Disney Canada, Inc. (formerly Club Penguin Entertainment
Inc.) (“DCI”) and Disney Enterprises, Inc. (“DEI”) v. Nikola Petkovic
Claim Number: FA1605001676278
Complainant is Disney Canada, Inc. (formerly Club Penguin Entertainment
Inc.) (“DCI”) and Disney Enterprises, Inc. (“DEI”) (“Complainant”), represented by J. Andrew Coombs of J. ANDREW COOMBS, A Professional Corporation, California, USA. Respondent is Nikola Petkovic (“Respondent”), Serbia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <clubpenguin.pw> and <onceuponatime.pw>, registered with Alpnames Limited.
The undersigned certifies that she has acted independently and impartially, and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding.
Carol Stoner, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 23, 2016; the Forum received payment on May 23, 2016.
On May 26, 2016, Alpnames Limited confirmed by e-mail to the Forum that the <clubpenguin.pw> and <onceuponatime.pw> domain names are registered with Alpnames Limited and that Respondent is the current registrant of the names. Alpnames Limited has verified that Respondent is bound by the Alpnames Limited 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 May 26, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 15, 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@clubpenguin.pw, and postmaster@onceuponatime.pw. Also on May 26, 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.
A timely Response was received and determined to be complete on May 26, 2016.
Complainant’s Additional Submission was received on May 31, 2016 and is timely and in compliance with Supplemental Rule 7.
On May 31, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Carol Stoner, Esq., 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.
Complainant requests that the domain names <clubpenguin.pw> and <onceuponatime.pw>, be transferred from Respondent to Complainant.
A. Complainant
Complainant makes the following allegations:
Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for both the ONCE UPON A TIME (Reg. No. 4,230,524, registered Oct. 23, 2012) and CLUB PENGUIN (Reg. No. 4,150,662,
registered May 29, 2012) marks, and therefore has rights in the marks under
Policy ¶ 4(a)(i). The <clubpenguin.pw> and <onceuponatime.pw> domain names are confusingly similar to the marks as they incorporate the marks entirely, less the spaces, and merely add the “.pw” country-code top-level domain (“ccTLD”).
Respondent has no rights or legitimate interests in the disputed domain names. Respondent has not been authorized by Complainant to use the marks in any fashion, and is not commonly known by the marks. Further, Respondent uses <clubpenguin.pw> to redirect users to its “Rile5.pw Test Ground” website, to include discussions about “cracking/hacking/cheating” under the “CPPS/Club Penguin” section. See Compl., at Attached Ex. L. This site also features a banner/link to <onceuponatime.pw>, which resolves to a landing page from which Internet users could access links hosting pirated versions of the underlying Once Upon A Time television series. See Compl., at Attached Ex. M. Such use is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
Respondent has registered and used the disputed domain names in bad faith. Respondent’s website featured links to infringing/pirated content, which use imputes bad faith disruption under Policy ¶¶ 4(b)(iii) and (iv). Further,
Respondent clearly knew of the trademarks when registering and using the disputed domain names.
B. Respondent
Respondent makes the following allegations:
Respondent is not obliged to comply with Complaint for two reasons.
That Respondent is not subject to United States laws and that Respondent is protected in its usage of Copyrighted Works, under the protections of the fair use provisions of the Copyright Act, under its educational provisions.
Respondent uses the disputed domain names in furtherance of an academic project to educate children on how to manage money, socialize safely, and look after a pet.
C. Complainant’s Additional Submission
In its Additional Submission, Complainant alleges as follows:
Respondent does not deny confusing similarity with Complainant’s marks.
Respondent has not abandoned the infringing registrations, which shows lack of legitimate interest in the marks.
Respondent has acknowledged that he has improperly directed traffic to his own infringing site or otherwise purposefully left the domain names idle.
Preliminary Issue: Multiple Complainants
There are two Complainants in this matter: DCI and DEI. They allege that they are corporate affiliates. See Compl., at Attached Exs. P, T.
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. For the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. V. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
“It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.”
