Disney Enterprises, Inc. v. Anna Gallup
Claim Number: FA1603001666257
Complainant is Disney Enterprises, Inc. (“Complainant”), represented by J. Andrew Coombs of J. ANDREW COOMBS, A Professional Corporation, California, USA. Respondent is Anna Gallup (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thewaltdisney-company.com>, registered with Name.com, Inc..
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 17, 2016; the Forum received payment on March 17, 2016.
On March 18, 2016, Name.com, Inc. confirmed by e-mail to the Forum that the <thewaltdisney-company.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.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 March 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 11, 2016 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@thewaltdisney-company.com. Also on March 21, 2016, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 14, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 Disney Enterprises, Inc., and/or its affiliated companies (“DEI” or “Complainant”), has been for many years the owner of hundreds of registrations for trademarks incorporating the name WALT DISNEY® (the “Trademark”) in countries all over the world. For decades, Complainant, or its predecessors in interest, has continuously used and applied the Trademark for a variety of goods and services.
Complainant is a well-known worldwide leading producer of entertainment goods and services such as movies, television programs, books, and merchandise. Walt Disney is the original creator of the DISNEY® mark and group of The Walt Disney Company affiliated companies, including Complainant. In association with these goods and services, Complainant owns rights in a variety of trademarks registered with the USPTO, including the Trademark (Reg. No. 1,141,312 issued on November 11, 1980). Complainant further holds numerous domain name registrations incorporating the Trademark, including, but not limited to, thewaltdisneycompany.com, waltdisneycompany.com and waltdisney.com.
Moreover, Complainant’s registration of the Trademark before Respondent’s registration of the Domain Name is sufficient to prove that Complainant has rights in the Trademark. See Aetna Inc. v. Jacoby Partners, FA125816 (Nat. Arb. Forum Nov. 22, 2002); Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO May 5, 2002) (registration is prima facie evidence of validity which creates a rebuttable presumption that the mark is inherently distinctive).
Indeed, the primacy of the Complainant’s WALT DISNEY® and DISNEY® trademarks over infringing domain names has been asserted, recognized and enforced in numerous other proceedings initiated pursuant to the UDRP. See, e.g., Disney Enterprises, Inc. v. Hodson FA158165 (Nat. Arb. Forum Jul. 1, 2003) (“association of the name Disney [with the Complainant is] widely accepted in the mind of the general public”); Disney Enterprises, Inc. v. Cyber Domain Services Pvt. Ltd., FA1012001365612 (Nat. Arb. Forum Dec. 31, 2011); Disney Enterprises, Inc. v. Dot Stop, FA145277 (Nat. Arb. Forum Mar. 17, 2003).
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds:
a. Respondent’s Domain Name Fully Incorporates Complainant’s Famous, Long-Standing and Widely Registered Trademark.
The Trademark is so widely accepted in the mind of the general public that the Trademark has become unquestionably famous and distinctive and has acquired secondary meaning and distinctiveness throughout the United States and around the world.
The test of confusing similarity under the UDRP is confined to a consideration of the disputed domain name and the trademark, without reference to other issues. Microsoft Corporation v. WDW Inc., D2002-0412 (WIPO Jul. 1, 2002). The Domain Name is confusingly similar to the Trademark, as it incorporates the Trademark in its entirety, merely adding to the Trademark generic words and a hyphen, which relate almost identically to Complainant’s corporate affiliate’s name. Microsoft, supra (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant’s combined with a generic word or term); Yahoo! Inc. v. Seocho, FA0204000109050 (Nat. Arb. Forum May 13, 2002) (same); see also Sony Kubushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that neither the addition of an ordinary descriptive word nor the suffix “.com” detracts from the overall impression of the dominant part of the name in each case, namely the trademark “Sony” and thus Policy ¶4(a)(i) is satisfied); see also Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, D2001-0489 (WIPO Jun. 19, 2001) (finding “disneychanel.com”, “disneywallpaper.com”, “disneywold.com”, “disneywolrd.com”, disneyworl.com” and “walddisney.com” confusingly similar to the trademark DISNEY). Thus, the test for confusing similarity is met, as here, Respondent has used Complainant’s world famous Trademark in its entirety.
b. Respondent Has No Legitimate Interest in the Domain Name.
Under Policy ¶4(a)(ii), Complainant need only demonstrate a prima facie case that Respondent has no rights or legitimate interests in the disputed Domain Name before the burden shifts to Respondent to produce evidence to rebut this presumption. VIRBAC v. PrivacyProtect.org, D2011-0026 (WIPO Feb. 23, 2011); Disney Enterprises, Inc. v. Miloserdov, FA 1452770 (Nat. Arb. Forum Aug. 20, 2012); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).
