Disney Enterprises, Inc. v. Jeremy Taylor
Claim Number: FA0911001295797
Complainant is Disney Enterprises, Inc. (“Complainant”), represented by J.
Andrew Coombs, of J. Andrew Coombs, A Professional Corporation,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <disneydigitalcopy.com>, registered with GoDaddy.com.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 23, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 24, 2009.
On November 23, 2009, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <disneydigitalcopy.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 November 30, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 21, 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@disneydigitalcopy.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 23, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <disneydigitalcopy.com> domain name is confusingly similar to Complainant’s DISNEY mark.
2. Respondent does not have any rights or legitimate interests in the <disneydigitalcopy.com> domain name.
3. Respondent registered and used the <disneydigitalcopy.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Disney
Enterprises, Inc., holds numerous of trademark registrations with the United
States Patent and Trademark Office (“USPTO”) for the DISNEY mark (e.g., Reg.
No. 1,162,727 issued
Respondent, Jeremy Taylor, registered the <disneydigitalcopy.com> domain name on December 6, 2008. The disputed domain name resolves to a website with links to third party websites unrelated to Complainant.
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 asserts rights in its DISNEY mark through its holding of trademark registrations for the DISNEY mark with the USPTO (e.g., Reg. No. 1,162,727 issued July 28, 1981). The Panel finds that Complainant has established rights in its DISNEY mark under Policy ¶ 4(a)(i) through its trademark registration with the USPTO. 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.”).
Complainant argues that Respondent’s <disneydigitalcopy.com> domain name is confusingly
similar to Complainant’s DISNEY mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name is
confusingly similar to Complainant’s DISNEY mark because Respondent’s disputed
domain name incorporates Complainant’s mark in its entirety, adds the generic
terms “digital” and “copy” and adds the generic top-level domain (“gTLD”)
“.com.” The Panel finds that the
addition of the generic terms “digital” and “copy” creates a confusing
similarity between the disputed domain name and Complainant’s mark. See Arthur Guinness Son & Co. (
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has failed to submit a Response to these proceedings. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). Nevertheless, the Panel will examine the record to determine if Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
The WHOIS information lists the registrant as “Jeremy Taylor.” Respondent is not authorized to use Complainant’s mark or any domain names incorporating the DISNEY mark; nor is the site affiliated with or endorsed or authorized by Complainant. Without evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent’s <disneydigitalcopy.com> domain name was registered
on December 6, 2008. The disputed domain
name resolves to a website with links to third party websites unrelated to
Complainant. Respondent’s use of the
disputed domain name relies on the confusingly similar domain name to attract
Internet users to its website by creating a likelihood of confusion with
Complainant’s DISNEY mark. The Panel
finds that this use does not constitute a bona
fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See
Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar.
17, 2003) (finding that the respondent’s diversionary use of the complainant’s
mark to attract Internet users to its own website, which contained a series of
hyperlinks to unrelated websites, was neither a bona fide offering of
goods or services nor a legitimate noncommercial or fair use of the disputed
domain names); see also 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).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent has a pattern of
registering domain names that appear to infringe on other famous trademarks and
has registered multiple domain names of this nature (e.g.,
<ipoddigitalcopy.com>, <sonydigitalcopy.com>, and
<blu-raydigitalcopy.com>). The Panel
finds that Respondent’s pattern of registering infringing domain names is
evidence of bad faith registration and use of Complainant’s DISNEY mark
pursuant to Policy ¶ 4(b)(ii). See
Sony Kabushiki Kaisha v. Anderson, FA 198809 (Nat. Arb. Forum
Respondent’s is using the confusingly similar domain name to attract Internet users seeking Complainant’s products or services and divert them to a website offering links to third party websites unrelated to Complainant. The Panel presumes that Respondent is benefiting through the receipt of referral fees. The Panel finds that Respondent’s use is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
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 <disneydigitalcopy.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: January 6, 2010
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