Disney Enterprises, Inc. v.
Take Stage
Claim Number: FA1003001310568
PARTIES
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 <disneysworldofcolor.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.
Flip Petillion as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 26, 2010; the
National Arbitration Forum received a hard copy of the Complaint on March 2, 2010.
On March 1, 2010, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <disneysworldofcolor.com> domain name
is 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 March 3, 2010, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of March 23, 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@disneysworldofcolor.com by e-mail.
A timely Response was received and determined to be complete on March 23, 2010.
A timely Additional Submission from Complainant was received on March
29, 2010.
On April 6, 2010, a timely Additional Submission from Respondent was
received.
On March 30, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Flip Petillion as Panelist.
RELIEF SOUGHT
Complainant requests that the disputed domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that the disputed domain name is confusingly
similar to its famous, long-standing and widely registered trademarks, as the
disputed domain name fully incorporates a trademark in which Complainant claims
to have rights. Complainant further claims that Respondent has no rights or
legitimate interest in respect of the disputed domain name. According to
Complainant, Respondent has not used the disputed domain name in connection
with a bona fide offering of services
or a legitimate non-commercial use. Also, Respondent has not been commonly
known by the disputed domain name, according to Complainant. Finally,
Complainant considers that the disputed domain name was registered and being
used in bad faith.
In its additional submission, Complainant contends that Respondent
admits that he was aware of the trademarks
and specifically chose the disputed domain
name in order to be associated with Complainant's intended water show at
Complainant further
contends that the current use by the Respondent of the disputed domain name is of no relevance, but that the
inactivity of the disputed domain name for over a year shows a lack of
legitimate interest in the disputed domain name.
Finally, Complainant contends that Respondent’s
admittance that it was aware of the trademarks as well as of Complainant’s
announcement and intention to create a light show at its
B. Respondent
Respondent
does not deny or challenge Complainant’s rights to its mark and contends that
it used a similar name in order to maximize the opportunity to contact other
fans. Respondent believes that its use of the disputed domain name benefits the
Complainant.
Respondent
further contends that it had a legitimate interest in the disputed domain name
as it was in the process of preparing a fan site when it received a cease and desist notice from Complainant. Respondent also contends
that it launched the fan site prematurely so it could prove a bona fide offering in good faith.
Finally,
Respondent considers that the disputed domain name was not registered or used
in bad faith as it claims that its website is profit-free and not commercial.
Respondent also claims that it did not seek to disrupt the business of
Complainant and that it has never and would never use the disputed domain name
for commercial gain to misleadingly divert consumers or to tarnish the
trademark or service mark of Complainant.
In
its additional submission, Respondent contends that the purpose of the UDRP is
not to prevent registrants from incorporating third parties’ trademarks into their domain names or even
questionable cases of cyber squatting. Respondent claims that the Policy is only intended to combat abusive, bad
faith cyber squatting. According to
Respondent, there is no chance that internet users would be confused that its unofficial
fan site is connected to
Complainant.
Respondent
further contends that the disputed domain name was only inactive for a short
period of time, during which it was linked to a parked page containing ads
outside of Respondent’s control. Respondent contends that he has never
financially gained from the website.
Respondent also contends that he did not disrupt
Complainant’s business or confused internet users as internet users will have
no problem finding Complainant’s sites dedicated to the “Disney’s World of
Color” show, using Google or Yahoo!.
Respondent finally claims to have been cooperative throughout
this process and has not evidenced bad faith in registration or use and has not
intention to do so.
FINDINGS
Complainant is a worldwide leading producer
of children’s entertainment goods and services such as movies, television
programs, books and merchandise. Complainant also owns and operates theme parks
in several countries. In October 2007 and July 2009, Complainant’s plans to start
a water show, called “World of Color” in its California Adventure theme park
was announced in press articles.
Complainant is the holder of the DISNEY
trademark, registered with the United States Patent and Trademark Office (Reg.
