NATIONAL ARBITRATION FORUM
DECISION

 

Disney Enterprises, Inc. v. The Lion King a/k/a NULL NULL

Claim Number: FA0906001266261

 

PARTIES

Complainant is Disney Enterprises, Inc. ("Complainant"), represented by J. Andrew Coombs, of J. Andrew Coombs, A Professional Corporation, California, USA. Respondent is The Lion King a/k/a NULL NULL (`Respondent"), represented by Arthur Marquez, Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <thelionking.com>, registered with Enoni, Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 2, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 3, 2009.

 

On June 3, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <thelionking.com> domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 June 12, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 2, 2009 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@thelionking.com by e-mail.

 

A timely Response was received and determined to be complete on July 2, 2009.

An Additional Submission was received from Complainant on July 7, 2009, and was determined to be timely and to comply with Supplemental Rule 7.

 

On July 8, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant makes the following assertions:

(1)      Respondent's <thelionking.com> domain name is confusingly similar to Complainant's THE LION KING mark.

 

(2)      Respondent does not have any rights or legitimate interests in the <thelionking.com> domain name.

 

(3)      Respondent registered and used the <thelionking.com> domain name in bad faith.

 

B. Respondent

Arthur Marquez responded to the Complaint for Respondent. Respondent contends that he purchased and is holding the <thelionking.com> domain name as part of his extensive collection of Lion King memorabilia. He registered the domain name because The Lion King is his favorite animated movie. Respondent is a collector of Lion King memorabilia for purely personal enjoyment purposes. The domain name <thelionking.com> is the "crown jewel" of his collection.

 

Respondent also contends that he does not gain financially in any way from the disputed domain name. Respondent does not use this domain name for offering of goods and services and does not have any plans to do so. Respondent has never sold or offered to sell any of his collection, including the domain name.

 

Respondent contends that he had a legitimate interest in registering the domain name and he registered and uses the domain name good faith. He says that counsel for Walt Disney Company contacted him several years ago and upon determining his use of the domain name closed her file.

 

The domain name does not resolve to an active website. Respondent has used this website for e-mail purposes only.

 

Respondent contends that the 2003 correspondence from Complainant and the intervening span of time imply that Complainant was not contesting Respondent's rights or legitimate interests in the disputed domain name. Respondent argues that this acquiescence conferred Respondent with rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii) and is evidence that Respondent was not and is not using the disputed domain name in bad faith Policy 4(a)(iii).

 

C. Complainant's Additional Submission

 

Respondent's assertion that he is merely "collecting" the domain name does not amount to a legitimate interest under the UDRP.

 

Registering a domain name for "vanity" e-mail purposes does not alone afford Respondent a legitimate use. Further, Respondent has put forth no evidence that he is using the domain name for e-mail purposes.

 

Respondent acknowledges that he registered the domain name with full knowledge of Complainant's trademark, thereby admitting his bad faith. Moreover, Respondent's prolonged period of non-use of the domain name, in addition to evidencing the absence of a legitimate interest, also evidences had faith. Respondent's failure to use the disputed domain constitutes bad faith registration and use. Further, Respondent's argument of laches is not appropriate.

 

FINDINGS

Complainant Disney Enterprises, Inc. has been for many years the owner of hundreds of registrations for the THE LION KING trademark and other THE LION KING-formative trademarks in countries all over the world. Since 1994, Complainant, or its predecessor in interest, has continuously used and applied the trademark for a variety of goods and services. Complainant is a worldwide leading producer of children's entertainment goods and services such as movies, television programs, books, and merchandise. In association with these goods and services, Complainant owns rights in a variety of trademarks registered with the United States Patent and Trademark Office ('USPTO"), one of which is the THE LION KING mark (Reg. No. 3,097,393 issued on September 7, 1993). Further, Complainant holds a similar domain name registration incorporating the THE LION KING mark, <lionking.com>.

 

On December 5, 2002, Mary Fossier, Executive Counsel (IP Enforcement) for the Walt Disney Company, contacted Respondent almost seven years ago regarding this domain name. AT that time, Respondent explained that he never used this domain for commercial purposes, was not a "cybersquatter,” had not tarnished Disney's reputation or good will.  Ms. Fossier responded by saying "Based on the representation in your letter we plan to close our file on this matter."

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant has rights in the THE LION KING mark by virtue of its trademark registrations with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,097,393, issued September 7, 1993). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) ("As the [complainant's] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i)."); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) ("Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.").

 

Respondent's <thelionking.com> domain name is identical to Respondent's THE LION KING mark. The <thelionking.com> domain name differs from Complainant's mark only in that the spaces have been removed from the mark, and the generic top-level domain ("gTLD") ".com" has been added to the end of the mark. Neither the removal of spaces nor the addition of a gTLD sufficiently distinguish a domain name from the mark it incorporates, because no domain name can contain spaces, and every domain name must include a top-level domain. See Planned Parenthood Fed'n of Ain. v. Bucci, 42 U.S.P.Q. 2d 1430 (S.D.N.Y. 1997), cert. denied, 525 U.S. 834 (1998) (finding plaintiffs PLANNED PARENTHOOD mark and defendant's <plannedparenthood.com> domain name nearly identical); see also Ponmellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant's mark because the generic top-level domain (gTLD) ".com" after the name POMELLATO is not relevant). These changes to the THE LION KING mark do not minimize or eliminate the resulting likelihood of confusion, and that Respondent's <thelionking.com> domain name is identical to Complainant's mark pursuant to Policy ¶ 4(a)(i). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) ("Elimination of punctuation and the space between the words of Complainant's mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).").

