Disney Enterprises, Inc. v. online No.1 / OS1
Claim Number: FA1307001512060
Complainant is Disney Enterprises, Inc. (“Complainant”), represented by J. Andrew Coombs of J. ANDREW COOMBS, A Professional Corporation, California, USA. Respondent is online No.1 / OS1 (“Respondent”), California, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <disneyxd.biz>, registered with ONLINENIC, INC. d/b/a CHINA-CHANNEL.COM.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on July 29, 2013; the National Arbitration Forum received payment on July 29, 2013.
On July 31, 2013, ONLINENIC, INC. d/b/a CHINA-CHANNEL.COM confirmed by e-mail to the National Arbitration Forum that the <disneyxd.biz> domain name is registered with ONLINENIC, INC. d/b/a CHINA-CHANNEL.COM and that Re-spondent is the current registrant of the name. ONLINENIC, INC. d/b/a CHINA-CHANNEL.COM has verified that Respondent is bound by the ONLINENIC, INC. d/b/a CHINA-CHANNEL.COM 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 August 1, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 21, 2013 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 bil-ling contacts, and to postmaster@disneyxd.biz. Also on August 1, 2013, 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 tech-nical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 30, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the DISNEY XD mark in association with the sale of various frozen consumables.
Complainant has registered the DISNEY XD trademark with the United States Patent and Trademark Office ("USPTO") (Registry No. 4,053,653, filed May 19, 2008; registered November 8, 2011).
Respondent registered the <disneyxd.biz> domain name on August 12, 2011.
The <disneyxd.biz> domain name is substantively identical to Complainant’s DISNEY XD trademark.
Respondent has not been commonly known by this domain name.
Complainant has not authorized Respondent to use the DISNEY XD mark.
Respondent uses the <disneyxd.biz> domain name to offer for sale pirated and unauthorized copies of Complainant’s online video games.
Some of the video games offered by Respondent by means of the domain name are created by Complainant’s commercial competitors.
Respondent has no rights to or legitimate interests in the domain name.
Respondent has engaged in a pattern of bad faith registration of domain names.
Respondent uses the domain name to create the likelihood that Internet users will mistake Complainant as the source of the pirated content available on the <disneyxd.biz> domain name’s website.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent knew of Complainant and its rights in the DISNEY XD mark when Respondent registered the domain name.
Respondent registered the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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.”
Complainant has rights in the DISNEY XD trademark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, 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, Complainant has met the requirements of Policy ¶ 4(a)(i).
And, although Respondent registered the contested domain name on August 12, 2011, shortly before Complainant’s mark registration became effective on Nov-ember 8, 2011, because Complainant’s application for registration of the mark was filed on May 19, 2008, long before the registration of the domain name, Complainant’s rights in its mark registration take precedence in time over any rights Respondent might claim in the domain name. See Delikomat Betrieb-ungsverpflegung m.b.H. v Lehner, D2001-1447 (WIPO February 20, 2002).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <disneyxd.biz> domain name is sub-stantively identical to Complainant’s DISNEY XD trademark. The domain name contains the entire mark, merely removing the space between the terms of the mark and adding the generic Top Level Domain (“gTLD”) “.biz.” These alter-ations of the mark, made in creating the domain name, do not save the domain name from the realm of identity or confusing similarity under the standards of the Policy. See, for example, Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) the panel there finding that a domain name that merely removed the spacing between the terms of a mark and added a generic-top level domain (“gTLD”) remained identical to the mark itself.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the <disneyxd.biz> domain name, and that Complainant has not authorized Respondent to use the DISNEY XD mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “online No. 1 / OS1,” which does not re-semble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) the panel there finding that the use of a nonsensical identity in the WHOIS information for a disputed domain name effectively dismissed a favorable finding for a respondent under Policy ¶ 4(c)(ii).
Complainant next asserts, without objection from Respondent, that Respondent uses the <disneyxd.biz> domain name to offer for sale pirated and unauthorized copies of Complainant’s online video games, and that some of the video games offered via the domain name are created by Complainant’s commercial com-petitors. In the circumstances her presented, we may comfortably presume that Respondent profits from such use of the domain name. This employment of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products by means of a contested domain name was evidence that a respondent did not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003):
Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Re-spondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s employment of the dis-puted <disneyxd.biz> domain name, as alleged in the Complaint, disrupts Com-plainant’s business. This stands as proof of bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iii). See Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001), the panel there finding that the use of a domain name which was confusingly similar to the mark of another, a UDRP complainant, to offer for sale that complainant’s own goods in competition with the business of that complainant evidenced bad faith disruption of that complain-ant’s business under Policy ¶ 4(b)(iii).
We are also convinced by the evidence that Respondent uses the domain name <disneyxd.biz>, which is substantively identical to Complainant’s DISNEY XD trademark, in hopes that Internet users will mistake Complainant as the source of the pirated content available on the domain name’s resolving website, and that Respondent does this for profit. This demonstrates bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iv). See Affliction, Inc. v. China-supply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding bad faith in a re-spondent’s attempts to gain commercially by selling counterfeit products via the creation of confusion among Internet users as to the possibility of a UDRP complainant’s connection with a website resolving from a disputed domain name).
Finally, we conclude from the record that Respondent knew of Complainant and its rights in its DISNEY XD trademark when Respondent registered the disputed <disneyxd.biz> domain name. This is further proof of bad faith registration of the domain name. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where a respondent was "well-aware of” a UDRP com-plainant's YAHOO! mark at the time of domain name registration).
Accordingly, the Panel finds that Complainant has met its obligations of proof under ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <disneyxd.biz> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 13, 2013
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