No. 1,162,727 issued on July 28, 1981). This trademark is a world-wide well-known
and famous trademark.
It is stated in the WHOIS records that the
disputed domain name <disneysworldofcolor.com> was registered on 3
February 2009. The disputed domain name was registered on that date by Respondent.
The
disputed domain name was first used as a parking page with commercial links in
the period between the registration on February 3, 2009 and March 26, 2009.
As of February 3, 2010, the disputed domain name resolved to an inactive FTP site which linked to files not approved or licensed by the Complainant. Subsequent to Respondent’s receipt of cease and desist letters from Complainant, Respondent changed the webpage to which the disputed domain name resolved to a generic blog site without content. Afterwards, Respondent changed the website into a fan-site with content.
On February
26, 2010, Complainant submitted a Complaint to the National Arbitration
Forum and asked for the transfer of the disputed domain name.
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 argues that it has rights in various DISNEY trademarks
and shows to have rights in the DISNEY trademark by virtue of its trademark
registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,162,727 issued July 28,
1981). According to the Panel this
trademark registration with the USPTO is sufficient to establish Complainant’s
rights in the DISNEY trademark. 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)).
Moreover,
the DISNEY trademark is a is a
world-wide well-known and famous trademark
Complainant alleges that Respondent’s <disneysworldofcolor.com>
disputed domain name is confusingly similar to Complainant’s DISNEY trademark
because Respondent’s disputed domain name incorporates Complainant’s DISNEY trademark,
adding only an “s” to DISNEY, the descriptive terms “world of color” (referring
to Complainant’s nighttime water show and or Complainant’s ), and the generic
top-level domain (“gTLD”) “.com” to differentiate the two. According to the Panel, adding an “s” and
descriptive terms to Complainant’s mark are insufficient to distinguish the
disputed domain name from Complainant’s mark.
See Disney Enterprises Inc. v. John Zuccarini, Cupcake City and Cupcake
Patrol, D2001-0489 (WIPO June 19, 2001) (finding the
<disneychanel.com>, <disneywallpaper.com>, <disneywold.com>,
<disneywolrd.com>, <disneyworl.com> and <walddisney.com>
domain names to be confusingly similar to the DISNEY trademark); see
also Whitney Nat’l Bank v.
Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of
generic words with an obvious relationship to Complainant’s business and a gTLD
renders the disputed domain name confusingly similar to Complainant’s mark
pursuant to Policy ¶ 4(a)(i).”); see also
Disney Enters. Inc. v. McSherry,
FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the
<disneyvacationvillas.com> domain name to be confusingly similar to
Complainant’s DISNEY mark because it incorporated Complainant’s entire famous
mark and merely added two terms to it); see
also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22,
2007) (finding that the addition of the letter “s” to a registered trademark in
a contested domain name is not enough to avoid a finding of confusing
similarity under Policy ¶ 4(a)(i)). Moreover,
a gTLD is generally considered irrelevant to a Policy ¶ 4(a)(i)
analysis. See Trip
Network Inc. v. Alviera, FA 914943
(Nat. Arb. Forum Mar. 27, 2007)
(concluding that the affixation of a gTLD to a domain name is irrelevant to a
Policy ¶ 4(a)(i) analysis). Accordingly, the Panel finds that Respondent’s
disputed domain name <disneysworldofcolor.com>
is confusingly similar to Complainant’s world-wide well-known and famous DISNEY
trademark under Policy ¶ 4(a)(i).
