Disney Enterprises, Inc. v. Maddisyn Fernandes / Fernandes Privacy Holdings
Claim Number: FA1709001750672
Complainant is Disney Enterprises, Inc. (“Complainant”), represented by J. Andrew Coombs of Wang Law Corporation, California, USA. Respondent is Maddisyn Fernandes / Fernandes Privacy Holdings (“Respondent”), Bolivia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shopdisneyparks.com>, registered with Internet Domain Service BS Corp.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 25, 2017; the Forum received payment on September 25, 2017.
On October 2, 2017, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <shopdisneyparks.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 October 9, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 2017 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@shopdisneyparks.com. Also on October 9, 2017, 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 November 2, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant is a worldwide leading producer of children’s entertainment, and related goods and services such as movies, television programs, books, and merchandise. Complainant’s businesses include world-famous theme parks located all over the world as well as Disney Cruise Lines, which includes ports in Nassau, Bahamas and many others.
Complainant uses the DISNEY and DISNEY PARKS marks (“DISNEY marks”) in conjunction with its business practices. Complainant registered the DISNEY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,162,727, registered July 28, 1981). Complainant registered the DISNEY PARKS mark with USPTO (Reg. No. 3,410,734, registered Apr. 8, 2008). Complainant also registered the DISNEY marks with government trademark entities in Asia, Europe, and South America.
Respondent’s <shopdisneyparks.com> is confusingly similar to Complainant’s mark because it incorporates the DISNEY PARKS mark in its entirety, adding the generic word “shop” and the “.com” generic top level domain (“gTLD”).
Respondent has no rights or legitimate interests in <shopdisneyparks.com>. Respondent is not commonly known by the domain name. Complainant has not authorized Respondent to use the DISNEY marks for any purpose. Respondent fails to use the disputed domain name in connection with any bona fide offering of goods or services, or legitimate noncommercial or fair use of the domain. Respondent’s <shopdisneyparks.com> resolves to a website hosting links to Complainant’s goods and services, and links in direct competition with Complainant. Moreover, the disputed domain requires users to go through a “Security Check” where users are required to download “privacyProtection” programs not authorized by Complainant.
Respondent registered and continues to use <shopdisneyparks.com> in bad faith. Respondent has registered multiple domains infringing on other famous third-party marks, thereby evincing a pattern of bad faith registration. The disputed domain name attracts internet users to Respondent’s website for commercial gain acquired from click-through-fees. Respondent registered <shopdisneyparks.com> with actual notice of Complainant and its rights to the DISNEY marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the DISNEY and DISNEY PARKS marks through its registration of such marks with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademarks in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademarks.
Respondent’s <shopdisneyparks.com> addresses a website that hosts links to Complainant’s goods and services, and to third-parties in direct competition with Complainant. The website also requires users to go through a bogus security check requiring “privacy protection” programs, not authorized by Complainant to be downloaded.
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.
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 (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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO registration for DISNEY and/or DISNEY PARKS demonstrates its rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register …, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Respondent’s <shopdisneyparks.com> domain name may be read to contain Complainant’s DISNEY and DISNEY PARKS trademarks, prefixed with the generic term “shop,”all followed by a necessary top level domain name, here “.com”. The differences between the at-issue domain name and Complainant’s trademarks are insufficient to distinguish one from the other for the purposes of Policy ¶ 4(a)(i). Therefore the Panel concludes that Respondent’s <shopdisneyparks.com> domain name is confusingly similar to each of Complainant’s DISNEY and DISNEY PARKS trademarks. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent is not authorized to use Complainant’s trademarks in any capacity and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Maddisyn Fernandes.” The record before the Panel contains no evidence that might otherwise tend to prove that Respondent is commonly known by the at-issue domain name. The Panel therefore concludes that for the purposes of Policy ¶ 4(c)(ii) Respondent is not commonly known by the at-issue domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration); see also, Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Further, Respondent uses the <shopdisneyparks.com> domain name to address a website presenting links both to Complainant’s goods and services and to the goods and services of its competitors. Using the at-issue domain name in this manner is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. 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).
Given the foregoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <shopdisneyparks.com> domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances, as well as other circumstance, are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above regarding rights and legitimate interests, Respondent uses its confusingly similar <shopdisneyparks.com> domain name to links both to Complainant’s goods and services and to the goods and services of its competitors. Such use allows Respondent to profit from click-through fees. Respondent thus shows bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also, Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”);
Additionally, Respondent has registered multiple domain names which appear to infringe on third party marks. Such registrations suggest a pattern of bad faith registrations and thus bad faith in the instant dispute pursuant to Policy ¶ 4(b)(ii). See Sony Kabushiki Kaisha v. Anderson, FA 198809 (Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously registered domain names incorporating well-known third party trademarks); see also, Technology Properties, Inc. v. Syed Hussein, et al., FA 095411 (Forum Sep. 14, 2000) (finding bad faith where pattern of conduct evidenced by registering numerous domain names that infringe on famous marks).
Finally, Respondent registered <shopdisneyparks.com> knowing that Complainant had trademark rights in the DISNEY and DISNEY PARKS marks. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademarks. In fact, the fame of Complainant’s marks makes it inconceivable to even speculate that Respondent’s may have been ignorant of Complainant’s marks at the time it registered the <shopdisneyparks.com> domain name. It is thus clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademarks further indicates that Respondent registered and used the <shopdisneyparks.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shopdisneyparks.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 5, 2017
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