Disney Enterprises, Inc. v. Lincoln Bauer
Claim Number: FA1201001423230
Complainant is Disney Enterprises, Inc. (“Complainant”), represented by J. Andrew Coombs of J. Andrew Coombs, A Professional Corporation, California, USA. Respondent is Lincoln Bauer (“Respondent”), represented by Timothy E. Eagle of Varnum, Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <disneyinsider.com> and <insidedisney.com> ("the Domain Names"), registered with Tucows, Inc.
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.
Dawn Osborne, David Safran and Terry F Peppard as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 6, 2012; the National Arbitration Forum received payment on January 6, 2012.
On January 9, 2012, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <disneyinsider.com> and <insidedisney.com> domain names are registered with Tucows, Inc. and that Respondent is the current registrant of the names. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 January 13, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 2, 2012 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@disneyinsider.com, postmaster@insidedisney.com. Also on January 13, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 February 3, 2012.
The Complainant's Additional Submission dated February 7, 2012 was compliant with Supplemental Rule 7. The Respondent's Additional Submission dated February 12, 2012 is also compliant under the Rules.
On February 13, 2012 pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Dawn Osborne, David Safran and Terry F Peppard as Panelists.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
The Complainant's contentions can be summarized as follows:
The Complainant and/or its affiliated companies are leading entertainment companies and have been for many years owners of hundreds of trade mark registrations for the DISNEY mark in countries all over the world, including the USA, and have continuously used it for a variety of goods and services. The trade mark is famous and distinctive around the world, including the USA.
The Complainant owns numerous domain names incorporating the DISNEY mark including <disney.com>, <disneymovies.com> and <disneymovieclub.com>.
The Domain Names are confusingly similar to the DISNEY trademark as they incorporate it in its entirety merely adding certain generic words.
The Respondent has no rights or legitimate interests in the Domain Names. It is not authorised by the Complainant to use the DISNEY mark and has used the Domain Names to infringe the DISNEY trade mark and to trade off the Complainant's goodwill. It has used them to direct users to a home page containing links to sites related to the Complainant's goods and services, although not limited to the Complainant's own goods or services. Thus the Respondent's use of the Domain Names does not and cannot constitute a bona fide offering of goods and services. Further the Respondent's passive holding of the website for over eight years evidences a lack of legitimate rights. The Respondent is not commonly known by the Domain Names.
The Respondent's registration and use of the Domain Names meets the bad faith requirements of the Policy.
Given the fame of the Complainant's mark, the Respondent must have known of it before registration. The Respondent breached its service agreement with its Registrar by infringing the Complainant's rights.
The public will incorrectly associate the Domain Names with the Complainant. The Respondent's actions have taken advantage of confusion and traded on the Complainant's goodwill. For a period of time the Domain Names redirected Internet users to the Respondent's own hosting server <baloo.sirus.com> which featured a default graphic containing characters from the Complainant's Jungle Book film.
By using the Domain Names to divert traffic to sites not owned or approved by but competing with the Complainant, the Respondent is trading on the value of the Complainant's trade marks. The public will incorrectly associate the Domain Names with the Complainant. The Respondent's actions have taken advantage of confusion and traded on the Complainant's goodwill. For a period of time the Domain Names redirected Internet users to the Respondent's own hosting server, <baloo.sirus.com>, which featured a default graphic containing characters from the Complainant's Jungle Book film.
Passive holding evidences bad faith registration and use.
The Respondent has established a pattern of conduct by registering multiple domain names infringing the same marks, evidencing bad faith.
The Respondent failed to cease and desist after receiving a letter from the Complainant also evidencing bad faith.
B. Respondent
The Respondent's contentions can be summarized as follows:
The Respondent is an avid Disney fan and has been all of his life. He is fascinated by the inside workings of Disney during the 1950s and 1960s. He registered the Domain Names to provide an insider's guide to Disney. He intended it to be a hobby when he retires. He has no bad faith but wished to provide a safe, free and informative view of Disney.