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(i), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Towmaster Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) ("Complainant must first make a prima. facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests."); see also AOL LLC v. Gerherg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant contends that Respondent is not commonly known by the <thelionking.com> domain name nor has it ever been the owner or licensee of the THE LION KING mark. The WHOIS record for the disputed domain name lists Respondent as "The Lion King a/k/a NULL NULL." However, nothing else in the record suggests that Respondent has been commonly known by any variant on the THE LION KING mark, although Respondent uses a personal e-mail address incorporating the <thelionking.com> domain name. The Panel finds that Respondent is not commonly known by the <thelionking.com> domain name pursuant to Policy ¶ 4(c)(ii). See MB Fin. Bank, N.A. v. nrbfinancialmortgage.com, FA 405073 (Nat. Arb. Forum Mar. 11, 2005) ("[D]espite being listed in the WHOIS information as `mbfnancialmortgage.com,' Respondent is not commonly known by this domain name nor is [it] authorized to register domain names featuring Complainant's MB FINANCIAL mark."); see also Rectory School v. LeClerc, FA 250829 (Nat. Arb. Forum June 7, 2004) (`Although Respondent's e-mail identifies it as 'rectoryschools@yahoo.com' in the WHOIS domain name registration information, the Panel finds that this does not establish that Respondent is commonly known by the [<therectoryschool.net> and <therectoryschool.com>] domain names, pursuant to Policy ¶ 4(c)(ii).").

 

In both its Complaint and its Additional Submission, Complainant contends that Respondent is not currently making an active use of the <thelionking.com> domain name. The Panel finds Respondent's failure to make active use of the disputed domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) ("The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant's mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii)."); see also TRIP fat '1. Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) ("[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).").

 

Complainant also contends in its Additional Submission that even if Respondent is using the disputed domain name as part of a personal e-mail address, that use is not a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). Respondent knowingly selected Complainant's well known trademark as his personal e-mail address, making no commercial use of the domain name, thus depriving the trademark holder of the use of its trademark in a corresponding domain name. Under these circumstances, the Panel finds that Respondent's use of the disputed domain name in a personal e-mail address is not a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Elorg Company LLC v. 0x90, FA 114355 (Nat. Arb. Forum Aug. 6, 2002) (holding that respondent's use of the <tetris.net> domain name for vanity e-mail purposes in the trademark sense in an effort to attract fans of the TETRIS computer game was not nominative fair use of the TETRIS mark); see also Guilbert UK Ltd. v. Constant Ltd., D2000-1287 (WIPO Dec. 18, 2000) (ordering that a domain name which the respondent registered solely for e-mail purposes only be transferred to the complainant); see also SingTel Optus Ply v. Xnet, D2004-0734 (WIPO Jan, 18, 2005.) ("Personal e-mail alone will not suffice to establish a bona fide offering of goods or services for the purposes of sub-paragraph 4(c)(i), nor to establish that an organization was commonly known by the domain name under sub-paragraph 4(c)(ii)").

 

Respondent's assertion that he is merely "collecting" the domain name does not amount to a legitimate interest under the UDRP. See Sun Hung Kai Properties Limited. v. Sunny Properties/C, K. Kwok, D2000-15 01 (WIPO Feb. 3, 2001) (dismissing Defendant's argument that he simply "collected" the undersigned domain name).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent has failed to make any active use of the <thelionking.com> domain name pursuant to Policy ¶ 4(b)(iv). The Panel finds that Respondent has registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent's [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).

 

Respondent acknowledges that he registered the <thelionking.com> domain name with full knowledge of Complainant's well known trademark, and subsequently made no use of the domain, except as a personal e-mail address. The Panel finds that Respondent's conduct constitutes bad faith registration and use. See Beat the Bookstore, LLC v. May Enterprise, FA 589501 (Nat. Arb. Forum Dec. 19, 2005) ("Various panels, including this one, have held that passive holding, coupled with a respondent's knowledge of trademark rights of a complainant in the name being so held as is clearly the case here, can amount to bad faith use under paragraph 4(a)(iii) of the Policy."); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding the respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).

 

The Panel further finds that the 2003 correspondence between Complainant's counsel and Respondent, and the intervening span of time during which Complainant was not challenging Respondent's registration and use of the disputed domain name, although relevant to rights or legitimate interest and bad faith, is not determinative.

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <thelionking.com> domain name be TRANSFERRED from Respondent to Complainant.

 

The Honorable Charles K. McCotter, Jr. (R, Panelist
Dated: July 24, 2009

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