claim Number: FA0309000198805
Complainant is Disney Enterprises, Inc., Burbank, CA, USA (“Complainant”) represented by J. Andrew Coombs, of J. Andrew Coombs, A Professional Corporation, 450 North Brand Boulevard, Suite 600, Glendale, CA 92103-2349. Respondent is Nicolas Noel, 18 Impasse Estaunie, Toulouse, France (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <euro-disney.com>, registered with Enom, 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.
Sandra Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 29, 2003; the Forum received a hard copy of the Complaint on October 2, 2003.
On October 6, 2003, Enom, Inc. confirmed to the Forum that the domain name <euro-disney.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 October 7, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 27, 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 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 November 4, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <euro-disney.com> domain name is identical to Complainant’s EURO DISNEY mark.
2. Respondent does not have any rights or legitimate interests in the <euro-disney.com> domain name.
3. Respondent registered and used the <euro-disney.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is an entertainment company and owner of the famous DISNEY trademark (Reg. No. 1,162,727) and DISNEY-formative marks. The DISNEY mark is, “widely accepted in the mind of the general public . . . and has acquired . . . a secondary meaning and distinctiveness.” Walt Disney World Co. v. Disney Area Acreage, Inc., 316 F. Supp. 285, 286-87 (S.D. Fla. 1970); see also Disney Enters., Inc. v. Zuccarini, D2001-0489 (WIPO June 19, 2001) (DISNEY mark is “highly distinctive and unquestionably famous”).
Complainant registered the EURO DISNEY mark in France in 1991 (Reg. No. 1,637,628), the jurisdiction in which Respondent is located, and has since continued to use the mark in commerce. Complainant registered the domain name <eurodisney.com> in 2002. Complainant has not authorized any use of its marks by Respondent.
Respondent registered the disputed domain name, <euro-disney.com>, on September 2, 2003. Respondent uses the domain name to redirect Internet users to <futurosope.com>, a website relating to a theme park operating in competition with Complainant. The website contains no information referring to <euro-disney.com>. The WHOIS documentation of <euro-disney.com> does not contain any information that would imply a relationship between Respondent and the disputed domain name.
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 rights in the EURO DISNEY mark through its registration in France and continuous use in commerce since at least 1991.
The difference between the disputed domain name, <euro-disney.com>, and the EURO DISNEY mark is that the former contains a hyphen separating “euro” from “disney”. The disputed domain name contains Complainant’s mark in its entirety. If the only difference between a mark and a domain name is a hyphen, then the domain name is considered sufficiently identical to the mark. See France Telecom SA v. France Telecom Users Group, D2002-0144 (WIPO April 22, 2002) finding that Complainant’s "FRANCE TELECOM" mark was identical to the domain name <france-telecom.com> because the addition of a hyphen did not change the identical nature; see also InfoSpace.com v. Tenenbaum Ofer, D2000-0075 (WIPO Apr. 27, 2000) (“the domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen is not a distinguishing feature”); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) finding that putting a hyphen between words of Complainant’s mark is identical to and confusingly similar to Complainant’s mark.
Therefore, Complainant has satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights or legitimate interests in <euro-disney.com>. Respondent has failed to respond. Therefore, this Panel may reasonably infer that Respondent lacks rights or legitimate interests in <euro-disney.com>. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint; see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) drawing two inferences based on Respondent’s failure to respond: (1) Respondent does not deny the facts asserted by Complainant, and (2) Respondent does not deny conclusions which Complainant asserts can be drawn from the facts.
Respondent has provided no evidence that <euro-disney.com> is used in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name as stated in Policy ¶ 4(c)(iii). Respondent uses the domain name to redirect Internet users to a competitor of Complainant. Redirecting users to a competitor of a mark’s owner is not a right or legitimate interest. See Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website; see also Winmark Corp. d/b/a Play It Again Sports v. In The Zone a/k/a Giant Sports Factory, FA 128652 (Nat. Arb. Forum Dec. 6, 2002) finding that Respondent had no rights or legitimate interests in a domain name that used Complainant’s mark to redirect Internet users to a competitor’s website.
There is no evidence that Respondent has ever been commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). Respondent’s website does not contain any relevant information relating to the domain name. Additionally, the WHOIS registration information fails to imply that Respondent is commonly known by the name. 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 Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) finding that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply.
Therefore, Complainant has satisfied Policy ¶ 4(a)(ii).
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) & (iv). See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion; see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business.
Therefore, 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 <euro-disney.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: November 11, 2003
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