Disney Enterprises, Inc. v. hide
Claim Number: FA2205001996936
Complainant is Disney Enterprises, Inc. (“Complainant”), represented by Annie S. Wang of Wang Law Corporation, California, USA. Respondent is hide (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <disney-star.com>, which is registered with Japan Registry Services Co., Ltd.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 19, 2022; the Forum received payment on May 18, 2022. The Complaint was received in both English and Japanese.
On May 23, 2022, Japan Registry Services Co., Ltd. confirmed by e-mail to the Forum that the <disney-star.com> domain name is registered with Japan Registry Services Co., Ltd. and that Respondent is the current registrant of the name. Japan Registry Services Co., Ltd. has verified that Respondent is bound by the Japan Registry Services 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 May 31, 2022, the Forum served the Japanese language Complaint and all Annexes, including a Japanese and English language Written Notice of the Complaint, setting a deadline of June 21, 2022, 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 the attention of postmaster@disney-star.com. Also on May 31, 2022, the Japanese and English language 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 5, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Preliminary Issue: Language Of The Proceeding
In the ordinary course, UDRP Rule 11(a) provides that the language of this proceeding should be the language of the registration agreement governing the contested domain name. That language is Japanese. However, the Complaint before us shows that the disputed domain name, <disney-star.com>, wholly contains English words and characters, which suggests Respondent’s proficiency in English. The record also reveals that this proceeding was commenced with service upon Respondent of specimens of both the Complaint and accompanying Commencement Notification, both rendered in Japanese. For these reasons, and because Respondent, despite having received due notice of the commencement of this proceeding and of its opportunity to appear and defend against the allegations of the Complaint, has failed to do so, we conclude that the language requirement of the Rule has been satisfied.
Therefore, we look to the further proviso of Rule 11(a) which permits this Panel to proceed in a language other than that of the governing registration agreement “having regard to the circumstances of the administrative proceeding,” and we find that it would be in the interests of justice and economy for us to permit this proceeding to be conducted in English. See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (a panel there exercising discretion in deciding that the language of a UDRP proceeding should be English, notwithstanding the different language of the pertinent registration agreement, based on evidence that a respondent had command of the English language).
Accordingly, this proceeding will be conducted in the English language.
A. Complainant
Complainant is a global media company doing business under the name and mark DISNEY.
Complainant holds a registration for the DISNEY trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 1,162,727 registered July 28, 1981, and renewed most recently as of November 9, 2021.
Respondent registered the domain name <disney-star.com> on June 9, 2006.
The domain name is confusingly similar to Complainant’s DISNEY mark.
Respondent has not been commonly known by the domain name.
Complainant has not authorized Respondent to use its DISNEY mark in any way.
Respondent fails to use the domain name in connection with either a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, Respondent uses the domain name to resolve to an inactive webpage.
Respondent lacks both rights to and legitimate interests in the domain name.
Respondent knew of Complainant’s rights in the mark when it registered the domain name.
Respondent both registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name has been registered and is being used by Respondent 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:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
Complainant has rights in the DISNEY trademark sufficient for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum December 30, 2018):
Complainant’s ownership of a USPTO registration for … [its mark] … demonstrate[s] its rights in such mark for the purposes of Policy ¶ 4(a)(i).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Japan). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <disney-star.com> domain name is confusingly similar to Complainant’s DISNEY trademark.
The domain name incorporates the mark in its entirety, with only the addition of a hyphen and the generic term “star,” plus the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Microsoft Corp. v. Thong Tran Thanh, FA 1653187 (Forum January 21, 2016) (finding confusing similarity where a disputed domain name contained a UDRP Complainant’s entire mark and differed only by the addition of a generic phrase and a top-level domain, the differences between the domain name and the mark being insufficient to distinguish one from the other for purposes of the Policy).
As to Respondent’s addition of a hyphen to Complainant’s mark in creating the domain name, a hyphen is of no consequence to our analysis because a hyphen adds nothing to the meaning, nor does it change the phonetic character, of the result. See, for example, Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum February 18, 2004) (finding that hyphens included in a domain name are irrelevant in an analysis of the question of confusing similarity Policy ¶ 4(a)(i)).
Further see Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum February 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of confusing similarity under the provisions of the Policy).
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the <disney-star.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <disney-star.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the DISNEY mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “hide,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant asserts, without objection from Respondent, that, although Respondent has evidently had possession of the <disney-star.com> domain name since June 9, 2006, it still makes no active use of the domain name. In these circumstances, it cannot be said that Respondent is making either a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 0296583 (Forum September 2, 2004) (finding that where a challenged domain name resolved to an empty page featuring no substantive content or links was evidence that a respondent failed to use the disputed domain name actively, suggesting a lack of rights to or legitimate interests in the domain name).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
It has been the consensus view of panelists from the beginnings of the UDRP that a lengthy failure to make any active use of a domain name, or even to show concrete preparations to use it, can stand as evidence of bad faith registration and use of the domain name. See, for example, Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000), where a UDRP panelist found, upon evidence that a respondent did not conduct any legitimate commercial or non-commercial business by means of a contested domain name, and where that respondent failed to show that it had any rights to or legitimate interests in that domain name:
[T]he domain name … has been registered in bad faith….
[and]
[T]he Respondent’s passive holding of the domain name … satisfies the requirement of paragraph 4(a)(iii) that the domain name “is being used in bad faith” by Respondent.
See also Regions Bank v. Darla Atkins, FA 1786409 (Forum June 20, 2018):
Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.
Therefore, in the circumstances here presented, including that, although the <disney-star.com> domain name has been in the possession of Respondent for more than fifteen years without any evident active use of it, or even of concrete preparations for its use, as well as that it is all but impossible to conceive of a legitimate use to which the domain name could be put, we find that Respondent has both registered and now uses the domain name in bad faith.
In light of this determination, we conclude that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <disney-star.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 11, 2022
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