Disney Enterprises, Inc. v. DR Web Designs and DR Web Design c/o Don Raggio
Claim Number: FA0907001274596
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 <marypoppinsonbroadway.com>, <marypoppinstickets.net>, <marypoppinstickets.org>, <hannahmontanaticketsonline.com>, and <littlemermaidticketsny.com>, registered with Godaddy.com, Inc.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 17, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 20, 2009.
On July 20, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <marypoppinsonbroadway.com>, <marypoppinstickets.net>, <marypoppinstickets.org>, <hannahmontanaticketsonline.com>, and <littlemermaidticketsny.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 July 28, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 17, 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@marypoppinsonbroadway.com, postmaster@marypoppinstickets.net, postmaster@marypoppinstickets.org, postmaster@hannahmontanaticketsonline.com, and postmaster@littlemermaidticketsny.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 21, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
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 <marypoppinsonbroadway.com>, <marypoppinstickets.net>, and <marypoppinstickets.org> domain names are confusingly similar to Complainant’s MARY POPPINS mark; Respondent’s <hannahmontanaticketsonline.com> domain name is confusingly similar to Complainant’s HANNAH MONTANA mark; and Respondent’s <littlemermaidticketsny.com> domain name is confusingly similar to Complainant’s LITTLE MERMAID mark.
2. Respondent does not have any rights or legitimate interests in the <marypoppinsonbroadway.com>, <marypoppinstickets.net>, <marypoppinstickets.org>, <hannahmontanaticketsonline.com>, and <littlemermaidticketsny.com> domain names.
3. Respondent registered and used the <marypoppinsonbroadway.com>, <marypoppinstickets.net>, <marypoppinstickets.org>, <hannahmontanaticketsonline.com>, and <littlemermaidticketsny.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Disney Enterprises, Inc., is a worldwide leading producer of children’s entertainment goods and services, including movies, television programs, books, and related merchandise. Complainant owns and uses the following marks: (1) the MARY POPPINS mark, used since 1964 in conjunction with its motion picture; (2) the HANNAH MONTANA mark, used since 2006 for its television program and recent motion picture; and (3) the LITTLE MERMAID mark, used since 1989 in conjunction with its motion picture. Complainant has registered the MARY POPPINS and HANNAH MONTANA marks numerous times with the United States Patent and Trademark Office (“USPTO”): (1) the MARY POPPINS mark (i.e. Reg. No. 3,429,616 issued May 20, 2008; filed March 21, 2007); (2) the HANNAH MONTANA mark (i.e. 3,413,552 issued April 15, 2008). Complainant has registered the LITTLE MERMAID mark with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA406,814 issued January 8, 1993).
Respondent registered the disputed domain names on the following dates: <marypoppinsonbroadway.com> (May 9, 2003), <marypoppinstickets.net> (May 9, 2003), <marypoppinstickets.org> (May 9, 2003), <hannahmontanaticketsonline.com> (April 17, 2008), and <littlemermaidticketsny.com> (May 21, 2007). The <marypoppinsonbroadway.com> and <marypoppinstickets.net> domain names resolve to Complainant’s “Disney on Broadway” web page. The <marypoppinstickets.org>, <hannahmontanaticketsonline.com>, and <littlemermaidticketsny.com> domain names resolve to a commercial website that sells goods and services that compete with Complainant’s entertainment business.
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.
Complainant has submitted evidence of its registrations of the MARY POPPINS mark (i.e. Reg. No. 3,429,616 issued May 20, 2008; filed March 21, 2007) and the HANNAH MONTANA mark (i.e. 3,413,552 issued April 15, 2008) with the USPTO. Moreover, Complainant has demonstrated its registration of the LITTLE MERMAID mark with the CIPO (Reg. No. TMA406,814 issued January 8, 1993). Therefore, the Panel finds that Complainant has sufficient rights in the MARY POPPINS, HANNAH MONTANA, and LITTLE MERMAID marks under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant asserts that it has used the MARY POPPINS mark since 1964 in connection with the motion picture under the mark. The Panel finds that sufficient secondary meaning has been established in the MARY POPPINS mark, thus demonstrating Complainant’s common law rights in the mark dating back to 1964 pursuant to Policy ¶ 4(a)(i). See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); see also Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding, while the complainant had registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because it had developed brand name recognition with the word “bibbero”).
The <marypoppinsonbroadway.com>, <marypoppinstickets.net>, and <marypoppinstickets.org>
domain names contain Complainant’s MARY POPPINS mark with the following
alterations: (1) the space in the mark has been removed; (2) the generic
top-level domains “.com,” “.net,” or “.org” have been added; and (3) the
descriptive terms “on broadway;” or “tickets” have been added. The Panel notes that the removal of spaces
and the addition of top-level domains are considered irrelevant under the
Policy. See, e.g., Bond & Co. Jewelers, Inc.
v.
The <hannahmontanaticketsonline.com>
domain name contains Complainant’s HANNAH MONTANA mark while: (1) removing the
space in the mark; (2) adding the generic top-level domain “.com;” and (3)
adding the descriptive terms “tickets online” to the mark. The Panel notes that these additions likewise
create no meaningful distinctions under the Policy, and therefore finds that
the <hannahmontanaticketsonline.com> domain name is confusingly
similar to the HANNAH MONTANA mark pursuant to Policy ¶ 4(a)(i). See Bond, supra; see also Vance Int’l, supra; see also Miller
Brewing, supra.
