Disney Enterprises, Inc., Lucasfilm Entertainment Company Ltd. LLC, and Lucasfilm Ltd. LLC v. Jose Fortanel
Claim Number: FA1611001704081
Complainant is Disney Enterprises, Inc., Lucasfilm Entertainment Company Ltd. LLC, and Lucasfilm Ltd. LLC (“Complainant”), represented by J. Andrew Coombs of J. ANDREW COOMBS, A Professional Corporation, California, USA. Respondent is Jose Fortanel (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <d1sney.com>, <disneyco.com>, <waltdisneystudios.co>, <skywalkerfilm.com>, and <starwarsllc.com>, registered with GoDaddy.com, LLC.
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 Forum electronically on November 21, 2016; the Forum received payment on November 21, 2016.
On November 22, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <d1sney.com>, <disneyco.com>, <waltdisneystudios.co>, <skywalkerfilm.com>, and <starwarsllc.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 November 22, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 12, 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@d1sney.com, postmaster@disneyco.com, postmaster@waltdisneystudios.co, postmaster@skywalkerfilm.com, postmaster@starwarsllc.com. Also on November 22, 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 December 19, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 names be transferred from Respondent to Complainant.
Preliminary Issue: Multiple Complainants
While UDRP Rule 3(a) provides that: “Any person or entity may initiate an administrative proceeding by submitting a complaint…,” 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.”
The Complaint in this proceeding identifies three separate enterprise Complainants: Disney Enterprises, Inc., Lucasfilm Entertainment Company Ltd. LLC, and Lucasfilm Ltd. LLC. These enterprises together contend that they have joint standing here because they are all affiliated companies or subsidiaries of The Walt Disney Company, each with an interest in the subject matter of the Complaint. Respondent does not contest this assertion.
Supplemental Rule 1(e) has been interpreted to allow multiple parties to proceed as one where they can show a sufficient link to one another. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralympic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), a panel concluded:
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.
Similarly, in Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum December 28, 2003), a panel treated two complainants as a single entity where both held rights in trademarks contained within disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), a panel found a sufficient link between multiple complainants where there was a license between them regarding use of a particular mark.
On the undisputed facts before us, we conclude that a sufficient nexus has been shown to exist among the three complaining enterprises to permit them to be treated as a single Complainant for all purposes in this proceeding. Accordingly, the three complaining enterprises will be described throughout this decision as a single party, with the denomination Complainant.
A. Complainant
Complainant is an entertainment company which produces world-famous movies and other entertainment products.
Complainant has rights in the DISNEY, STAR WARS and SKYWALKER marks through their registration with the United States Patent and Trademark Office (“USPTO”) (DISNEY, Registry No. 1,162,727, registered July 28, 1981; STAR WARS, Registry No. 1,127,229, registered December 4, 1979; and SKYWALKER, Registry No. 2,729,615, registered June 24, 2003).
Respondent registered the domain name <d1sney.com> on April 10, 2016, the domain name <waltdisneystudios.co> on April 13, 2016, and the domain names <disneyco.com>, <skywalkerfilm.com> and <starwarsllc.com> on January 7, 2016.
The domain names are confusingly similar to Complainant’s DISNEY, SKYWALKER and STAR WARS marks.
Respondent has not been commonly known by the domain names, nor has Complainant authorized Respondent to use its marks in a domain name.
Respondent registered and uses the domain names to redirect users to a website which offers services that compete with Complainants’ businesses.
Respondent’s use of the domain names is neither a bona fide offering of goods or services nor a noncommercial or fair use.
Respondent has no rights to or legitimate interests in any of the domain names.
Each of the domain names is an instance of typo-squatting.
Respondent has established a pattern of misconduct by registering multiple domain names infringing upon Complainant’s marks.
Respondent is using the domain names to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of its website.
Respondent knew of Complainant and its rights in the marks at the time it registered the domain names.
Respondent’s registration and use of the domain names are in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to trademarks in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain names; and
(3) the same domain names were registered and are 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 cancelled 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 will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable 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, STAR WARS and SKYWALKER marks for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the marks with a national trademark authority, the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (concluding that a UDRP complainant had established rights in a mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that each of Respondent’s <d1sney.com>, <disneyco.com>, <waltdisneystudios.co>, <skywalkerfilm.com>, and <starwarsllc.com> is confusingly similar to one of Complainant’s DISNEY, STAR WARS or SKYWALKER marks. Each of the latter four of the domain names contains one of the marks in its entirety, and adds a generic term or abbreviation which is descriptive of an aspect of Complainant’s business, plus a generic Top Level Domain (“gTLD”) (“.com”) or country code Top Level Domain (“ccTLD”) (“.co”). The first of the domain names merely substitutes the numeral “1” for the letter “i” and adds a gTLD. These alterations of the marks, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy.