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
Panel finds, upon reading Complainant’s Exhibit T, that is, the Declaration of Marsha Reed, the Secretary for Disney Canada Inc. (“DCI”) and Vice President and Secretary for Disney Enterprises, Inc. (“DEI”) that the instant Complainant meets the requirements of the Forum’s Supplemental Rule 1(e) in that DCI is a foreign subsidiary of DEI, constituting a sufficient nexus for purposes of complying with the Forum’s Supplemental Rule 1(e).
Marsha Reed, in Complainant’s credible Exhibit T, further declares in Paragraph 5 that, “DEI, DCI, their predecessors in interest and associated companies are the owners of the entire right, title and interest in and to, inter alia, the valid and subsisting CLUB PENGUIN, DISNEY CLUB PENGUIN, and ONCE UPON A TIME trademarks and service marks, all of which are more fully described in Exhibits F and G (the “DEI marks”).
The Panel thus concludes, that the evidence in this Complaint and Exhibits, is sufficient to establish the required nexus or link between the Complainants, as well as sufficient to establish common ownership of the relevant trademarks; and Panel therefore, treats them all as a single entity in this proceeding.
(1) The domain names of <clubpenguin.pw> and <onceuponatime.pw>, registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainants have rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain names; and
(3) the domain names have been registered and are 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(4) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(5) Respondent has no rights or legitimate interests in respect of the domain name; and
(6) the domain name has been registered and is being used in bad faith.
Identical or Confusingly Similar: Policy ¶ 4(a)(i).
Complainant, through its Exhibit F, evidences its trademark registrations with the United States Patent and Trademark Office (“USPTO”) for both the ONCE UPON A TIME (Reg. No. 4,230,524, registered Oct. 23, 2012) and CLUB PENGUIN (Reg. No. 4,150,662, registered May 29, 2012) marks, and therefore has rights in the marks under Policy ¶ 4(a)(i). See Compl., at Attached Ex. F.
Although the parties reside or operate in different countries, such a disparity has been considered irrelevant in a Policy ¶ 4(a)(i) analysis. See Homer TLC, Inc. v. Artem Ponomarev, FA 1623825 (Forum July 20, 2015) (finding Policy ¶ 4(a)(i) rights “without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or operates (here Russia).”). Further, Complainant’s Exhibit G contains illustrative certificates of international trademark registrations. Therefore, Panel rules that Complainant has established its Policy ¶ 4(a)(i) rights in the ONCE UPON A TIME and CLUB PENGUIN marks.
Panel notes that the <clubpenguin.pw> and <onceuponatime.pw> domain names incorporate the marks entirely, less the spaces, and merely adds the “.pw” ccTLD. Elimination of spacing and addition of ccTLDs to a fully incorporated mark have not been considered capable of distinguishing domain names from associated marks, and thus are confusingly similar. See CloudFlare, Inc. v.
[Registrant], FA 1624251 (Forum Aug. 1, 2015) (holding, “The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain
name as per Policy ¶ 4(a)(i).”); see also Gianvito Rossi SRL Unipersonale v. david backhumn, FA 1628059 (Forum Aug. 12, 2015) (declaring, “Domain name syntax prohibits spaces in a domain name, so their absence must be disregarded when comparing a mark with a disputed domain name under Policy ¶ 4(a)(i).”).
Panel was also influenced in her analysis by Complainant’s Additional Submission, which points out that Respondent in his Response, did not deny confusing similarity of the marks. Rather, Respondent acknowledged use of “Copyrighted Works,” under the banner of the Copyright Fair Use exemption for educational purposes. Panel notes that the Copyright Act and its provisions are not applicable in these domain name dispute proceedings.
As a result, this Panel rules that the <clubpenguin.pw> and <onceuponatime.pw> domain names are confusingly similar to the marks under Policy ¶ 4(a)(i).