Finally, the <littlemermaidticketsny.com>
domain name contains Complainant’s LITTLE MERMAID mark while: (1) removing
the space in the mark; (2) adding the generic top-level domain “.com;” (3) adding
the descriptive term “tickets;” and (4) adding the geographic qualifier “ny,”
which presumably stands for “New York.”
The Panel reiterates that these alterations do not remove the disputed
domain name from the realm of confusing similarity, and that the addition of a
geographic term likewise carries no meaningful distinction. Therefore, the Panel finds that the <littlemermaidticketsny.com>
domain name is confusingly similar to Complainant’s LITTLE MERMAID mark
pursuant to Policy ¶ 4(a)(i). See Bond, supra; see also Vance Int’l,
supra; see also Miller Brewing, supra;
see also Skype Ltd. & Gannett Co. v.
Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a
domain name consisting of a well-known mark, combined with a geographically descriptive
term or phrase, is confusingly similar to the mark.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain names. Complainant must successfully assert a sufficient prima facie case supporting its allegations before Respondent receives the burden of demonstrating its rights or legitimate interests. The Panel finds that Complainant has met its burden, and therefore Respondent must demonstrate its rights or legitimate interests under Policy ¶ 4(c). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. 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 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).
Complainant contends that Respondent is not authorized to use Complainant’s marks in any fashion. The WHOIS information identifies Respondent as “DR Web Designs and DR Web Design c/o Don Raggio.” Without any evidence to the contrary, the Panel finds that Respondent is not, and has never been, commonly known by any of the disputed domain names under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant contends that the <marypoppinsonbroadway.com> and <marypoppinstickets.net>
domain names resolve to Complainant’s “Disney on Broadway” web page. The Panel notes that Respondent presumably
benefits from this redirection through some sort of referral fee. In any event, the redirection of an Internet
user through the disputed domain names to a website of Complainant’s does not
qualify as a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See,
e.g., Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114
(D. Mass. 2002) (finding that, because the respondent's sole purpose in
selecting the domain names was to cause confusion with the complainant's
website and marks, its use of the names was not in connection with the offering
of goods or services or any other fair use); see also Deutsche Bank Aktiengesellschaft v. N.Y. TV
Tickets Inc., D2001-1314
(WIPO Feb. 12, 2002) (“[G]iven the notoriety of the Complainant's Deutsche Bank
Mark, any use which the Respondent would make of any domain name, as here, that
incorporated the Complainant's Deutsche Bank Mark, or one confusingly similar
thereto, would likely violate the exclusive trademark rights which the
Complainant has long held in its mark.”).
The <marypoppinstickets.org>, <hannahmontanaticketsonline.com>, and <littlemermaidticketsny.com> domain names resolve to a commercial website that sells goods and services that compete with Complainant’s business. Specifically, it appears that Respondent is diverting Internet users seeking Complainant’s entertainment goods and services to a website that sells tickets to Complainant’s shows, as well as shows of competitors, in competition with Complainant’s own sale of its goods and services. The Panel finds that this competing commercial use fails as a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The <marypoppinstickets.org>,
<hannahmontanaticketsonline.com>, and <littlemermaidticketsny.com>
domain names, registered between May 9, 2003 and April 17, 2008, resolve to websites
that provides competing services for ticket sales. The Panel finds that Respondent therefore
intentionally disrupted Complainant’s business through this competitive use,
which evidences bad faith registration and use under Policy ¶ 4(b)(iii). See Lambros
v. Brown, FA 198963 (Nat. Arb. Forum Nov.
19, 2003) (finding that the respondent registered a domain name primarily to
disrupt its competitor when it sold similar goods as those offered by the
complainant and “even included Complainant's personal name on the website,
leaving Internet users with the assumption that it was Complainant's business
they were doing business with”); see also
Travant Solutions, Inc. v. Cole,
FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the
domain name in bad faith, pursuant to Policy ¶ 4(b)(iii), because it is
operating on behalf of a competitor of Complainant . . .”).
The
<marypoppinstickets.org>, <hannahmontanaticketsonline.com>,
and <littlemermaidticketsny.com> domain names, as mentioned above,
resolve to competing commercial websites.
The <marypoppinsonbroadway.com> and
<marypoppinstickets.net> domain names, both registered on May 9,
2003), resolve to Complainant’s own website.
The Panel presumes that this latter redirection materially benefits
Complainant through the receipt of referral fees. Thus, the Panel finds that Respondent has
created a likelihood of confusion as to Complainant’s affiliation with, or
endorsement of, all of the disputed domain names for some type of commercial
gain. As such, Respondent is found to
have registered and used the disputed domain names in bad faith under Policy ¶
4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding
bad faith where the domain name in question is obviously connected with the
complainant’s well-known marks, thus creating a likelihood of confusion
strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding
that the respondent violated Policy ¶ 4(b)(iv) by
displaying the complainant’s mark on its website and offering identical
services as those offered by the complainant).
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 <marypoppinsonbroadway.com>, <marypoppinstickets.net>, <marypoppinstickets.org>, <hannahmontanaticketsonline.com>, and <littlemermaidticketsny.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: September 4, 2009
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