Disney Enterprises, Inc v. LOG Technology Consulting
Claim Number: FA0709001074542
Complainant is Disney Enterprises, Inc. (“Complainant”), represented by J.
Andrew Coombs, of J. Andrew Coombs, A Professional
Corporation,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <disneyworld-tickets.com>, <disney-disney.com>, <disney-florida-hotel.com>, <disneyhotelflorida.com>, <disney-walt-disney.com>, <disney-walt-world.com>, <disneywaltdisney.com>, <disneyworld-disneyworld.com>, <disneyworlddisneyworld.com>, <disneyworldwalt.com>, <vacations-disney-world.com>, <vacationsatdisneyworld.com>, <visit-disneyworld.com>, and <world-disney.com>, registered with GoDaddy.com, 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 J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On September 5, 2007, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <disneyworld-tickets.com>, <disney-disney.com>, <disney-florida-hotel.com>, <disneyhotelflorida.com>, <disney-walt-disney.com>, <disney-walt-world.com>, <disneywaltdisney.com>, <disneyworld-disneyworld.com>, <disneyworlddisneyworld.com>, <disneyworldwalt.com>, <vacations-disney-world.com>, <vacationsatdisneyworld.com>, <visit-disneyworld.com>, and <world-disney.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 September 11, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 1, 2007 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 postmaster@disneyworld-tickets.com, postmaster@disney-disney.com, postmaster@disney-florida-hotel.com, postmaster@disneyhotelflorida.com, postmaster@disney-walt-disney.com, postmaster@disney-walt-world.com, postmaster@disneywaltdisney.com, postmaster@disneyworld-disneyworld.com, postmaster@disneyworlddisneyworld.com, postmaster@disneyworldwalt.com, postmaster@vacations-disney-world.com, postmaster@vacationsatdisneyworld.com, postmaster@visit-disneyworld.com, and postmaster@world-disney.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <disneyworld-tickets.com>, <disney-disney.com>, <disney-florida-hotel.com>, <disneyhotelflorida.com>, <disney-walt-disney.com>, <disney-walt-world.com>, <disneywaltdisney.com>, <disneyworld-disneyworld.com>, <disneyworlddisneyworld.com>, <disneyworldwalt.com>, <vacations-disney-world.com>, <vacationsatdisneyworld.com>, <visit-disneyworld.com>, and <world-disney.com> domain names are confusingly similar to Complainant’s DISNEY mark.
2. Respondent does not have any rights or legitimate interests in the <disneyworld-tickets.com>, <disney-disney.com>, <disney-florida-hotel.com>, <disneyhotelflorida.com>, <disney-walt-disney.com>, <disney-walt-world.com>, <disneywaltdisney.com>, <disneyworld-disneyworld.com>, <disneyworlddisneyworld.com>, <disneyworldwalt.com>, <vacations-disney-world.com>, <vacationsatdisneyworld.com>, <visit-disneyworld.com>, and <world-disney.com> domain names.
3. Respondent registered and used the <disneyworld-tickets.com>, <disney-disney.com>, <disney-florida-hotel.com>, <disneyhotelflorida.com>, <disney-walt-disney.com>, <disney-walt-world.com>, <disneywaltdisney.com>, <disneyworld-disneyworld.com>, <disneyworlddisneyworld.com>, <disneyworldwalt.com>, <vacations-disney-world.com>, <vacationsatdisneyworld.com>, <visit-disneyworld.com>, and <world-disney.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Disney Enterprises, Inc., is a global leading
producer of children’s entertainment goods and services, including movies,
television programs, books, and merchandise.
Complainant also operates a popular vacation resort and theme park in
Respondent registered the <disneyworld-tickets.com>, <disney-florida-hotel.com>, <disneyhotelflorida.com>, and <world-disney.com> domain names on
Respondent’s disputed domain names all resolve to websites that prominently display Complainant’s DISNEY mark. These websites offer products and merchandise legitimately branded by Complainant under its DISNEY mark, along with similar, unauthorized merchandise that competes directly with Complainant’s products.
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. 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 Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. 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.”).
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.