It is established case law that it is sufficient for the Complainant to make a prima facie showing that Respondent has no right or legitimate interest in the disputed domain name under Policy ¶ 4(a)(ii) in order to shift the burden of proof to the Respondent. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., D2003-0455 (WIPO August 26, 2003) (“Since it is difficult to prove a negative (i.e. that Respondent lacks any rights or legitimate interests in the mark) – especially where the Respondent, rather than the Complainant, would be best placed to have specific knowledge of such rights or interests – and since Paragraph 4(c) describes how a Respondent can demonstrate rights and legitimate interests, a Complainant’s burden of proof on this element is light. Hence, Complainant must make at least a prima facie showing that Respondent has no rights or legitimate interests in the mark. After Complainant has met its initial burden of proof, if Respondent fails to submit a response Complainant will be deemed to have satisfied Paragraph 4 (a) ii of the Policy.”); See also Belupo d.d. v. WACHEM d.o.o., D2004-0110 (WIPO April 14, 2004) (“While the overall burden of proof is on Complainant, the element of possible rights or legitimate interests of Respondent in the disputed domain name involves Complainant proving matters, which are peculiarly within the knowledge of Respondent. It involves the Complainant in the often impossible task of proving the negative. This should be approached as follows: Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, Respondent has no rights to the name of which he is aware, he has not given any permission to Respondent). Unless the allegation is manifestly misconceived, Respondent has to demonstrate his rights or legitimate interests in respect of the domain name under paragraph 4 (c) of the Policy.”); 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 UDRP ¶ 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.”).
Complainant asserts that Respondent is
neither commonly known by the disputed domain name nor authorized to use
Complainant’s mark in the disputed domain name.
The WHOIS information for the disputed domain identifies the registrant
as “Take Stage,” a name that is not nominally associated with the disputed
domain name. Based on the WHOIS
information and the lack of authorization from Complainant, the Panel finds
that Respondent is not commonly known by the disputed domain name and
accordingly possesses no rights and legitimate interests in the disputed domain
name under 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
In Complainant’s Additional Submission,
Complainant argues that Respondent’s disputed domain name initially resolved to
a parked website displaying third-party links.
Complainant argues that Respondent was likely receiving compensation
from these links in the form of “click-through” fees. According to the Panel, such a parked website
with third-party links is not bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use according to Policy ¶ 4(c)(iii). See Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396
(Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which
is blank but for links to other websites, is not a legitimate use of the domain
names); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629
(Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the
disputed domain name to redirect Internet users to commercial websites,
unrelated to the complainant and presumably with the purpose of earning a
commission or pay-per-click referral fee did not evidence rights or legitimate
interests in the domain name).
Complainant contends
that Respondent has no rights and legitimate interests in the disputed domain
name because Respondent is not using the disputed domain name in connection
with a bona fide offering of goods or
services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or
4(c)(iii). Complainant alleges that
Respondent failed to make active use of the disputed domain name between its
use of a parked website up until it received Complainant’s cease-and-desist
letter, which is evidence of a lack of rights and legitimate interests. Complainant asserts that the disputed domain
name initially resolved to an inactive FTP site without any content. Subsequent to receiving the cease and desist
letters from Complainant, Complainant asserts that Respondent modified the site
to display a generic blog without substantive content. These facts indicate a failure to make an
active use of the disputed domain name by Respondent, supporting a conclusion
that Respondent is not using the disputed domain name for a purpose in keeping
with the requirements of Policy ¶ 4(c)(i) and
Policy ¶ 4(c)(iii) and accordingly has
no rights and legitimate interests. See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that when the respondent declares its
intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1)
‘demonstrable’ evidence of such preparations to use the domain name, and 2)
that such preparations were undertaken ‘before any notice to [Respondent] of the
dispute’”); see also U.S. News &
World Report, Inc. v. Zhongqi, FA 917070
(Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s
failure to associate content with its disputed domain name evinces a lack of
rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
Respondent alleges it intended to
use the disputed domain name to create a website. However, Respondent’s stated and intended use
of the disputed domain name in connection with a fan club website without
further evidence of actual use for that purpose or preparations for actual use
for that purpose, prior to any notice by the Complainant of the dispute is not
sufficient to establish Respondent’s rights and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii) according
to the Panel. See Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when the
respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i)
requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to
use the domain name, and 2) that such preparations were undertaken ‘before any
notice to [Respondent] of the dispute’”); see
also Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2,
2000) (finding that the respondent had no rights or legitimate interests where
he decided to develop the website for the sale of wall products after receiving
the complainant’s “cease and desist” notice).
