Disney Enterprises, Inc. v.
ll
Claim Number: FA1007001336979
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 <disneyoffer.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.
Paul M. DeCicco, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 22, 2010.
On July 23, 2010, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <disneyoffer.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 July 28, 2010, the Forum served the Complaint and all Annexes,
including a Written Notice of the Complaint, setting a deadline of August 17,
2010 by which Respondent could file a Response to the Complaint, via e-mail to
all entities and persons listed on Respondent’s registration as technical,
administrative, and billing contacts, and to postmaster@disneyoffer.com. Also on July 28, 2010, the Written Notice of
the Complaint, notifying Respondent of the email addresses served and the
deadline for a Response, was transmitted to Respondent
via post and fax, to all entities and persons listed on Respondent’s
registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on August 16, 2010.
On August 24, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Paul M. DeCicco as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends as follows:
Complainant Disney Enterprises, Inc., and/or its affiliated companies has been for many years the owner of hundreds of
registrations for the DISNEY® trademark and other trademarks (collectively
"Trademarks"), in countries all over the world. Complainant owns
rights in a variety of trademarks registered with the USPTO, most notable of
which is the DISNEY® mark (Reg. No. 1,162,727 issued on July 28, 1981).
The Trademarks are so widely accepted in the mind of the general public
that the Trademarks have become unquestionably famous and distinctive and have
acquired secondary meaning and distinctiveness throughout the
Complainant’s mark is confusingly similar to the Trademarks, as it
incorporates the Trademarks in their entirety, merely adding a generic word
"offer" to the Trademark.
Respondent has no legitimate interest in the domain name. Respondent is
not authorized by Complainant to use the domain name. Respondent's use of the domain
name does not and cannot constitute a bona
fide offering of goods or services since Respondent is using the domain
name to trade on the Complainant’s mark. Further, Complainant has not
authorized Respondent to use its Trademarks or to seek the registration of any
domain name incorporating the Trademarks. Respondent must have known when it
selected the disputed domain name that the public would incorrectly associate
it with Complainant and Complainant's marks. In fact, given the distinctiveness
and fame of the Trademarks, there is no plausible explanation for the
Respondent's registration of the domain name other than to trade upon the
goodwill the Complainant has developed in its Trademarks.
Additionally, the domain name is currently parked. Respondent's passive
holding of the website for almost five years evidences a lack of legitimate
rights.
Lastly, Respondent is not and has not been commonly known by the domain
name. Respondent does not use the Trademarks to identify himself on the
websites or for any other legitimate purpose. Even if Respondent has used the
trade names, such an unauthorized use does not establish legitimate interest in
the domain name. Thus, Respondent has no
legitimate interest in the domain name.
Respondent registered and uses
the domain name in bad faith. First, the fame of the
Trademarks combined with widespread marketing of Complainant's goods and
services and the registration of the Trademarks put Respondent on notice of
Complainant's Trademarks. The Trademarks are so internationally distinctive and
famous Respondent must have had actual knowledge of the Trademarks prior to the
domain name registration.
Second, by registering the domain name with actual knowledge of
Complainant's Trademarks, Respondent acted in bad faith by breaching its
service agreement with the registrar because Respondent falsely represented
that the registration does not "infringe on the intellectual property
rights of another User or any other person or entity." Thus, the
registration constituted bad faith under the UDRP. Respondent's false representation
that its domain name did not infringe the rights of any third party as proof of
bad faith.
Respondent's use of the confusingly similar domain name to
intentionally attract Internet users and profit through the receipt of
click-through fees by creating a strong likelihood of confusion with
Complainant's DISNEY mark is evidence of bad faith pursuant to Section 4(b)(iv) of the UDRP policy.
Since Complainant owns the Trademarks, Respondent's registration and
use is in bad faith as it failed to check whether the Trademarks were
registered prior to his registration of the domain name.
Respondent also evidences bad faith in its failure to cease and desist
from wrongful use of the domain name by not transferring the wrongfully
acquired domain name after being notified by Complainant of the unauthorized
use.
Further, bad faith should be found where, as here, Respondent has
established a pattern of conduct by registering multiple domain names which
appear to infringe other famous trademarks including "eBay,"
"Chevy," "Microsoft," "Earthlink," "George
Foreman," "Michael Jordan" and more.
B. Respondent
Respondent contends as follows:
The domain name <disneyoffer.com>
has nothing to do with Complainant. Respondent does not sell any
Disney products on this site. The site is not built. It is only
parked at GoDaddy.com.
Respondent has never used the domain name <disneyoffer.com> to solicit the Disney Brand or sell any
products in association with Walt Disney. Respondent has the name only parked
at GoDaddy.com and the GoDaddy website puts corresponding links relating to
whatever the domain name resembles the most. Respondent did not obtain this
domain name in bad faith or in order to exploit their company in any way.
Since the Walt Disney Company was contacting Respondent in their
interest to obtain the disputed domain name, Respondent offered to turn over
the disputed domain name to Complainant for fair market value. Respondent has
held onto the name for several years and has had renewal fees associated with
this domain.
Just because Complainant holds onto the name “disney” it does not have
the right to squash and try to control every other holder of the word “disney”
in the English speaking community or every domain name with the word “disney”
in it. They own the market and brand name, but they do not own the word “disney”
across the entire English language as long as those interests pose no threat or
try to infringe upon their business.
If Respondent has to turn over
the domain name to Complainant, it should at least in good faith have to give
Respondent the renewal fees paid over the past few years.
FINDINGS
Complainant has rights in the trademark
DISNEY by virtue of its registration of said mark with the United States Patent
and Trademark Office and otherwise.
At the time the time Respondent registered
the disputed domain name, Respondent knew of Complainant’s trademark rights in
DISNEY.
