Disney Enterprises, Inc. v. Paul Kudrna c/o The Finest Group
Claim Number: FA0604000686103
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, USA. Respondent is Paul Kudrna c/o The Finest Group (“Respondent”), PO Box 506, Spring Grove, IL 60081.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <finestdisneyhomes.com>, registered with Bulkregister, Llc.
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.
Calvin A. Hamilton as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 21, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 24, 2006.
On April 24, 2006, Bulkregister, Llc. confirmed by e-mail to the National Arbitration Forum that the <finestdisneyhomes.com> domain name is registered with Bulkregister, Llc. and that the Respondent is the current registrant of the name. Bulkregister, Llc. has verified that Respondent is bound by the Bulkregister, Llc. 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 April 26, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 16, 2006 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.
A timely Response was received and determined to be complete on May 16, 2006.
No Additional Submissions were received.
On May 19, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Calvin A. Hamilton as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant makes the following assertions:
1. The domain name registered by Respondent, <finestdisneyhomes.com>, is confusingly similar to Complainant’s DISNEY trademark and other DISNEY-formative marks.
2. Respondent has no legitimate rights or interests in the <finestdisneyhomes.com> domain name.
3. Respondent registered and uses the <finestdisneyhomes.com> domain name in bad faith.
1. The domain name does contain the word DISNEY but it refers to the area where the homes to be rented are located.
2. Respondent carries on legitimate business aimed at marketing the short term rental of his vacation home which is located very close to Disney World.
3. Respondent uses the domain name in good faith without any intent to mislead or of wrongdoing.
4. Respondent agrees to transfer domain name to Complainant on condition that transfer takes places after October 30, 2006.
1) Complainant is an entertainment company and owner of the DISNEY trademark and other DISNEY-formative marks. Complainant maintains a presence on the Internet by use of domain names containing the trademark, DISNEY, either alone or in combination with other words.
2) Complainant registered the trademark DISNEY with the United States Patent and Trademark Office on July 28, 1981; the service mark DISNEY ONLINE on October 13, 1998; the service mark DISNEY.COM on May 12, 1998; and the trademark, service mark DISNEYLAND on April 13, 1976.
3) Complainant uses the trademarks in connection with the operation of the Walt Disney World resort near Orlando, Florida.
4) Respondent is an individual with a holiday home near the Walt Disney World resort and has come to be in the business of acting as a rental agent through a web site for about 20 homeowners who desire to rent their homes.
5) Respondent uses the trade names “The Finest Group” and “Magic Vacation Villas,” and registered the domain name <finestdisneyhomes.com> on July 24, 2002.
6) Respondent is not an authorized licensee of any of Complainant’s trademarks or other intellectual property.
7) The domain name <finestdisneyhomes.com> is confusingly similar to Complainant’s trademark, DISNEY, and its service marks.
8) Respondent has no rights to or legitimate interests in the domain name.
9) Respondent registered and used the domain name <finestdisneyhomes.com> in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 the responsibility of proving that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. See Policy ¶ 4(a)(i).
Complainant’s registration of the trademark DISNEY with the United States Patent and Trademark office prior to Respondent’s registration of the domain name is sufficient to prove that Complainant has rights in the trademark for the purposes of this section. See Janus Int'l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption.); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the USPTO creates a presumption of rights in a mark).
Respondent has failed to challenge Complainant's assertions over its rights in the DISNEY trademark or other DISNEY-formative marks.
The domain name <finestdisneyhomes.com> fully incorporates Complainant's mark adding the generic term “homes,” the descriptive term “finest” and the generic top-level domain name “.com.” These minor alterations to Complainant's registered mark are insufficient to differentiate Respondent's domain names pursuant to Policy 4(a)(i). 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 Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names <caterpillarparts.com> and <caterpillarspares.com> were confusingly similar to the registered trademarks CATERPILLAR and CATERPILLER DESIGN because “the idea suggested by the disputed domain names and the trademarks was that the goods and services offered in association with the domain name are manufactured by or sold by the Complainant or one of the Complainant’s approved distributors. The disputed trademarks contain one distinct component, the word Caterpillar”).