The Respondent responded promptly to the Complainant's letter before action through counsel informing the Complainant that the Respondent had registered the Domain Names in good faith, not wishing to sell, disrupt the Complainant's business, or trade on its goodwill. The Respondent declined to transfer the Domain Names to the Complainant as in his view he was the rightful owner. Failing to comply with cease and desist letters is not bad faith.
The Complainant remained silent for ten years. In 2011 the Complainant demanded transfer of the Domain Names again. The Respondent told the Complainant that it had waived any claim to the Domain Names it might have had.
The Respondent has a legitimate interest in the Domain Names. He never intended to realize monetary gain by owning them. Lack of permission from the Complainant is irrelevant.
The Respondent is making no attempts to profit or compete with the Complainant. The opposite is true.
Passive holding alone or delay in attaching a site are not bad faith under the Policy. In any event the Respondent is not passively holding the Domain Names which have contained links of interest to Disney fans and the Respondent intends to develop this further later in life. Provision of free information to the public may be considered a bona fide offering of services. Also use for a fan site is a bona fide offering of goods and services or a legitimate non commercial or fair use under the Policy. The Respondent has first amendment rights in the USA.
The Domain Names are descriptive of the content intended for the web site.
The Respondent is not using the site for commercial gain.
Registering two domain names is not a pattern of blocking registrations and the Respondent has done nothing to prevent the Complainant from registering and using its official site.
Failure to bring a complaint promptly should result in the denial of the claim.
C. Additional Submissions
The Complainant's Additional Submissions in so far as not repetition of the above can be summarized as follows:
Respondent does not assert that there is no confusing similarity between the Domain Names and the Complainant's mark and so the first prong of the test under the Policy is met.
The Respondent's laches defence is inapplicable. The Respondent used a proxy service to hide its identity for approximately a decade. Also the delay was not prejudicial to the Respondent.
The Respondent is silent on the redirection of the Domain Names to his own site where an unauthorized copyright image from the Complainant's Jungle Book film was featured. The content appeared to relate to some unauthorized domain related business.
The Respondent admits knowledge of the Complainant before he registered the Domain Names and that it related to him being a fan of Disney.
Fan sites do not need to use registered trade marks in their Domain Names.
The Respondent is a successful businessman and could have developed the site in ten years had he wished.
The connection of the Domain Names to various sites competing with the Complainant is clearly commercial.
The Respondent's Additional Submissions in so far as not repetition of the above can be summarised as follows:
The Settlement negotiations referred to should have been confidential. The Respondent's requests in them were made in response to invitations to make requests from the Complainant.
The Complainant said it would wait for the Respondent's use of the Domain Names before evaluating the position so it should not be taking further action against the Respondent.
The privacy service used by the Respondent was to prevent spam and was not to mask his identity and he has used this protection for non Disney related domains.
The Respondent has not received one cent from the Domain Names or links provided on them and has no intention to receive revenue through use of them.
The Complainant and/or its affiliated companies are entertainment companies and have been for many years owners of trade mark registrations for the DISNEY mark in countries all over the world, including the USA. The trade mark is famous and distinctive around the world, including the USA.
The Domain Names were registered by the Respondent in the year 2000.
The Respondent maintains that the Domain Names were registered for a fan site and that he has not received any money relating to the Domain Names. The Domain Names have been pointed to links to third-party commercial sites not connected to the Complainant, including a page relating to <baloo.sirus.com> connected with the Respondent, which featured a default graphic containing characters from the Complainant's Jungle Book film.
In without prejudice negotiations relating to the Domain Names evidenced by correspondence, the Respondent requested life membership to club 33, three life silver passes and 750 points in Disney Vacation Club Key West.
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."