Several distinct grounds support the conclusion that the Respondent has no legitimate interest in the Domain Name. First, Respondent is not authorized by Complainant to use the Domain Name. "[I]n the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the Domain Name could be claimed by Respondent.” Guerlain S.A. v. Peikang, D2000-0055 (WIPO Mar. 21, 2000).
Second, Respondent registered and uses the Domain Name to infringe Complainant’s rights in the Trademark and to trade off Complainant’s goodwill. In particular, Respondent uses the Domain Name to transmit emails falsely purporting to originate from Complainant or an affiliated company. See Monster Energy Company v. Argo Wibowo, FA 1207001452773 (Nat. Arb. Forum Aug. 23, 2012) (“use of the disputed domain name for a fraudulent purpose, while posing as Complainant, is evidence that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶4(a)(ii).”) citing Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
Further, Complainant has not authorized Respondent to use its Trademark or to seek the registration of any domain name incorporating the Trademark. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sep. 5, 2000). 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 Respondent’s conduct relating to the fraudulent emails as well as the distinctiveness and fame of the Trademark, 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 Trademark. Respondent had no legitimate interest in doing so.
Lastly, Respondent is not and has not been commonly known by the Domain Name. Respondent does not use the Trademark to identify itself on the website 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. Compaq Information Technologies Group, LP v. Waterlooplein Ltd., FA109718 (Nat. Arb. Forum May 29, 2002). Thus, Respondent has no legitimate interest in the Domain Name.
c. Respondent Registered and Uses the Domain Name in Bad Faith.
Several distinct grounds support a finding of bad faith pursuant to Section 4 of the UDRP.
First, pursuant to paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Respondent's use of the Domain Name in connection with a fraudulent scheme involving passing itself off as Complainant and attempting to defraud, is indicative of bad faith under paragraph 4(b)(iii) (and 4(b)(iv)). Yahoo! Inc. v. Kalra, FA 1650447 (Nat. Arb. Forum Dec. 31, 2015); Qatalyst Partners LP v. Devimore, FA 1393436 (Nat. Arb. Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use).
Moreover, Respondent’s use and registration of the Domain Name separately meets the bad faith requirements of Section 4(b)(i) of the UDRP. First, the fame of the Trademark combined with widespread marketing of Complainant’s goods and services and the registration of the Trademark put Respondent on notice of Complainant’s Trademark. The Trademark is so internationally distinctive and famous Respondent must have had actual knowledge of the Trademark prior to the Domain Name’s registration. Banca Intesa S.p.A. v. Unasi Inc., D2005-0847 (WIPO Sep. 28, 2005); Choice Hotels International, Inc. v. Dinoia, FA282792 (Nat. Arb. Forum Jun. 18, 2004) (the respondent’s knowledge of the complainant’s trademark can be inferred from reading the respondent’s websites on which references to the complainant’s trademark appear); FNAC v. SZK.com, D2004-0413 (WIPO Jul. 26, 2004) (bad faith established by knowledge of the complainant’s trademark which can be inferred from fame of the trademark).
Since Complainant owns the Trademark, and has done so for decades, Respondent’s registration and use is in bad faith as it failed to check whether the Trademark was registered prior to his registration of the Domain Name. See Young Genius Software AB v. MWD, D2000- 0591 (WIPO Aug.7, 2000) (finding that a failure to check whether a name was registered was evidence of bad faith); Sun Chronicle v. Web Solutions Inc., FA 94895 (Nat. Arb. Forum Jul. 18, 2000) (holding that registering a well-known mark or failing to check whether the registration would infringe on rights held by another constitutes bad faith registration).
By registering the Domain Name with actual knowledge of Complainant’s Trademark, Respondent acted in bad faith by breaching its service agreement with the registrar because Respondent falsely represented that the registration is not for any unlawful or abusive purpose, including “the infringement of any intellectual property or other right.” Thus, the registration constituted bad faith under the UDRP. See Google Inc. v. wwwgoogle.com, D2000-1240 (WIPO Nov. 9, 2000) (finding Respondent’s false representation that its domain name did not infringe the rights of any third party as proof of bad faith).