The registrant is listed on the WHOIS record
as “II.”
A “Joe Comeau” responded to the Complaint.
The website referenced by the at-issue domain
name contains links to Complainant’s competitors.
Respondent’s out-of-pocket costs with regard
to the at-issue domain name are less than $100.
Respondent offered the at-issue domain for
sale on the registrar’s website for a starting bid of $2,500.
Respondent offered to sell the at-issue
domain name to the Complainant after Respondent became aware of the dispute.
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 registered its DISNEY mark with
the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,162,727 issued July 28, 1981). Complainant’s
registration of its DISNEY mark is sufficient evidence of Complainant’s rights in the mark
under Policy ¶ 4(a)(i). 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.”).
The at-issue domain name wholly contains
Complainant’s well-known trademark. Concatenating the dictionary word “offers”
to Complainant’s mark forms the entire second level domain name and this
addition along with the further addition of the required top level domain (TLD),
here “.com,” is insufficient to differentiate the domain name from the Complainant’s trademark for the purposes of Policy ¶4(a). See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb.
Forum Sept. 21, 2004) (finding that the addition of the generic term “collection”
to Complainant’s HARRY POTTER mark failed to distinguish the domain name from
the mark); see also Hannover Ruckversicherungs-AG
v. Ryu,
FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be
identical to HANNOVER RE, “as … a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”).
Therefore, under
Policy ¶4(a)i the disputed domain name is confusingly
similar to a mark in which Complainant has rights.
The practical analysis of Policy ¶ 4(a)(ii) is two‑tiered. Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in the disputed domain name. The threshold for such showing is low. 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). Once Complainant establishes a prima facie case the burden effectively shifts to Respondent who must demonstrate that he nevertheless has rights and legitimate interests in the at-issue domain name.
Respondent is not commonly known by the
disputed domain name. Complainant has
not authorized Respondent to use its mark or to register a domain name
incorporating Complainant’s mark. WHOIS
information identifies the registrant as “II,” and indicates that Respondent is
not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum
Respondent offers no evidence which might tend to show that he has rights in respect of the domain name pursuant to Policy ¶4(c), or otherwise. Respondent offers no explanation as to why he registered a domain name which overtly references Complainant’s DISNEY trademark and he admits he has not built a website associated with the disputed domain name. Respondent states that the webpage referenced by the at-issue domain name is merely a holding page provided by the registrar, Go-Daddy. Respondent makes no claims regarding any intended use for the domain name. Furthermore, Respondent makes no claims that he is somehow making a legitimate non-commercial or fair use of the domain name.
The Panel thus finds that
Respondent has no rights and legitimate interests in respect of the disputed domain
name.
Complainant’s DISNEY trademark is well known
throughout the
Respondent surely knew of the Complainant’s
trademark in DISNEY at the time he registered the disputed domain name and thus
his silence regarding the reasons for registering the disputed domain name is telling.
It suggests that Respondent registered the disputed domain name precisely for
its trademark value, rather than in spite of it. Indeed, Respondent is no
stranger to registering domain names which appear to infringe well-known
trademarks including EBAY and CHEVY among others. Therefore, the Panel agrees with Complainant. Respondent
acted in bad faith by breaching its service agreement with the registrar.
Respondent falsely represented that registering the disputed domain name did
not infringe on the intellectual property rights of another User or any other person
or entity when he knew or should have known that it did.
Furthermore, after
receiving Complainant’s “cease and desist” letter, Respondent offered to sell
the disputed domain name to Complainant for an unspecified amount. Perhaps more importantly the record shows,
and Respondent does not deny that the disputed domain name was publically
offered for sale via the registrar’s web-based auction facility. The starting
bid was listed as $2,500. Thus there can be no conclusion that Complainant
instigated Respondent’s offer to sell or that Respondent’s offer was an attempt
to settle the parties’ dispute and as such an offer-in -compromise that is
arguably outside the purview of Policy
¶4(b)(i). Notably, the amount
Respondent listed as a starting bid for the disputed domain name is far in
excess of Respondent’s out-of-pocket costs. By Respondent’s admission those
costs are equal to no more than a few years of registration fees. And even if Respondent’s
offer to sell were not specific as to price, a general offer to sell a disputed
domain name to a complainant is nonetheless evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(i). ¶(b)I See Am.
Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum
Although
Respondent claims that the disputed domain name resolves to a parking website and
its content is outside of his control, in the instant case where there is a
famous trademark involved and Respondent shows no concern for the rights of trademark
holder this Panel finds that Respondent is ultimately responsible for any
offending material on his website as if he placed the material there himself.
One who registers a famous mark in in whole or in part should in effect
“inspect and make safe” any website referenced by such domain name to be sure
there is no infringement. He is accountable when he does not and the website
infringes another’s trademark. See
generally, Gold Medal Travel Grp. plc v.
Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008)
(where the disputed domain name had been parked, the panel found the “the Registrant is responsible for the content of the material
appearing on the webpage associated with the domain name in dispute.”). Therefore, Respondent’s registration
and use of the disputed
domain name, a domain name that resolves to a website featuring links to
third-parties offering goods and
services that compete with Complainant is further evidence of Respondent’s bad
faith pursuant to Policy ¶4(b)(iii). See
Persohn v. Lim, FA
874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use
pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name
to operate a commercial search engine with links to the complainant’s competitors);
see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes
that by redirecting Internet users seeking information on Complainant’s
educational institution to competing websites, Respondent has engaged in bad
faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Given
the forgoing, the Panel finds that Respondent registered and used <disneyoffer.com> in
bad faith.
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 <disneyoffer.com> domain name be TRANSFERRED
from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 31, 2010
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