National Arbitration Forum




Disney Enterprises, Inc. v. Elmer Morales

Claim Number: FA0505000475191



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 Elmer Morales (“Respondent”), TBD, Los Angeles, CA 90047.



The domain names at issue are <>, <>, <> and <>, registered with Go Daddy Software, 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.


Barry Schreiber as Panelist.



Complainant submitted a Complaint to the National Arbitration Forum electronically on May 12, 2005; the National Arbitration Forum received a hard copy of the Complaint on May 13, 2005.


On May 13, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the domain names <>, <>, <> and <> are registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the names.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 May 13, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 2, 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,, and by e-mail.


An electronic copy of the Response was received on June 3, 2005.  The Response was received after the response deadline and no hard copy was received.  Therefore, the Response is not considered to be in compliance with ICANN Rule # 5(a).


On June 13, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Barry Schreiber as Panelist.



Complainant requests that the domain names be transferred from Respondent to Complainant.




A.     Complainant


Complainant Disney has been for many years the owner of hundreds of registrations for the DISNEY trademark and DISNEY-formative marks in countries all over the world. Since 1923, Complainant, or its predecessors in interest, has continuously used and applied the DISNEY mark and DISNEY-formative marks for a variety of entertainment-related goods and services.  See Exhibit F (printouts from United States Patent and Trademark Office evidencing DISNEY-formative trademarks).


            Complainant’s registration of the trademarks infringed before Respondent’s registration of the Domain Names is sufficient to prove that Complainant has rights in the trademark.  See Aetna Inc. v. Jacoby Partners FA125816 (NAF Nov. 22, 2002).  The primacy of Disney’s trademarks over infringing domain names has been asserted, recognized and enforced in other proceedings initiated pursuant to the UDRP.  See, for example, Disney Enters., Inc. v. Hodson, FA 158165 (Nat. Arb. Forum July 1, 2003) (“[A]ssociation of the name Disney [with the Complainant is] widely accepted in the mind of the general public.”); Disney Enters., Inc. v. Dot Stop, FA 145277 (Nat. Arb. Forum Mar. 17, 2003).




This Complaint is based on the following factual and legal grounds:


a.       Respondent’s Domain Names Fully Incorporate Complainant’s Famous, Long-Standing and Widely Registered Trademarks.


Complainant owns numerous trademark registrations, only a few of which are listed above and evidence of which are attached as exhibits for the word mark DISNEY.  Examples of domain name registrations evidencing use of these trademarks by Complainant are attached as Exhibit G.  This includes, and  The Domain Names fully incorporate the DISNEY trademark.


The test of confusing similarity under the UDRP is confined to a consideration of the disputed domain name and the trademark, without reference to other issues.  Microsoft Corp. v. WDW Inc., et. al., D2002-0412 (WIPO July 1, 2002).  The disputed Domain Names are confusingly similar to Complainant’s mark, as it incorporates the trademark in its entirety.  The addition of generic words (“direct” or “direct affiliates” for example) to a famous trademark demonstrates confusing similarity to a complainant’s mark.  Microsoft, supra (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); Yahoo! Inc. v. Seocho, FA 109050 (Nat. Arb. Forum May 13, 2002) (same).  Similarly, the change of one letter – Disney to Disnee - or the misspelling of one letter – direct to direkt – are also insufficient to refute likelihood of confusion.  These minor differences are not enough to distinguish the Domain Names from Complainant’s famous Trademark.  See, Disney Enters., Inc. v. Avalon Domains, FA 411746 (NAF Mar. 24, 2005) and cases collected there.


b.      Respondent Has No Legitimate Interest in the Domain Names.


Several distinct grounds support the conclusion that the Respondent has no legitimate interest in the Domain Names.  First, Respondent is not authorized by Complainant to use the Domain Names.  "[I]n the absence of any license or permission from the 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).


Second, Respondent registered and uses the Domain Names to infringe Complainant’s rights in its mark, to trade off Complainant’s goodwill.  In particular, Respondent maintains a directory of commercial links unrelated to Complainant (although some may be related by subject matter).  Respondent profits from the redirection of traffic otherwise intended for Complainant by redirection to websites which appear to provide compensation for the traffic so provided.  Societe Air France v., D2003-0518 (WIPO Aug. 22, 2003) (Respondent uses the domain name to divert users to various commercial websites from which it can be inferred that Respondent makes a profit from such diversion). 


