Disney Enterprises, Inc. v.
JalapenoWare LLC
Claim Number: FA1001001302464
PARTIES
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 <diseny.com> and <dsiney.com>,
registered with Godaddy.com, Inc.
PANEL
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.
James Bridgeman as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 11, 2010; the
National Arbitration Forum received a hard copy of the Complaint on January 12, 2010.
On January 12, 2010, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <diseny.com> and <dsiney.com>
domain names are registered with Godaddy.com,
Inc. and that the Respondent is the current registrant of the name. 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 January 14, 2010, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of February 3, 2010 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@diseny.com and postmaster@dsiney.com by e-mail.
A timely Response was received and determined to be complete on February 1, 2010.
On February 8, 2010 pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed James Bridgeman as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant submits that it is a
worldwide producer of children’s entertainment goods and services such as
movies, television programs, books, and merchandise. Complainant further states that it owns and
operates theme parks in several countries, including the Walt Disney World
theme park in
Complainant claims rights in a
number of trademarks registered with the United
States Patent and Trademark Office (“USPTO”), in association with these
goods and services. In particular Complainant relies on its
Complainant has additionally submitted printouts evidencing Complainant’s ownership of numerous domain name registrations incorporating the DISNEY trademark including <disney.com> and <disneyworld.com>.
Complainant submits that the disputed domain names fully incorporate Complainant’s famous, long standing and widely registered trademarks and the disputed domain names are confusingly similar to Complainant’s DISNEY trademarks.
Complainant argues that its
registered trademarks have become unquestionably famous and distinctive and have
acquired secondary meaning and distinctiveness throughout the
Complainant submits that Respondent has no rights or legitimate interest in the disputed domain names and advances a number of distinct grounds in support of its submission.
Complainant submits that Respondent is not authorized by Complainant to use the domain names, citing Guerlain S.A. v. Peikang, D2000-0055 (WIPO March 21, 2000) where the panel stated: "[I]n the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the Domain Name could be claimed by Respondent.”
Complainant submits that Respondent’s engagement in the practice of typosquatting fails to establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) citing Harry and David v. S. Pace, FA1276989 (NAF September 14, 2009); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (NAF Aug. 14, 2003) (finding that the domain names <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> were intentional misspellings of the complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”); Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”).
Complainant has furnished evidence that the disputed domain names are currently redirecting to Complainant’s web page, and argues that Respondent’s passive holding of the disputed domain names further evidences a lack of legitimate rights, citing Americor Mortgage, Inc. v. Bowman, FA 93548 (NAF April 22, 2002) (“Respondent's passive holding of the domain name demonstrates a lack of rights and legitimate interests”); see Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that Respondents have not established any rights or legitimate interests in the domain name); Bloomberg L.P. v. Sandhu, FA 96261 (NAF Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use disputed domain names in any way); Flor-Jon Films, Inc. v. Larson, FA 94974 (NAF July 25, 2000) (finding that Respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name).
Complainant states that it has not authorized Respondent to use its DISNEY trademarks or to seek the registration of any domain name incorporating its DISNEY trademarks.
Complainant submits that Respondent must have known when it selected the disputed domain names that the public would incorrectly associate them with Complainant and Complainant’s marks. Complainant further argues that given the distinctiveness and fame of its DISNEY trademarks, there is no plausible explanation for Respondent’s registration of the disputed domain names other than to trade upon the goodwill the Complainant has developed in its trademarks. Respondent had no legitimate interest in doing so. Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO September 5, 2000).
Finally, Complainant argues that Respondent is not and has not been commonly known by the disputed domain names. Respondent does not use Complainant’s trademarks to identify itself on the websites or for any other legitimate purpose. In fact, Respondent merely uses the disputed domain names to redirect to Complainant’s web page. Complainant further argues that even if Respondent has used the trade name, such an unauthorized use does not establish legitimate interest in the disputed domain names. Compaq Information Technologies Group, LP v. Waterlooplein Ltd., FA0204000109718 (NAF May 29, 2002). Thus, Respondent has no legitimate interest in the Domain Names.
Complainant submits that Respondent registered and is using the disputed domain names in bad faith.