As noted above, under the UDRP Rules, the Panel is obliged to decide a complaint on the basis of written filings and exhibits prepared and filed by the parties. It was stated in the Complaint that a variety of services are offered including the provision of accommodations to visitors to the resort. Respondent stated in the Response that the properties listed on their site are not hotel rooms like Complainant offers but single family homes, townhomes or condos and that Respondent was under the belief that since Disney does not rent homes that their activity did not compete with Complainant.
It has been considered sufficient to buttress the finding of confusing similarity with the fact that both Complainant and Respondent conduct business in the same business sector. See Wilshire Homes, Ltd. and The Fortress Group, Inc. v. Nawel Seth d/b/a Domsellers.com, FA 99088 (Nat. Arb. Forum Oct. 9, 2001) (where both parties conducted business in the real estate and/or home development field); see also TM Acquisition Corp. v. Internet and Mail Order Marketing, FA 169053 (Nat. Arb. Forum Aug. 21, 2003) (where it was considered that the generic terms Respondent had added to Complainant’s mark which were directly related to Complainant’s real estate services exacerbated the confusing similarity between the <century21homesforsale.com> domain name and the CENTURY 21 mark).
On the other hand, it must be borne in mind that a registered trademark may be used by a person to form part of a domain name, together with other short terms that indicate what his business is. Indeed the Panel in Bighorn Properties, Inc. and Bighorn Development, L.L.C. v. Doug McKendry, FA 275818 (Nat. Arb. Forum July 22, 2004) is of the opinion that “The whole point of domain names is to give the public a quick way to locate various websites and some geographical aspect of a business or domain name is appropriate.” See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002) (“Similarity of marks or lack thereof are context-specific concepts. In the Internet context, consumers are aware that domain names for different websites are quite often similar, because of the need for language economy, and that very small differences matter.”); see also Kittinger Co. v. Kittinger Collector, AF-0107 (eResolution May 8, 2000) (finding that <kittingercollector.com> is not identical or confusingly similar to a trademark of Complainant because the use of Complainant's trademark in this domain is purely nominative, the domain name as a whole is descriptive of Respondent's business, and the domain name is unlikely to cause confusion with Complainant's business). The aforementioned panelist concluded that “It is important that trademark law and the UDRP not be interpreted so as to limit the use of descriptive or generic terms, since to do so limits their value to the public and to the many businesses that use the Internet for advertising and sales.”
Complainant has shown that it owns the trademark DISNEY and other marks although none of the exhibits refer to accommodation services. It is the Respondent who alleges that they are engaged in different activities, although no evidence is offered to support these allegations. Thus it has not been established whether the parties are engaged or not in a similar business and since this fact has not been established the Panel is unable to determine whether this may be an acerbating or even a distinguishing feature.
Complainant has the responsibility of demonstrating a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Once Complainant meets that requirement, the burden of proof shifts to Respondent to show that it has rights or legitimate interests with respect to the disputed domain name.
Policy ¶ 4(c) sets forth the manner in which a Respondent may establish rights to and legitimate interests in a domain name. It provides that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate Respondent's rights or legitimate interests to the domain name for purposes of Policy ¶ 4(a)(ii):
(i) that before any notice to the Respondent of the dispute, the Respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) that the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Where Complainant rebuts each of these elements, it has satisfied its burden by providing prima facie evidence against any of the particular claims Respondent could make under Policy ¶ 4(c)(i)-(iii), thereby shifting the burden to Respondent. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is "uniquely within the knowledge and control of the respondent"); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once the complainant asserts that the respondent has no rights or legitimate interests in respect of the domain, the burden shifts to the respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name in which it was stated “this information is uniquely within the knowledge and control of the respondent. Failure of a respondent to come forward with such evidence is tantamount to admitting the truth of complainant’s assertions in this regard.”).
Respondent does not attempt to establish that he is making a non-commercial use of the domain name or that he is commonly known as “Finest Disney Homes” and thus the circumstances of Policy ¶ 4(c)(ii) and (iii) do not apply.
It remains to be seen whether, under Policy ¶ 4(c)(i), the Respondent used the domain name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute.