Thus, Respondent’s use of the Domain Names does not and cannot constitute a bona fide offering of goods or services.  Ciccione v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“[U]se which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods and services”); Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Mar. 6, 2001)( “[B]ona fide use does not exist when the intended use is a deliberate infringement of another’s rights.”).  Complainant has not authorized Respondent to use its trademark or to seek the registration of any domain name incorporating the mark.  Respondent must have known when he selected the disputed Domain Names that the public would incorrectly associate it with Complainant and Complainant’s marks.  In fact, given the distinctiveness and fame of the mark, there is no plausible explanation for the Respondents’ registration of the Domain Names other than to trade upon the goodwill the Complainant has developed in its mark.  Respondent had no legitimate interest in doing so.  Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000).


Respondent is not and has not been commonly known by the disputed Domain Names.  Respondent does not use the trademarks to identify itself on its website or for any other legitimate purpose.  Even if Respondent has used the trade name, such an unauthorized use does not establish legitimate interests in the Domain Names.  Compaq Info. Techs. Group, LP v. Waterlooplein Ltd., FA0204000109718 (NAF May 29, 2002).


c.       Respondent Registered and Uses the Domain Names in Bad Faith.


Respondent’s registration and use of the Domain Names separately meets the bad faith elements set forth in Section 4(b)(iv) of the UDRP because Respondent is intentionally using the Domain Names to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website, or of a product or service offered through the website.


In particular, Respondent “parks” his domain and lists links to related and unrelated sites from which he can be presumed to derive a commercial reward.  Societe Air France v., infra (Respondent uses the domain name to divert users to various commercial websites from which it can be inferred that Respondent makes a profit from such diversion).  By using the disputed Domain Names to direct Internet traffic to websites other than those owned by Complainant, Respondent is trading on the value of the mark established by Complainant.


Due to the similarity of the Domain Names with the trademark, along with its long-established and widespread use and registration, Respondent clearly knew of Complainant’s mark prior to registering the Domain Names.  Choice Hotels Int’l, Inc. v. Dinoia, infra (Respondent’s knowledge of Complainant’s trademark can be inferred from reading the website on which references to Complainant’s trademarks appear); FNAC v., D2004-0413 (WIPO July 26, 2004) (bad faith established by knowledge of Complainant’s trademark which can be inferred from fame of the trademark).


By registering the Domain Names with actual knowledge of Complainant’s mark, Respondent acted in bad faith by breaching his registration contract with the registrar because he falsely represented that his registration of the Domain Names did not infringe the legal rights of any third party.  Thus, the registration constituted bad faith under the UDRP.  See Google Inc. v., D2000-1240 (WIPO Nov. 9, 2000). 


Respondent separately meets the bad faith requirement of Section 4(a)(iii) because the Respondent’s registration of multiple domains, many with minor typographical errors constitutes typosquatting.  Typosquatting, standing alone, is evidence of bad faith.  See Disney Enters., Inc. v. Avalon Domains, infra (holding that typosquatting is “inherently parasitic and of itself evidence of bad faith”); National Ass’n of Professional Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003).



B. Respondent


An electronic copy of the Response was received on June 3, 2005.  The Response was received after the response deadline and no hard copy was received.  Therefore, the Response is not considered to be in compliance with ICANN Rule # 5(a).


Nevertheless, for purposes of this decision, the Panelist has decided to include Respondent’s conceding response as part of the record and has taken such response into consideration in the Panelist’s findings and decision.


“Respondent is not using the domain names in question and is willing to either cancel or transfer the domain name registrations to the Complainant. Since this is the remedy the Complainant is pursuing, there is no need for a review and decision by a member of the Administrative Panel.

Either the National Arbitration Forum or the Complainant should inform the Respondent whether the Complainant would like the domain name registrations transferred or canceled. Clear instructions should be provided on how to proceed with this matter.”




The Panel has decided to accept the Response in making its decision, and notes that Respondent has chosen not to challenge any of Complainant’s assertions but, rather, to agree to transfer the disputed domain names to Complainant in satisfaction of Complainant’s requested remedy. Therefore, under such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.  See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where Respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant.  Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”).



Having established and determined that the requests of the parties in this case are identical, in that the Respondent does not contest Complainants’ remedy, the Panel concludes that relief shall be GRANTED..


Accordingly, it is Ordered that the <>, <>, <> and <> domain names be TRANSFERRED from Respondent to Complainant.





Barry Schreiber, Panelist
Dated: June 24, 2005







Click Here to return to the main Domain Decisions Page.


Click Here to return to our Home Page


National Arbitration Forum