The Panel finds that Complainant has sufficiently
established its rights in the DISNEY mark through its registration of the mark with
the USPTO pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum
Complainant first alleges that the <disneyworld-tickets.com>, <disney-disney.com>,
<disney-florida-hotel.com>, <disneyhotelflorida.com>,
<disney-walt-disney.com>, <disney-walt-world.com>, <disneywaltdisney.com>,
<disneyworld-disneyworld.com>, <disneyworlddisneyworld.com>,
<disneyworldwalt.com>, <vacations-disney-world.com>, <vacationsatdisneyworld.com>,
<visit-disneyworld.com>, and <world-disney.com>
domain names are confusingly similar to Complainant’s DISNEY mark, and the
Panel agrees. Each of the disputed
domain names includes the entire DISNEY mark in some manner and simply adds
generic terms, such as “world,” “tickets,” “florida,” “hotel,” “walt,”
“vacations,” and “visit.” As each of
these generic terms are descriptive of the various products and services
offered by Complainant under the DISNEY mark, Respondent’s addition of the
terms does not negate any confusing similarity between the disputed domain
names and the DISNEY mark. In the same
way, the addition of a hyphen into some of the disputed domain names does not
render them distinctive from Complainant’s mark under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (
Each of the disputed domain names adds the generic top-level
domain (“gTLD”) “.com.” As a top-level
domain is required of all domain names, the addition of a gTLD is irrelevant
under the Policy. Therefore, the Panel
finds that Respondent’s disputed domain names are confusingly similar to
Complainant’s DISNEY mark pursuant to Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat.
Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), Complainant has the initial burden of proving that Respondent lacks rights and legitimate interests in the disputed domain names. However, once Complainant makes a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain names. The Panel finds that Complainant has established a prima facie case under the Policy. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to respond to the Complaint allows the Panel to presume that Respondent lacks rights and legitimate interests in the disputed domain names. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Pursuant to Policy ¶ 4(c)(ii), a finding that Respondent is
not commonly known by the <disneyworld-tickets.com>, <disney-disney.com>,
<disney-florida-hotel.com>, <disneyhotelflorida.com>,
<disney-walt-disney.com>, <disney-walt-world.com>, <disneywaltdisney.com>,
<disneyworld-disneyworld.com>, <disneyworlddisneyworld.com>,
<disneyworldwalt.com>, <vacations-disney-world.com>, <vacationsatdisneyworld.com>,
<visit-disneyworld.com>, and <world-disney.com>
domain names may indicate that Respondent lacks rights and legitimate interests
in the disputed domain names. There is
nothing in the record to suggest that Respondent is commonly known by the
disputed domain names, including Respondent’s WHOIS information, which
indicates that Respondent is “LOG Technology Consulting.” Also, Complainant has not authorized or
licensed Respondent to use its DISNEY mark.
Thus, the Panel finds that Respondent lacks rights and legitimate
interests in the disputed domain names under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum
Respondent is using the disputed domain names to redirect Internet users to websites that display Complainant’s DISNEY mark and offer both Complainant’s merchandise and competing merchandise. The Panel presumes that Respondent profits when Internet users visit these websites. Such use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), and is further evidence of Respondent’s lack of rights and legitimate interests in the disputed domain names. See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
As Respondent is using the <disneyworld-tickets.com>, <disney-disney.com>, <disney-florida-hotel.com>,
<disneyhotelflorida.com>, <disney-walt-disney.com>, <disney-walt-world.com>,
<disneywaltdisney.com>, <disneyworld-disneyworld.com>,
<disneyworlddisneyworld.com>, <disneyworldwalt.com>, <vacations-disney-world.com>,
<vacationsatdisneyworld.com>, <visit-disneyworld.com>,
and <world-disney.com> domain names to offer both
Complainant’s merchandise and competing merchandise, the Panel finds that this
constitutes a disruption of Complainant’s business. Such disruption indicates that Respondent
registered and is using the disputed domain names in bad faith pursuant to
Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA
94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of
variation from the complainant's marks suggests that the respondent, the
complainant’s competitor, registered the names primarily for the purpose of
disrupting the complainant's business); see
also Caterpillar Inc. v.
Vine, FA 97097 (Nat. Arb. Forum June 22,
2001) (“Respondent registered each of the disputed domain names in order to
gain customers and to disrupt Complainant's business of authorizing dealers to
sell its CATERPILLAR equipment.”).
The Panel assumes that Respondent benefits commercially when Internet users visit the websites located at the disputed domain names. Respondent is thus capitalizing on the likelihood that Internet users, presumably seeking Complainant’s business, will be confused as to Complainant’s affiliation with the disputed domain names. The Panel finds that this is further evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <disneyworld-tickets.com>, <disney-disney.com>, <disney-florida-hotel.com>, <disneyhotelflorida.com>, <disney-walt-disney.com>, <disney-walt-world.com>, <disneywaltdisney.com>, <disneyworld-disneyworld.com>, <disneyworlddisneyworld.com>, <disneyworldwalt.com>, <vacations-disney-world.com>, <vacationsatdisneyworld.com>, <visit-disneyworld.com>, and <world-disney.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 22, 2007
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