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 makes a convincing argument that Respondent has no rights or legitimate interests in the disputed domain names, as Respondent has not been authorized by Complainant to use the marks in any fashion, and Respondent is not commonly known by the marks. The WHOIS lists the registrant of the disputed domains as “Nikola Petkovic” and Respondent has not argued that it has ever been commonly known by the disputed domains. Thus, the Panel finds for Complainant under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). Complainant has therefore made its prima facie
case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Complainant, at Attached Ex. L. provides credible evidence that Respondent uses the <clubpenguin.pw> domain name to direct Internet users to the “Rile5.pw Test Ground” website, which includes discussions about “cracking/hacking/cheating” under the “CPPS/Club Penguin” section. This site also reportedly features a banner/link to the <onceuponatime.pw> site, which resolves to a landing page from which Internet users could access links hosting pirated versions of the underlying Once Upon A Time television series. See Compl., at Attached Ex. M. Websites associated with pirated content have not succeeded under Policy ¶¶ 4(c)(i) or (iii). See Google Inc. v. Alex Dori, FA 1623672 (Forum July 13, 2015) (“Given that Respondent is using the disputed domain name to offer illegal content for download and streaming, the Panel finds that Respondent’s use of the disputed domain name does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Further, using a confusingly similar domain to feature competing or unrelated hyperlinks to third-party content has not been seen to evince any such rights. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Therefore, this Panel holds that Respondent has not shouldered its resultant burden of evidence to establish any bona fide offering of goods or services or any legitimate noncommercial or fair use through its utilization of the disputed domain names, under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
Panel concludes that the totality of the circumstances are sufficient evidence that Respondent registered and used Complainant’s marks in bad faith.
As previously noted in Complainant’s Additional Submission, Respondent did not challenge or deny his use of Complainant’s marks, but rather sought cover under the Fair Use doctrine of the Copyright Act. However, the Copyright Act is not relevant to these proceedings.
Panel has viewed Complainant’s Exhibits L–M, which offered convincing evidence of featured links to infringing/pirated content. These are web pages to which the domain names directed as of November 16, 2015 and December 4, 2015. Panel is in agreement with prior panels, which have ruled that the consequence of directing Internet users to illegal content, is to disrupt a complainant’s legitimate business and that such a respondent presumably nets profit. See Google Inc. v. James Lucas / FireStudio / jameschee / FIRESTUDIO / SEONG YONG, FA 1605757(Forum April 7, 2015) (“This Panel agrees that Respondent’s use of confusingly similar domain names to offer downloads via video streaming services to confuse Internet users is a bad faith disruption under Policy ¶ 4(b)(iii).”); see also Staples, Inc. and Staples the Opffice Superstors, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the
<dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the
Respondent is using the disputed domain name to host third-party links to
Complainant’s competitors from which Respondent is presumed to obtain some
commercial benefit.”). This Panel therefore concludes that Respondent has
demonstrated bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv).
Complainant’s Exhibits L–M, consisting of redirected web pages offering competing goods, also meets the bad faith elements set forth in Section 4(b)(iv) of the UDRP because Respondent is intentionally using the Domain
Names to attract, for commercial gain, Internet users to his websites by creating a likelihood of confusion with Complainants’ marks as to the source, sponsorship, affiliation or endorsement of the website, while offering Complainants-related products through the website. See Warner Bros. Entertainment Inc. v. Rana, Case No. FA304696 (Nat. Arb. Forum Sept. 21, 2004) (respondent’s reliance on confusion for commercial gain constitutes bad faith). By using the disputed Domain Names and diverting Internet traffic to websites not owned or otherwise
approved by Complainants, Respondent is trading on the value of the Trademarks established by Complainants. This evidence of Respondent’s bad faith registration and usage is in contravention of Policy ¶ 4(b)(iv).
Complainant received US federal trademark registrations of the disputed marks in 2012, per its Exhibit F. Respondent registered the disputed domain names in 2015, per Complainant’s Exhibit C. Respondent’s knowledge of Complainant’s trademarks before registration of Respondent’s domain names can be inferred by the preceding US trademark registrations, by the fame of Complainant’s marks and by the similarity of the domain names with the trademarks. 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).
The Panel hereby concludes that Respondent had actual notice of Complainant’s mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration.").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <clubpenguin.pw> and <onceuponatime.pw> domain names be TRANSFERRED from Respondent to Complainant.
Carol Stoner, Esq., Panelist
Dated: June 14, 2016
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