See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (finding that confusing similarity exists where a disputed domain name contains a UDRP complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark being insufficient to differentiate one from the other for purposes of the Policy).
See also Crocs, Inc. v. [Registrant], FA 1043196 (Forum Sept. 2, 2007) (finding that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”).
As to the <starwarsllc.com>, elimination of the space between the terms of the STAR WARS mark is of no consequence to our analysis because spaces are not permitted in domain names. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between the terms of the mark of another in creating a domain name does not establish distinctiveness from a UDRP complainant’s mark under Policy ¶ 4(a)(i)).
The same result obtains with respect to Respondent’s substitution of the numeral “1” for the letter “I” in the domain name <d1sney.com>. See, for example, TripAdvisor, LLC v. Zhong Wan / Wanzhongmedia, FA 1623450 (Forum July 31, 2015) (finding confusing similarity between the <tripadviso4.com> domain name and the TRIPADVISOR mark).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain names, 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) (finding, under UDRP ¶ 4(a)(ii), that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name before the burden shifts to that respondent 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 … 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, … 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 names. 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 determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain names which are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny,
Respondent has not been commonly known by the <d1sney.com>, <disneyco.com>, <waltdisneystudios.co>, <skywalkerfilm.com> or <starwarsllc.com> domain names, and that Complainant has not authorized Respondent to use any of Complainant’s marks. Moreover, the pertinent WHOIS information identifies the registrant of each of the domain names only as “Jose Fortanel,” which does not resemble any of the domain names. On this record, we conclude that Respondent has not been commonly known by any of the disputed domain names so as to have acquired rights to or legitimate interests in any of them within the purview of Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that a respondent was not commonly known by the <chevron-europe.com> domain name so as to have established rights to or legitimate interests in it under Policy ¶ 4(c)(ii), where the relevant WHOIS information identified “Fred Wallace” as registrant of the domain name).
See also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that a respondent was not commonly known by a disputed domain name where a UDRP complainant had never authorized that respondent to incorporate its NAVISTAR mark in a domain name registration).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses each of the contested domain names to redirect to a website which offers services that compete with Complainant’s businesses, and that Respondent attempts to acquire commercial gain from the operation of the resolving website. This use of the domain names is neither a bona fide offering of goods or services per Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) so as to confirm in Respondent rights to or legitimate interests in the domain names within the meaning of those provisions. See Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that a respondent was not using disputed domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because that respondent used the domain names to divert Internet users to a website that offered services in competition with those offered by a UDRP complainant under its marks). Each of the disputed domain names redirects to <snugglepaw.com>, which Complainant contends is a competing website.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the <d1sney.com>, <disneyco.com>, <waltdisneystudios.co>, <skywalkerfilm.com> and <starwarsllc.com> domain names as alleged in the Complaint disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain names. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005):
Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
We are likewise convinced by the evidence that Respondent employs each of the disputed domain names, which are confusingly similar to Complainant’s DISNEY, STAR WARS or SKYWALKER marks, to seek commercial gain from the confusion thus caused among Internet users as to the possibility of Complainant’s affiliation with the domain names. Under Policy ¶ 4(b)(iv), this too is proof of Respondent’s bad faith in registering and using the domain names. See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where a respondent diverted to its own website Internet users searching for the legitimate website of a UDRP complainant, likely profiting in the process).
Moreover, we find it inconceivable that Respondent could have registered the <d1sney.com>, <disneyco.com>, <starwarsllc.com>, <waltdisneystudios.co> and <skywalkerfilm.com> domain names without actual knowledge of Complainant and its rights in the DISNEY, STAR WARS and SKYWALKER marks. This is a further demonstration of Respondent’s bad faith in registering the domain names. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum August 16, 2007) (rejecting a respondent's contention that it did not register a disputed domain name in bad faith where a panel found that that respondent had knowledge of a UDRP complainant's rights in the UNIVISION mark when registering a disputed domain name).
Finally, under this head of the Policy, it is evident that the domain name <d1sney.com> is an instance of typo-squatting, i.e.: the deliberate misspelling of the mark of another in a domain name in order to take advantage of common spelling errors made by Internet users who attempt to enter into their web browsers the names of enterprises with which they wish to do business. Typo-squatting is independent evidence of Respondent’s bad faith in registering that domain name. See Finish Line, Inc. v. XU SHUAI WEI, FA1409001577968 (Forum October 9, 2014) (“The <finishlne.com> domain name is a typosquatted version of the FINISH LINE mark, which further supports a finding of bad faith under Policy ¶ 4(a)(iii).”).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 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 domain names <d1sney.com>, <disneyco.com>, <waltdisneystudios.co>, <skywalkerfilm.com>, and <starwarsllc.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 21, 2016
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