Disney Enterprises, Inc. and ESPN, Inc. v. Josh Agho
Claim Number: FA1102001373551
Complainant is Disney Enterprises, Inc. and ESPN, Inc. (“Complainant”), represented by J. Andrew Coombs of J. ANDREW COOMBS, A Professional Corporation, California, USA. Respondent is Josh Agho (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <disneydigitalbook.com>, <clubpenguin-tr.com>, <espninsidedeal.com>, <kickbutowski.com>, <kickbuttowskigames.com>, and <mickeymousekercize.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 17, 2011; the National Arbitration Forum received payment on February 17, 2011.
On February 17, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <disneydigitalbook.com>, <clubpenguin-tr.com>, <espninsidedeal.com>, <kickbutowski.com>, <kickbuttowskigames.com>, and <mickeymousekercize.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 18, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 10, 2011 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@disneydigitalbook.com, postmaster@clubpenguin-tr.com, postmaster@espninsidedeal.com, postmaster@kickbutowski.com, postmaster@kickbuttowskigames.com, and postmaster@mickeymousekercize.com. Also on February 18, 2011, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 17, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <disneydigitalbook.com> domain name is confusingly similar to Complainant’s DISNEY mark.
Respondent’s <clubpenguin-tr.com> domain name is confusingly similar to Complainant’s CLUB PENGUIN mark.
Respondent’s <espninsidedeal.com> domain name is confusingly similar to Complainant’s ESPN mark.
Respondent’s <kickbutowski.com> and <kickbuttowskigames.com> domain names are confusingly similar to Complainant’s KICK BUTTOWSKI: SUBURBAN DAREDEVIL mark.
Respondent’s <mickeymousekercize.com> domain name is confusingly similar to Complainant’s MICKEY MOUSE mark.
2. Respondent does not have any rights or legitimate interests in the <disneydigitalbook.com>, <clubpenguin-tr.com>, <espninsidedeal.com>, <kickbutowski.com>, <kickbuttowskigames.com>, and <mickeymousekercize.com> domain names.
3. Respondent registered and used the <disneydigitalbook.com>, <clubpenguin-tr.com>, <espninsidedeal.com>, <kickbutowski.com>, <kickbuttowskigames.com>, and <mickeymousekercize.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant provides family entertainment goods and services such as movies, television programs, books, and merchandise. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its DISNEY (e.g., Reg. No. 1,162,727 issued July 28, 1981), ESPN (e.g., Reg. No. 1,437,972 issued April 28, 1987), and MICKEY MOUSE marks (e.g., Reg. No. 315,056 issued July 17, 1934). Complainant has applied for trademark registrations with the USPTO for its CLUB PENGUIN (Ser. No. 77,049,399 filed on November 22, 2006) and KICK BUTTOWSKI: SUBURBAN DAREDEVIL marks (Ser. No. 77,725,367 filed on April 29, 2009).
Respondent registered the <disneydigitalbook.com>, <clubpenguin-tr.com>, <espninsidedeal.com>, <kickbutowski.com>, <kickbuttowskigames.com>, and <mickeymousekercize.com> domain names no earlier than October 29, 2007. The disputed domain names resolve to websites that feature hyperlinks to both third-party competitors of Complainant and unrelated third-parties.
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.
The Panel finds Complainant has established rights in its DISNEY (e.g., Reg. No. 1,162,727 issued July 28, 1981), ESPN (e.g., Reg. No. 1,437,972 issued April 28, 1987), and MICKEY MOUSE marks (e.g., Reg. No. 315,056 issued July 17, 1934) under Policy ¶ 4(a)(i), through Complainant’s trademark registrations 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 Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
While Complainant does not own trademark registrations for the CLUB PENGUIN and KICK BUTTOWSKI: SUBURBAN DAREDEVIL marks, the Panel determines trademark registrations are not required to establish rights in a mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Complainant does not allege common law rights and only provides the trademark applications for the CLUB PENGUIN (Ser. No. 77,049,399 filed on November 22, 2006) and KICK BUTTOWSKI: SUBURBAN DAREDEVIL marks (Ser. No. 77,725,367 filed on April 29, 2009). Complainant fails to provide any further evidence that specifically addresses Complainant’s use of the two marks. As Complainant has not provided any evidence of extensive and continuous use that would allow the Panel to find secondary meaning, the Panel finds Complainant has not established rights in its CLUB PENGUIN and KICK BUTTOWSKI: SUBURBAN DAREDEVIL marks for the purpose of Policy ¶ 4(a)(i). See Wave Indus., Inc. v. Angler Supply, FA 304784 (Nat. Arb. Forum Sept. 20, 2004) (finding that the complainant’s pending trademark applications did not establish rights because “an application for [a] mark is not per se sufficient to establish rights [in] a trademark for the purposes of the [Policy]”); see also Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that the complainant failed to establish common law rights in its mark because mere assertions of such rights are insufficient without accompanying evidence to demonstrate that the public identifies the complainant’s mark exclusively or primarily with the complainant’s products).