Further, the failure to make active use of a domain name is evidence of bad faith registration and use of the domain under Section 4(a)(iii) as the Domain Name does not currently resolve to any active website. See Hewlett-Packard Co. v. Martineau, FA 95359 (Nat. Arb. Forum Aug. 30, 2000) (finding that passive holding of a domain name evidences both bad faith registration and bad faith use); Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Complainant’s rights in the Trademark, Respondent’s lack of legitimate interest in the Domain Name and Respondent’s bad faith, warrant transfer of the Domain Name to Complainant under the Policy.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. However, Respondent sent an email, which read:
“I further researched this matter and found out a string of information.
I called Name.com (shown on the Complaint) and they said yes they had my name as the owner and that a credit card showing me as the cardholder had paid for it. My debit card number was stolen back in November and a charge to Name.com for $26.86 was charged to my checking account. At the time I did not know what this charge was only that I had not authorized the charge. I called my bank and refuted the charge back in November 2015. I have attached my bank statement showing this charge from November and the paperwork from Chase showing my Claim against this charge as well as the final determination that I had not authorized the charge.
After finding out the information above I spoke again with Name.com and they said that the domain name was blocked and has been blocked since 2015 as the charge to pay for the domain name was denied; though I am still in their system.
As I previously stated I AM NOT THE OWNER OF THE DOMAIN NAME IN QUESTION.
Should I receive any further information from Name.com I will forward to you.”
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.
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(f), 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.”).
Complainant claims rights in the WALT DISNEY mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,141,312, registered on November 11, 1980). Rights to a mark may be proven under Policy ¶4(a)(i) by registering the mark with the appropriate governmental authority, such as the USPTO. Complainant has rights in the WALT DISNEY mark under Policy ¶4(a)(i). See 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.”).
Complainant claims Respondent’s <thewaltdisney-company.com> domain name is confusingly similar to the WALT DISNEY mark because it contains the mark along with a hyphen, the words “the” and “company”, and the gTLD “.com.” The domain name also lacks the space between the words of the mark, which is to be expected because spaces are prohibited characters in domain names. “The” and “company” are generic, and therefore, inconsequential differences under a Policy ¶4(a)(i) analysis. Since all domain names require a TLD (whether a gTLD or a ccTLD), a TLD must be ignored when doing an analysis under Policy ¶4(a)(i). After considering these factors, the Panel determines the <thewaltdisney-company.com> domain name is confusingly similar to the WALT DISNEY mark under Policy ¶4(a)(ii). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶4(a)(i)); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also 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).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. 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 claims Respondent is not commonly known by the <thewaltdisney-company.com> domain name because it is not authorized to use the WALT DISNEY mark. The original WHOIS showed the domain name was owed by a privacy service. The updated WHOIS information lists “Anna Gallup” as Registrant. It seems clear Respondent is not commonly known by the <thewaltdisney-company.com> domain name 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Rather than continue through the litany of the usual analysis, the current Respondent of record disclaims being the true owner of the domain name. Respondent apparently did not create the domain name. Respondent apparently did not authorize the domain name being created. The real “Respondent” appears to be the unknown criminal who stole Respondent’s credit card and registered the disputed domain name using Respondent’s name. The UDRP requires the person who registers a domain name to provide their correct name and address. The unknown criminal has not done that. This Panel is comfortable in finding the Respondent of record has no rights in the domain name (and Respondent has quite honestly disclaimed any rights in the domain name).
It should be noted the disputed domain name is apparently not being used for a web site at the present time. It is being used as an email server to send false and fraudulent emails. These emails impersonate Complainant (by using a similar domain name). The person behind these emails ordered goods shipped to Jamaica, New York, relying upon Complainant’s credit. In the end, the vendors have lost their goods (which Complainant never received) and never get paid (because Complainant will not pay for goods it did not order). Running a fraudulent scheme does not create rights in the domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent uses the <thewaltdisney-company.com> domain name in bad faith because it is used to host e-mail addresses purporting to originate from Complainant to order electronic equipment based upon Complainant’s credit. Complainant has provided a series of e-mail correspondence between a “bob.chapek@thewaltdisney-company.com” e-mail address and a third party. This included a purchase order for computer equipment. It seems clear Respondent (or at least the person who registered the domain name) uses the <thewaltdisney-company.com> domain name in bad faith under Policy ¶4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).
Respondent claims she did not register the disputed domain name. This means the unknown criminal respondent did not provide accurate WHOIS information. In the commercial context, this raises the rebuttable presumption of bad faith registration and use. The “shadow respondent” has presented no evidence to the contrary. Indeed, it would be hard to imagine any evidence to the contrary. This Panel is more than willing to find bad faith on this point alone. It should be noted the named Respondent explicitly denies having registered the domain name at all, much less having registered it in good faith.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <thewaltdisney-company.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, April 26, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page