In
its additional submission, Respondent recognizes that the domain name was used
as a parking page with commercial links in the period between the registration
on February 3, 2009 and March 26,
2009, but claims that this was out of its control. According to Respondent, the
domain name was used as a landing
page as of March 26, 2009 until November 22, 2009 through which Respondent collected over 1000 names and email addresses of
interested parties.
After
this period, the Domain Name resolved to an inactive FTP site which
linked to files not approved or licensed by the Complainant, as of February 3,
2010. Subsequent to Respondent’s receipt
of cease and desist letters, Respondent changed the webpage to which the Domain
Name resolved to a generic blog site without content. Afterwards, Respondent
changed the website into a fan-site with content. However, Respondent passively
held the website for over a year. According to the Panel, passive holding of
the website for over a year evidences a lack of legitimate rights. See 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 also 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); See also 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); Am. Online, Inc.
v. Kloszewski,
FA 204148 (NAF Dec. 4, 2003) (“Respondent's passive holding of the
<aolfact.com> domain name for over six months is evidence that Respondent
lacks rights and legitimate interests in the domain name.”). Respondent cannot claim legitimate rights in
the Domain Name by simply putting up a generic blog site with no meaningful
content upon notice of Disney’s intent to pursue transfer of this domain
name. See State Farm Mutual
Automobile Insurance Company v. Dewey McKay d/b/a PMA Media Group, FA811699
(NAF Nov. 14, 2006) (finding no legitimate use for a blog site, noting “[i]t is
easy to set up a web site to create a blog with no content… Without content
that has any meaning…, it appears the blog is just being used as a subterfuge
to show a bona fide use. With all due respect, this Panel will not be
so easily misled.”); see also Harrah’s
License Company, LLC v. Poul Laurent c/o KRC Software Group, Inc.,
FA1119069 (NAF Jan. 15, 2008) (finding no legitimate use for a blog site); State Farm Mut. Auto. Ins. Co. v. LaFaive,
FA 95407 (NAF Sept. 27, 2000) (“The unauthorized providing of information and
services under a mark owned by a third party cannot be said to be the bona
fide offering of goods or services.”).
Registration in Bad Faith
In the instant case, Respondent must have had knowledge of Complainant’s rights in the DISNEY trademark at the moment he registered the disputed domain name, since Complainant’s trademark is a world-wide well-known and famous trademark. Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith at the moment of registration. See Nintendo v. Beijin, D2001-1070 (WIPO November 8, 2001) (finding where the word POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the Complainant suggested opportunistic bad faith); BellSouth Intellectual Property Corporation v. Serena, Axel, D2006-0007 (WIPO February 21, 2006) (finding, where it was held that Respondent acted in bad faith when registering the disputed Domain Name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix suggested knowledge of Complainant’s rights in the trademarks).
Since Respondent must have had knowledge of Complainant’s rights in the DISNEY trademark at the moment he registered the disputed Domain Name, and since Respondent had no legitimate interest in the disputed domain name, it is established that the domain name was registered in bad faith.
Moreover, the fact that Respondent
registered the disputed domain name shortly after the announcement of the opening
of Complainant’s new World of Color show indicates opportunistic bad faith on
the part of Respondent. According to the
Panel, Respondent’s efforts to benefit from the notoriety of Complainant’s mark
and announcements of a new attraction indeed support a conclusion of
opportunistic bad faith under Policy ¶ 4(a)(iii). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding
that the “domain names are so obviously connected with the Complainants that
the use or registration by anyone other than Complainants suggests
‘opportunistic bad faith’”); see also Sota v. Waldron,
D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of
the <seveballesterostrophy.com> domain name at the time of the announcement
of the Seve Ballesteros Trophy golf tournament “strongly indicates an
opportunistic registration”).