Complainant argues that Respondent’s <disneydigitalbook.com> domain name is confusingly similar to Complainant’s DISNEY mark. The <disneydigitalbook.com> domain name adds the descriptive terms “digital” and “book,” which describe a product Complainant offers, and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds these additions fail to sufficiently differentiate the disputed domain name from Complainant’s mark and that the disputed domain name remains confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
Complainant alleges that the <espninsidedeal.com> domain name is confusingly domain name is confusingly similar to Complainant’s ESPN mark. The <espninsidedeal.com> domain name combines Complainant’s mark with the generic terms “inside” and “deal” and the gTLD “.com.” The Panel determines the additions of generic terms and a gTLD do not sufficiently distinguish the domain name from Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also, supra, Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs. Thus, the Panel concludes Respondent’s <espninsidedeal.com> domain name is confusingly similar to Complainant’s ESPN mark under Policy ¶ 4(a)(i).
Complainant contends Respondent’s <mickeymousekercize.com> domain names are confusingly similar to Complainant’s MICKEY MOUSE marks. The <mickeymousekercize.com> domain name removes the space separating the terms of the mark and adds the generic term “kercize” and the gTLD “.com.” The Panel finds such alterations are insufficient to differentiate the disputed domain name from Complainant’s mark. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also, supra, Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH; see also, supra , Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs. Therefore, the Panel finds Respondent’s <mickeymousekercize.com> domain name is confusingly similar to Complainant’s MICKEY MOUSE mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied in regards to the <disneydigitalbook.com>, <espninsidedeal.com>, and <mickeymousekercize.com> domain names. The Panel finds Complainant has not satisfied Policy ¶ 4(a)(i) in regard to the <clubpenguin-tr.com>, <kickbutowski.com>, and <kickbuttowskigames.com> domain names.
Because of the reasons the Panel gives in its discussion of Policy ¶ 4(a)(i), the Panel declines to analyze Policy ¶ 4(a)(ii) in relation to the <clubpenguin-tr.com>, <kickbutowski.com>, and <kickbuttowskigames.com> domain names. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).
Complainant has alleged that Respondent does not have any rights or legitimate interests in any of the <disneydigitalbook.com>, <espninsidedeal.com>, and <mickeymousekercize.com> domain names. The burden shifts to Respondent to prove it does have rights or legitimate interests when Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). The Panel finds Complainant made a sufficient prima facie case. Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the <disneydigitalbook.com>, <espninsidedeal.com>, and <mickeymousekercize.com> domain names. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). 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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant alleges that Respondent is not commonly known by the <disneydigitalbook.com>, <espninsidedeal.com>, and <mickeymousekercize.com> domain names. Complainant asserts that Respondent is not authorized to use Complainant’s marks in domain names. The WHOIS information identifies the registrant of the disputed domain names as “Josh Agho,” which the Panel finds is not similar to any of the domain names. Based on the evidence in the record, the Panel finds Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See 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); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent uses the <disneydigitalbook.com>, <espninsidedeal.com>, and <mickeymousekercize.com> domain names to resolve to websites that feature hyperlinks to websites both related and unrelated to Complainant. The Panel infers Respondent receives click-through fees. Complainant does not allege that the hyperlinks resolve to Complainant’s competitors and the Panel cannot make such a determination based on the screenshots of the resolving websites provided by Complainant. However, Respondent’s use of the disputed domain names is still not 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). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Based on the Panel’s finding that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel has declined to analyze Policy ¶ 4(a)(iii) in relation to <clubpenguin-tr.com>, <kickbutowski.com>, and <kickbuttowskigames.com> domain names. See Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Respondent’s <disneydigitalbook.com>, <espninsidedeal.com>, and <mickeymousekercize.com> domain names resolve to websites that contain hyperlinks to third-parties related and unrelated to Complainant. The Panel presumes Complainant receives click-through fees from the aforementioned hyperlinks and the Panel has determined that the disputed domain names are confusingly similar to Complainant’s marks. Consequently, the Panel determines that Respondent is attempting to commercially gain by creating confusion among Internet users as to Complainant’s affiliation with the disputed domain names. Thus, the Panel holds Respondent’s registered and uses the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also 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).”).
Complainant alleges Respondent registered the <disneydigitalbook.com> domain name on the same day Complainant announced the launching of its website <disneydigitalbooks.com>. This is further evidence of Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). See 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”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that [the] respondent has to refute and which he has failed to do. The panel finds a negative inference from this.”).
The Panel finds 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 in relation to the <disneydigitalbook.com>, <espninsidedeal.com>, and <mickeymousekercize.com> domain names.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED in relation to <clubpenguin-tr.com>, <kickbutowski.com>, and <kickbuttowskigames.com> domain names.
Accordingly, it is Ordered that the <disneydigitalbook.com>, <espninsidedeal.com>, and <mickeymousekercize.com> domain names be TRANSFERRED from Respondent to Complainant and the <clubpenguin-tr.com>, <kickbutowski.com>, and <kickbuttowskigames.com> domain names REMAIN WITH Respondent.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 22, 2011
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