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 Complainant has had trademark registrations consisting of or containing the DISNEY mark for many years around the world, including the USA. The Domain Names consists of the Complainant’s DISNEY mark and the generic words "inside" and "insider" and top level designation ".com". The addition of the generic words "inside" and "insider" and the top level designation .com in the Domain Name do not serve to distinguish the Domain Names from the Complainant's DISNEY mark. See Body Shop Int'l PLC v. CPICNET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> was confusingly similar to the BODY SHOP trade mark); 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.") The Respondent does not seek to refute this. As such, the Panel holds that the Domain Names are confusingly similar to a trade mark in which the Complainant has rights for the purpose of the Policy.
The Respondent states that he registered the Domain Names to use them for a fan site containing materials relevant to the Complainant. Unfortunately, he has not been able to produce any documents which prove this, and it was registered over ten years ago. See Household Int’l, Inc. v. Cyntom Enters., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (holding that the respondent’s “vague and unsupported assertion of ‘plans to sell household goods, supplies and appliances over the Internet’” was insufficient to be considered proof of a legitimate business plan); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that the respondent did not establish rights and legitimate interests in the domain name where the respondent mentioned that it had a business plan for the domain name at the time of registration but did not furnish any evidence in support of this claim); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint).
The Domain Names have been pointed to links to third party commercial sites not connected to the Complainant including a page relating to <<baloo.sirus.com>> connected with the Respondent which featured a default graphic containing characters from the Complainant's Jungle Book film. Complainant argues that this use is not bona fide use. The Respondent says it is provision of free information about Disney and is a bona fide offering of goods and services or a legitimate non commercial or fair use under the Policy. The Panel is of the view that the use is not use as a fan site and agrees with the Respondent that this is not passive use since he has selected the material to be featured on the site. However, the Panel agrees with the Complainant that the use as evidenced is not a bona fide offering of goods and services or legitimate non commercial or fair use. See Constellation Wines US Inc. v. Tex. Int'l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding no rights or legitimate interests by operating a web site featuring links to goods and services unrelated to the Complainant.) The Domain Names are also not descriptive of the content that has appeared on the site.
The Respondent does not appear to have any trade marks containing "DISNEY", is not commonly known by this name, and does not have any consent from the Complainant to use this name. He does not dispute this.
The Presiding Panelist is of the view that laches is not a defence under the Policy. However, the Panel as a whole can agree that, in any event, laches is not applicable as a defence in this case due to the Respondent’s use of a proxy service to hide its identity for approximately a decade and since the delay was not prejudicial to the Respondent as he has not started, by his own admission, full use of the site.
Paragraph 4 (b) of the Rules sets out non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith, including circumstances where, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on‑line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location. As noted above, the Domain Names have been pointed to links to third party commercial sites not connected to the Complainant and a page relating to <baloo.sirus.com> connected with the Respondent which featured a default graphic containing characters from the Complainant's Jungle Book film. Whilst the Respondent says it has not received any revenue in relation to the Domain Names, the Panel agrees that the Respondent has obtained commercial gain by trading on the value of the Complainant's mark in relation to its services on its web site. See Ramirez v. Reilly, FA 1320920 (Nat. Arb. Forum June 9, 2010) (holding that respondent’s registration of the disputed domain name because of its value as an Internet search term in order to attract Internet users to the resolving website “demonstrates a clear intention on the part of Respondent to use the MANNY RAMIREZ for commercial gain”).
See also Akbank Turk A.S. v. Domain Privacy Group, Inc., D2008-1779 (WIPO Feb. 9, 2009) (stating that, although the disputed domain name resolved to an inactive website, “it is clear the registration was in bad faith as the intention behind the registration was to take advantage of the Complainant’s trademark by creating a confusingly similar domain name and derive commercial gain using the Complainants rights in the trademark”).
It is not at all clear whether the Respondent’s site has any connection with the Complainant or not. In view of this, the Panel finds that the Domain Name has been registered and used in bad faith.
In view of this finding it is unnecessary to consider the Complainant’s further assertions regarding bad faith or the without prejudice correspondence that passed between the parties during settlement negotiations.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <disneyinsider.com> and <insidedisney.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Presiding Panelist, David Safran and Terry F Peppard as Panelists
Dated: February 21, 2012
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