Use in bad faith
In its Additional Submission,
Complainant asserts Respondent’s disputed domain name previously resolved to a
parked website. This is recognized by Respondent, who claims that the use of the domain
name as a parking page in the period from February 3, 2009 and March 26, 2009
was outside of its control. According to Respondent, the domain name was used
as a landing page as of March 26,
2009 until November 22, 2009 through
which Respondent collected over 1000
names and email addresses of interested
parties.
After this period, the Domain Name resolved to an inactive FTP site which linked to files not approved or licensed by the Complainant, as of February 3, 2010. Subsequent to Respondent’s receipt of cease and desist letters, Respondent changed the webpage to which the Domain Name resolved to a generic blog site without content. Afterwards, Respondent changed the website into a fan-site with content. However, Respondent passively held the website for over a year.
According to the Panel, Respondent’s prior use of the disputed domain name to resolve to a parked website is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). Respondent’s use of the disputed domain name to resolve to a landing page through which Respondent collected names and email addresses also evidences bad faith, as the collection of names and email addresses undoubtedly has a commercial value. According to the Panel, Respondent’s use of the domain name to collect names and email through a landing page must be seen as an attempt to attract Internet users to the Respondent’s website resolving from the confusingly similar disputed domain name for commercial gain. As the intentional attempt to attract Internet users for commercial gain to a domain name resolving from a confusingly similar domain name evidences bad faith under Policy ¶ 4(b)(iv), insofar a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on your web site or location is created, the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv).
Complainant alleges that
Respondent’s intended use of the disputed domain name in connection with a fan
site for Complainant’s World of Color show also indicates bad faith
registration and use because Respondent admits it was aware of Complainant’s
rights in the DISNEY mark and Complainant’s connection with the “World of
Color” phrase that refers to Complainant’s new nighttime water show. Complainant contends that registering the
disputed domain name despite Respondent’s knowledge of Complainant’s rights in
the mark and in breach of the registrar’s registration agreement is evidence of
bad faith, notwithstanding a purpose to operate a fan website, because the
disputed domain name creates confusion as to affiliation between Respondent’s
disputed domain name and Complainant. According to the Panel, a fan site that
uses a domain name that is confusingly similar to a trademark in which a
complainant has rights, can indeed create confusion as to affiliation between
the disputed domain name and the trademark holder. As a result, a domain name
that is linked to a fan site can be registered and used in bad faith according
to Policy ¶ 4(a)(iii). See
Respondent argues that he did not
seek any likelihood of confusion as to affiliation between the disputed domain
name and the trademark holder, as Respondent included the word “unofficial” in
its website and a disclaimer. Nevertheless, the inclusion of a disclaimer and/or
the word “unofficial” on the resolving website of the disputed domain name does
not mitigate a finding of bad faith registration and use according to the Panel. See Continental Airlines, Inc. v.
Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does note mitigate a finding of bad
faith under Policy ¶ 4(a)(iii) “); see also Ciccone v. Parisi, D2000-0847
(WIPO Oct. 12, 2000) (“Respondent’s use of
a disclaimer on its website is insufficient to avoid a finding of bad
faith. First, the disclaimer may be
ignored or misunderstood by Internet users.
Second, a disclaimer does nothing to dispel initial interest confusion
that is inevitable from Respondent’s actions.
Such confusion is a basis for finding a violation of Complainant’s
rights.”).
Complainant alleges that
Respondent’s failed to make active use of the disputed domain name between when
it displayed a parked website until after receiving Complainant’s
cease-and-desist letter. The Panel may
find that Respondent’s failure to make an active use of the disputed domain
name supports a finding of bad faith registration and use according to Policy ¶
4(a)(iii). See Am.
Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s
failure to make active use of its domain name in the three months after its
registration indicated that the respondent registered the disputed domain name
in bad faith); see also Pirelli & C. S.p.A. v.
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 <disneysworldofcolor.com> domain name
be TRANSFERRED from Respondent to Complainant.
Flip Petillion, Panelist
Dated: April 14, 2010
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