Respondent contends that the domain name was purchased to help market the short term rental of a private vacation home located about 10 minutes from the gates of Walt Disney Resort and there are now about 20 listed properties on the site. Furthermore Respondent contends that the use of the word DISNEY in the domain name was not for the purpose of misleading people but rather to describe the area where the homes are located. Respondent adds that there is a disclaimer on every page of the site that “finestdisneyhomes.com is not affiliated with the Walt Disney Company.” In fact, the disputed domain name resolves to the domain <www.magicvacationvillas.com> entitled “Magic Vacation Villas - Orlando Vacation Homes minutes from the Magic of Disney.” There is a discreet disclaimer at the bottom of the page, which states “Magic Vacation Villas is not affilliated with the Walt Disney Company.”
The rental of vacation homes is a bona fide offering of goods or services. However, Complainant contends that Respondents trades off Complainant’s goodwill and fame and relies on Madonna Ciccione p/k/a Madonna v. Dan Parisi and “Madonna.com,” D20000-0847 (WIPO Oct. 12, 2000), which states, “use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods and services.” Indeed Respondent is knowingly using Complainant’s trademark as part of the domain name to attract Internet users to his site although Respondent manifests that this is done using the trademark as a destination rather than as a well-known mark. Respondent has however failed to demonstrate that the word DISNEY is descriptive of the geographic area around the resort or is considered a destination in itself. As discussed above under the heading of Policy ¶ 4(a)(i), in some cases, the inclusion of generic or descriptive terms in a domain name may be sufficient to distinguish the domain name from the trademark that the domain name incorporates. Unfortunately, here Respondent has not met his burden of proof and thus Complainant prevails under Policy ¶ 4(a)(ii).
Policy ¶ 4(a)(iii) requires Complainant to prove that the domain name has been registered and is being used in bad faith. Policy ¶ 4(b) sets out a non-exhaustive list of factors that may, if present, lead to a conclusion of bad faith.
Complainant advances firstly that Respondent must have had actual knowledge of the mark prior to registration because of its fame, and thus there is bad faith for falsely representing in the contract with the Registrar that its registration did not infringe upon the rights of any third party. Complainant cites Google, Inc. v. wwwgoogle.com and Jimmy Stavesh Behain, D2000-1240 (WIPO Nov. 9, 2000), a citation which was rejected in the decision Disney Enterprises, Inc. v. Janice McSherry d/b/a Florida Vacation Homes, FA 154589 (Nat. Arb. Forum June 17, 2003) for the reasons that the case was decided in default and was a case in which the defaulting Respondent registered the exact name in which Complainant held a trademark. Complainant cites a further two decisions on bad faith registration and use, again those decisions concerned domain names which were all but identical to the complainant’s mark and for which reason the facts of this case are not similar enough to those in the cited decisions to warrant using those decisions as precedent in this case. As stated above, a mark may be incorporated within a domain name without actually infringing the rights of the holder of that mark. The Panel finds that Complainant has not proved its case on this point.
Complainant also contends that Respondent’s registration and use of the domain name meets the elements set forth in Policy ¶ 4(b)(iv) because by using the domain name, Respondent is intentionally attempting to attract, for commercial gain, Internet users to his 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 does not sufficiently address these allegations. Respondent merely states that he “looked at Disney as a destination not fully realizing that [he] was doing something wrong or trying to mislead. In fact, we have always clearly marked on every page of our site [a disclaimer].” As stated above, the disclaimer is discreet, at the bottom of the page and the font used is no bigger than on the rest of the page. Unfortunately, for the very reason that Respondent has not established that DISNEY may be understood to be a destination or a geographic area rather than a trademark, this Panel must reluctantly find that Complainant has established that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to his web site 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 of a product or service on Respondent’ web site.
However, Policy ¶ 4(a)(iii) requires that the domain name has been registered and is being used in bad faith. It is a double requirement. In this case, Complainant has not met the burden of proof as regards bad faith registration in the section concerning bad faith of the Complaint.
Nevertheless, Complainant has alleged and Respondent has not sufficiently demonstrated the contrary, that Respondent’s activity competes with Complainant’s accommodation services. It is therefore necessary for this Panel to conclude that Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor (Policy ¶ 4(b)(iii)).
For this reason and this reason alone, the Panel finds that Complainant prevails under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Complainant, as prevailing party in this dispute, is entitled to immediate relief and accordingly, it is Ordered that the <finestdisneyhomes.com> domain name be TRANSFERRED from Respondent to Complainant.
Calvin A. Hamilton,
Dated: June 2, 2006
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