Complainant submits that Respondent’s registration and use of the disputed domain names meets the bad faith elements set forth in Section 4(b)(i) of the Policy. First, the fame of the DISNEY trademarks combined with widespread marketing of Complainant’s goods and services and the registration of the DISNEY trademarks put Respondent on notice of Complainant’s trademarks. Complainant submits that its DISNEY trademarks are so internationally distinctive and famous that Respondent must have had actual knowledge of them prior to the registration of the disputed domain names.
Complainant argues that by registering the disputed domain names with actual knowledge of Complainant’s trademarks, Respondent acted in bad faith by breaching its registration agreement with the registrar because it falsely represented that the registration does not conflict with the “legal rights of a third party or a third party’s trademark or trade name.” Thus, the registration constituted bad faith under the Policy. See Google Inc. v. wwwgoogle.com, D2000-1240 (WIPO November 9, 2000) (finding Respondent's false representation that its domain name did not infringe the rights of any third party as proof of bad faith).
Complainant argues that since Complainant owns the DISNEY trademarks and has done so for decades, Respondent’s registration and use is in bad faith. See Young Genius Software AB v. MWD, D2000-0591 (WIPO Aug.7, 2000) (finding that a failure to check whether a name was registered was evidence of bad faith); Sun Chronicle v. Web Solutions Inc., FA 94895 (NAF July 18, 2000) (holding that registering a well-known mark or failing to check whether the registration would infringe on rights held by another constitutes bad faith registration).
Complainant further submits that bad faith should be found where, as here, Respondent has established a pattern of conduct by registering multiple domain names which infringe on Complainant’s rights, particularly where Respondent has engaged in typosquatting. See Exhibit I; Harry and David v. Lidnick Webcorp, Inc., FA1277355 (NAF September 10, 2009) (“[W]e have already concluded that Respondent has engaged in illicit typo-squatting, which is itself proof of bad faith registration and use of the contested domain under Policy ¶ 4(a)(iii).”); Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that a respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also Technology Properties, Inc. v. Syed Hussein, et al., FA 095411 (NAF September 14, 2000) (finding bad faith where pattern of conduct evidenced by registering numerous domain names that infringe on famous marks).
It is submitted by Complainant that Respondent also evidences bad faith in its failure to cease and desist from wrongful use of the disputed domain names after being notified by Complainant of the unauthorized use. Complainant has furnished copies of correspondence to Respondent regarding the disputed domain names as an annex to the Complaint. In its initial response, Respondent admits that previous use of the disputed domain names competed with Complainant’s trademarks, yet does not agree to transfer the disputed domain names to Complainant, the rightful owner of the trademarks, and stopped responding to Complainant’s communication attempts.
In conclusion Complainant submits that its rights in the DISNEY trademarks, Respondent’s lack of legitimate interest in the disputed domain names and Respondent’s bad faith, warrant transfer of the disputed domain names to Complainant under the Policy.
B. Respondent
In the
Response, Respondent stated that it admits no wrongdoings on its part, yet it
does not wish to be involved in a legal dispute with Complainant.
Respondent stated that it would relinquish all rights
to the domain names and the names can be transferred to Complainant if the Complainant would supply a signed written
statement that that no other legal proceedings regarding the domain
names in question will be filed against either Respondent or any prior registrants of the domain names and the
Complainant were to agree to release both
Respondent and all prior registrants from any damages and all related liability with respect to the domain names in
question.
FINDINGS
Complainant is the owner of the
Complainant has established rights and
goodwill in the trademark DISNEY in the
Both of the disputed domain names <diseny.com> and <dsiney.com>
are confusingly similar to Complainants DISNEY trademarks.
Respondent has no rights or legitimate
interest in the disputed domain names.
The disputed domain names were registered and
are being used in bad faith.
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.
Complainant has furnished evidence that it is
the owner of the
Complainant has rights in the trademark DISNEY
in the United States and other jurisdictions throughout the world through its
portfolio of registered domain names and its extensive use of the DISNEY mark
in the supply of goods and provision of services in course of its business in
the field of entertainment including movie and television production, book
publication and theme parks.
This Panel finds that both of the disputed
domain names <diseny.com> and <dsiney.com> are
confusingly similar to Complainant’s the DISNEY trademark. Each of the domain
names are composed of the same letters as the Complainant’s mark.
