1
Disney Enterprises, Inc. v. Peter Sebor
Claim Number: FA0710001092381
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 name at issue are <hannahmontanagames.com> registered with Domain Band, Inc., <cinderella2dvd.com>, registered with Flatme Networks, Inc.and <gdisney.com>, registered with Key-Systems Gmbh.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 9, 2007; the National Arbitration Forum received a hard copy of the Complaint October 10, 2007.
On October 10, 2007, Key-Systems Gmbh confirmed by e-mail to the National Arbitration Forum that the <gdisney.com> domain name is registered with Key-Systems Gmbh, and that Respondent is the current registration of the name. On October 10, 2007, Domain Band, Inc. confirmed by e-mail to the National Arbitration Forum that the <hannahmontanagames.com> domain name is registered with Domain Band, Inc., and that Respondent is the current registration of the name. On October 19, 2007, Flatme Networks, Inc confirmed by e-mail to the National Arbitration Forum that the <cinderella2dvd.com> domain name is registered with Flatme Networks, Inc and that Respondent is the current registrant of the name. Key-Systems Gmbh, Domain Band, Inc., and Flatme Networks, Inc each verified that Respondent is bound by the their respective registration agreements and thereby has 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 31, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 20, 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@hannahmontanagames.com, postmaster@cinderella2dvd.com, and postmaster@gdisney.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 29, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The disputed domain name that Respondent registered, <hannahmontanagames.com>, is confusingly similar to Complainant’s HANNAH MONTANA mark. The disputed <cinderella2dvd.com> domain name is confusingly similar to Complainant’s CINDERELLA mark; and the disputed <gdisney.com> domain name is confusingly similar to Complainant’s DISNEY mark.
2. Respondent has no rights to or legitimate interests in the <hannahmontanagames.com>, <cinderella2dvd.com> and <gdisney.com> domain names.
3. Respondent registered and used the <hannahmontanagames.com>, <cinderella2dvd.com> and <gdisney.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Disney Enterprises, Inc., is a worldwide leader in the production of children’s entertainment goods and services such as movies, television programs, books, and other merchandise. Complainant registered the DISNEY mark in numerous jurisdictions worldwide, including with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,162,727 issued July 28, 1981). Complainant has similarly registered the CINDERELLA mark with the USPTO (Reg. No. 746,696 issued March 12, 1963). Moreover, Complainant has in recent years released DVDs under the CINDERELLA mark titled “Cinderella II” and “Cinderella III.”
Complainant began using the HANNAH MONTANA mark in connection with a television series that first aired in early 2006. The series has enjoyed spectacular success, and the HANNAH MONTANA mark has since been licensed for a best-selling musical record and a computer game using the Nintendo platform. Complainant has also filed numerous registrations of the HANNAH MONTANA mark with the USPTO (i.e. Serial No. 78,719,987 filed Sept. 24, 2005).
Respondent registered the <hannahmontanagames.com> domain name June 4, 2007, the <cinderella2dvd.com> domain name March 25, 2007, and the <gdisney.com> domain name September 16, 2006. All three disputed domain names resolve to commercial search engines and listings of hyperlinks, many of which resolve to third-parties who offer products in direct competition with those offered under Complainant’s HANNAH MONTANA, CINDERELLA, and DISNEY marks.
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 will draw such inferences as the Panel 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 Complainant to 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 sufficiently established its rights in the
DISNEY and CINDERELLA marks through registration with the USPTO pursuant to
Policy ¶ 4(a)(i).
See Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark
with the USPTO establishes Complainant's rights in the mark.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7,
2001) (finding that the Policy does not require that the mark be registered in
the country in which the respondent operates; therefore it is sufficient that
the complainant can demonstrate a mark in some jurisdiction).
It is not necessary that Complainant register all of its
marks with a governmental authority in order to establish rights in its mark,
so long as it can establish secondary meaning and continuous use of a given
mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13,
2000) (finding that the Rules do not require that the complainant's trademark
or service mark be registered by a government authority or agency for such
rights to exist); see also Tuxedos By
Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law
rights in a mark where its use was continuous and ongoing, and secondary
meaning was established).
Complainant began using the HANNAH MONTANA mark in connection with a television series in early 2006. The series has enjoyed spectacular success, and the HANNAH MONTANA mark has since been licensed for a best-selling musical record and a computer game using the Nintendo platform. Complainant has also filed numerous applications for registration of the HANNAH MONTANA mark with the USPTO. As a result, the Panel finds that Complainant has established common law rights in the HANNAH MONTANA mark pursuant to Policy ¶ 4(a)(i). See Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that the complainant had provided evidence that it had valuable goodwill in the <minorleaguebaseball.com> domain name, establishing common law rights in the MINOR LEAGUE BASEBALL mark); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).
All three of the
disputed domain names contain the generic top-level domain (“gTLD”)
“.com.” In making its Policy ¶ 4(a)(i) analysis of the disputed domain names, the Panel will
disregard this element as irrelevant. 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 Nev. State Bank v. Modern
Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has
been established that the addition of a generic top-level domain is irrelevant
when considering whether a domain name is identical or confusingly similar
under the Policy.”).
The <hannahmontanagames.com>
domain name contains Complainant’s HANNAH MONTANA mark in its entirety
followed by the generic term “games,” which has an obvious relationship to
Complainant’s business as Complainant has licensed its mark to be used in a
computer game. The Panel finds that the
disputed domain name <hannahmontanagames.com> is confusingly
similar to Complainant’s HANNAH MONTANA mark pursuant to Policy ¶ 4(a)(i). See Space Imaging LLC v.
Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the respondent’s domain name combines the complainant’s mark
with a generic term that has an obvious relationship to the complainant’s
business); see also Brambles
Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000)
(finding that the domain name <bramblesequipment.com> is confusingly
similar because the combination of the two words "brambles" and
"equipment" in the domain name implies that there is an association
with the complainant’s business).
The <cinderella2dvd.com>
domain name contains Complainant’s CINDERELLA mark in its entirety and then
includes the numeral “2” and the generic term “dvd.” These included terms have an obvious
relationship with Complainant’s business since Complainant has released a DVD
under the CINDERELLA mark titled “Cinderella II.” Moreover, the inclusion of numerals has been
previously found not to distinguish a disputed domain name. As a result of all of the above reasons, the
Panel finds that the disputed <cinderella2dvd.com> domain name is
confusingly similar to Complainant’s CINDERELLA mark pursuant to Policy ¶ 4(a)(i). See Am. Online Inc. v. Chinese
ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of
the numeral 4 in the domain name <4icq.com> does nothing to deflect the
impact on the viewer of the mark ICQ and is therefore confusingly similar); see also Arthur Guinness Son &
Co. (
Lastly, the <gdisney.com>
domain name that Respondent registered contains
Complainant’s DISNEY mark in its entirety preceded by the letter “g.” It is well-established that a simple
misspelling that includes one letter with a mark, will not distinguish a
disputed domain name. For all of the
aforementioned reasons, the Panel finds that Respondent’s <gdisney.com>
domain name is confusingly similar to Complainant’s DISNEY mark pursuant to
Policy ¶ 4(a)(i).
See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO
July 13, 2000) (finding that a domain name which differs by only one letter
from a trademark has a greater tendency to be confusingly similar to the
trademark where the trademark is highly distinctive); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb.
Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to
words, a respondent does not create a distinct mark but nevertheless renders
the domain name confusingly similar to the complainant’s marks).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii),
Complainant must first establish a prima
facie case that Respondent has no rights or legitimate interests in the
disputed domain names. See VeriSign Inc. v. VeneSign
Respondent failed to submit a response to the Complaint and in such circumstances the Panel is permitted to presume that Respondent has no rights or legitimate interests in the <hannahmontanagames.com>, <cinderella2dvd.com> and <gdisney.com> domain names. Nevertheless, the Panel examines the record and the factors listed under Policy ¶ 4(c) to determine if the record shows that Respondent has such rights and interest. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”).
Nowhere in Respondent’s WHOIS information for any of the disputed domain names or elsewhere in the record does it indicate that Respondent is or ever was commonly known by the disputed domain names. Moreover, Complainant has never granted Respondent permission to use any of its marks in any way. Absent evidence to the contrary, the Panel finds that Respondent is not commonly known by either the <hannahmontanagames.com>, <cinderella2dvd.com> or <gdisney.com> domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “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); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
All three of the disputed domain names contain one of
Complainant’s marks in its entirety and each resolves to commercial search
engines and a series of hyperlinks that resolve to third-parties, many of whom
offer products that seek to directly compete with those offered under
Complainant’s HANNAH MONTANA, CINDERELLA, and DISNEY marks. The Panel finds that this use is not a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) and that it is not a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See eBay Inc. v. Hong, D2000-1633
(WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s
entire mark in domain names makes it difficult to infer a legitimate use); see also Sony Kabushiki Kaisha v. Domain
rajadomain@yahoo.com +1.415.0, FA 128701 (Nat. Arb. Forum Dec. 16, 2002)
(finding that the respondent’s use of its domain name in order to divert
Internet users to a website that offers search engine services and links to
various other websites was not considered to be in connection with a bona
fide offering of goods or services or a legitimate noncommercial or fair
use pursuant to Policy ¶¶ 4(c)(i) or 4(c)(iii)); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that
the respondent was not using the domain name within the parameters of Policy ¶
4(c)(i) or (iii) because the respondent used the domain name to take advantage
of the complainant's mark by diverting Internet users to a competing commercial
site).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
The Panel finds that the occurrence of registering and using these three disputed domain names establishes a pattern by Respondent of registering domain names that infringe upon Complainant’s exclusive rights to use of its marks. Such conduct and pattern support findings of Respondent’s bad faith registration and use of these disputed domains pursuant to Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon another’s famous and registered trademarks).
Respondent’s disputed <hannahmontanagames.com>, <cinderella2dvd.com> and <gdisney.com> domain names all resolves to a series of hyperlinks that if clicked upon divert Internet users to various third-parties, many of whom offer products that seek to compete directly with those offered under Complainant’s marks. The Panel finds that this provides additional evidence that Respondent registered and is using the disputed domain names in bad faith and in an attempt to disrupt Complainant’s business pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“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) [and] (iv).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
Finally, the Panel presumes that Respondent is commercially
benefiting from the commercial search engine and various links that resolve
from the disputed domain names. Consequently,
the Panel finds that any commercial benefit from the disputed domain names that
are confusingly similar to Complainant’s various marks, is further evidence of
Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
Bank of Am. Corp. v.
The Panel finds that Complainant 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 <hannahmontanagames.com>, <cinderella2dvd.com> and <gdisney.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 13, 2007.
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