The first three letters of the <diseny.com> are identical to and in the same order as the
first three letters in the DISNEY mark. The second syllables in both the domain
name and the trademark are also composed of the same three letters but in
different order. Both the <diseny.com> and the DISNEY mark end with the letter “y”.
The first three letters of the <dsiney.com>
domain name are identical to the first three letters in the DISNEY mark
although in a different order. The second syllable in <dsiney.com> is
identical to the second syllable in the DISNEY mark.
Both the disputed domain names and the
Complainant’s mark consist of the same six letters and both the disputed domain
names and the Complainant’s mark commence with the letter “d” and end with the
letter “y”.
Furthermore the overall appearance of the
domain names and the likely pronunciation of the words are very similar.
Neither the transposition of
letters, nor the addition of the gTLD extension are enough to distinguish
either of the domain names and Complainant’s DISNEY trademark. See Wyndham IP
Corp. v. LaPorte Holdings, Inc., FA 373545 (Nat. Arb. Forum Jan. 17,
2005) (finding the <wynhdam.com> and <wyandham.com> domain names to
be confusingly similar to the complainant’s WYNDHAM mark because the domain
names merely transposed letters in the mark); see also Google Inc. v. Jon
G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com>
to be confusingly similar to the complainant’s GOOGLE mark and noting that
“[t]he transposition of two letters does not create a distinct mark capable of
overcoming a claim of confusing similarity, as the result reflects a very
probable typographical error”).
This Panel finds that Complainant has satisfied
the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no
rights or legitimate interest in the disputed domain names.
Complainant has furnished evidence that Respondent is not putting the disputed domain names to any active use. The disputed domain names are currently redirecting to Complainant’s web page in circumstances where Respondent has no business connection with Complainant and Complainant has not given any permission to Respondent to do so.
It is well established that once a complainant has made out a prima facie case that a respondent has no rights or legitimate interest in a domain name the onus of proof shifts to the respondent under the Policy to prove its rights or legitimate interest. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, 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.”).
Despite having been given the opportunity to provide an explanation and to establish its rights or interest in the domain name, Respondent has furnished no such evidence in its Response which is a simple denial of Complainant’s claims.
In the circumstances this Panel finds that Complainant has satisfied the second element of the test in Policy ¶ 4(a)(ii). .
It is clearly more than a coincidence that
two such similar domain names which are in turn confusingly similar to Complainant’s
DISNEY trademark were chosen and registered.
Complainant has a long and well established
reputation in the DISNEY mark though it’s extensive use in films, media,
publishing and the entertainment industry throughout the world. There is no
doubt that the registrant of the domain name was aware of Complainant’s DISNEY
mark when the domain names were registered and in fact chose the domain names
because of their confusing similarity with the Complainant’s name and mark.
This Panel finds that it can take an
inference of bad faith registration and use from the fact that Respondent is
clearly engaged in typosquatting.
Despite the fact that Respondent appears not to
have put the disputed domain names to any active use, except to resolve to
Complainant’s website, this Panel is satisfied that on the balance of
probabilities the domain names were registered and are being used in order to
take opportunistic and predatory advantage of Complainant’s reputation and
goodwill in the DISNEY trademark.
Since the decision
in Telstra Corporation Limited v. Nuclear
Marshmallows Case No. D2000-0003 (WIPO, February 18, 2000) it has been accepted that in certain
circumstances passive holding of a domain name may be taken as evidence of bad
faith registration and use.
The particular circumstances in casu which lead to this conclusion
are:
i. Complainant’s trademark has a strong reputation and is widely known;
ii. Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,
iii. it is not possible to conceive of any plausible actual or contemplated active use of the domain name by Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.
In light of these particular circumstances, this Panel concludes that Respondent’s passive holding of the domain names satisfies the requirement of Policy ¶ 4(a)(iii) that the domain name was registered and is being used in bad faith by Respondent.
In the circumstances this Panel finds that
Complainant has also satisfied the third and final element of the test in Policy ¶ 4(a)(iii) and
is entitled to have the disputed domains transferred as requested.
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 <diseny.com> and <dsiney.com> domain names be TRANSFERRED
from Respondent to Complainant.
James Bridgeman, Panelist
Dated: February 22, 2010
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