Disney Canada, Inc. v. Adeyori Adebowale
Claim Number: FA1807001797637
Complainant is Disney Canada, Inc. (“Complainant”), represented by Annie S. Wang of Wang Law Corporation, California, USA. Respondent is Adeyori Adebowale (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clubpenguinonline.com>, registered with NameCheap, Inc.
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.
Bart Van Besien as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 19, 2018; the Forum received payment on July 19, 2018.
On July 20, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <clubpenguinonline.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 July 20, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 9, 2018 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@clubpenguinonline.com. Also on July 20, 2018, 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.
On August 9, 2018, the Respondent filed a Response to Complainant’s Domain Name Dispute Complaint. This Response was received by the Forum in a timely manner.
On August 13, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Mr. Bart Van Besien as Panelist.
On August 15, 2018, the Forum received the Additional Submission (including an additional exhibit) by Complainant in a timely manner in accordance with the Forum’s Supplemental Rule #7. These documents have been considered by the Panelist along with the other materials submitted.
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 issues its decision based on the documents submitted by the Complainant and the Respondent, and in accordance with the ICANN Policy, the ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant:
(i) Complainant, Disney Canada, Inc. (formerly known as Club Penguin Entertainment, Inc. and Disney Online Studios Canada, Inc.), owns and operates an online portal for kids widely known as Club Penguin, and relaunched as Club Penguin Island. Complainant has rights in the “CLUB PENGUIN” trademark based on its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,150,662 registered May 29, 2012) and various other trademark registrations all over the globe. See Compl. Ex. E. Respondent’s <clubpenguinonline.com> domain name is confusingly similar to Complainant’s mark(s) because Respondent incorporates Complainant’s entire mark in the disputed domain name, plus the generic term “online” and the “.com” generic top-level domain name (“gTLD”).
(ii) Respondent lacks rights and legitimate interests in the <clubpenguinonline.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use the mark in any way. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to redirect users to a webpage that offers unauthorized versions of Complainant’s games.
(iii) Respondent registered and uses the <clubpenguinonline.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business by using the disputed domain name to offer pirated copies of Complainant’s products. Respondent had actual knowledge of Complainant’s rights in the mark prior to registration of the disputed domain name.
B. Respondent:
Respondent submitted a brief Response stating the following (full quote):
“In that case, I would just like to say that Club Penguin Online is an educational experiment and the only reason why the game is so successful is because many people wish to play the classic original Club Penguin, hence our domain name. We would like to keep our domain as we do not want to lose our users, we can put a link to the official Club Penguin Island website on our site if Disney agrees.
In short, we just want to keep hold of our domain until the expiration date (January 2019).
Thank you.”
C. Complainant’s Additional Submission:
In its Additional Submission, Complainant states:
Respondent’s assertions in the Response confirm Respondent’s knowledge of Complainant’s trademark rights and confirm Respondent’s bad faith efforts to borrow from Complainant’s goodwill. The Response also confirms Respondent’s lack of rights in the Domain Name, given his attribution of the Trademarks and the original Club Penguin content involving the Domain Name as belonging to Complainant. The three required elements for transfer of the domain name are supported by admissions of Respondent’s knowledge of and imitation of Complainant’s Trademarks (and copyrights), as well as his intent to direct traffic to his confusingly similar Domain Name which is the site of an infringing version of Complainant’s Club Penguin.
Respondent does not deny confusing similarity of the Domain Name to Complainant’s Trademarks. Respondent identifies the “original Club Penguin” as the reason why his website is successful. Respondent relies on a purported “educational experiment” excuse, which is inapplicable and has been rejected in prior cases involving similarly infringing domain names.
Respondent’s bad faith is further evidenced by his moving of the website to which the Domain Name directs after receipt of the Complaint to a new domain which features Google Advertisements. See Compl. Ex. M.
The disputed domain name <clubpenguinonline.com> was created on January 3, 2018.
Complainant owns several trademarks containing the words “Club Penguin”. The dates of registration of the Complainant’s trademarks range from 2009 to 2017.
“Club
Penguin Island”, is an online game for children developed and released by Complainant
and its predecessors. The game is a continuation of the game “Club Penguin”,
developed by New Horizon Interactive, RocketSnail Games, and Disney Interactive
Studios. In 2007, Complainant’s mother company (or group-related company), “The
Walt Disney Company”, purchased New Horizon, and Club Penguin along with it.
Club Penguin was discontinued on March 30, 2017, while Club Penguin Island was
released on March 29, 2017.
The
disputed domain name <clubpenguinonline.com> incorporates
Complainant’s mark, plus the term “online” and the gTLD “.com”.
The disputed domain name leads to a website, containing sponsored advertisements, that looks similar to Club Penguin Island’s official website, <clubpenguinisland.com>, in the sense that parts of the lay-out, logos, and illustrations are reproduced. This website also contains a link to a Twitter-account called “Club Penguin Online”. The description of this account states: “Club Penguin Online is a recreation of the original Club Penguin (…)”.
After receipt of the Complaint, Respondent moved the disputed domain name in the sense that the domain name now redirects to the domain name <cponline.pw>. The website available via this second domain name also contains content that is similar to Club Penguin Island’s official website <clubpenguinisland.com>. This website mentions the following statements (among other statements): “Welcome to Club Penguin Online”, “© Club Penguin Online”, “Club Penguin Online is an educational instance. We do not hold copyright for any of the files.” This website also contains sponsored links. See Compl. Ex. M.
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.
The Panel notes the following with regard to the “Club Penguin” trademarks submitted as evidence by Complainant:
- Some of the “Club Penguin” trademark registrations submitted by Complainant are registered by Complainant itself (e.g. US trademark No. 5,114,772, EU trademark No. 009066796, Spanish trademark No. 2.935.878, and Norwegian trademark No. 283678). The Panel took these trademarks into account when rendering its decision.
- Some of the other “Club Penguin” trademark registrations submitted by Complainant seem at first view not to be registered by the Complainant itself but by another company, i.e. Disney Online Studios Canada, Inc. (e.g. US trademark No. 4,150,662, Swiss trademark No. 590984, and Turkish trademark No. 2010 26404). However, the Panel notes that Exhibit H of the Complaint serves as evidence that Complainant is in fact an amalgamation of various companies, including Disney Online Studios Canada, Inc. to Disney Canada, Inc. See Compl. Ex. H. Therefore, the Panel accepts that Complainant has also rights in these trademarks and considered these trademarks when rendering its decision.
Complainant asserts rights in the “CLUB PENGUIN” mark based upon various trademark registrations all over the world and provided copies of these registrations (some of these are listed in the previous paragraph). See Compl. Ex. E. Registration of a mark with the USPTO or other trademark registries may be sufficient to establish complainant’s rights in a mark under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
From the trademark registrations submitted by Complainant, the Panel concludes that Complainant has rights in the mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <clubpenguinonline.com> domain name is confusingly similar to Complainant’s mark. Specifically, Complainant alleges that Respondent incorporates the entire mark in the disputed domain name plus the generic term “online” and the gTLD “.com”.
In previous cases, it has been decided that the addition of a generic term and a gTLD to a complainant’s mark was not sufficient to distinguish a domain name from a mark under Policy ¶ 4(a)(i). 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)).
Here, Respondent includes the entire CLUB PENGUIN trademark of Complainant in the disputed domain name plus the generic term “online” and the “.com” gTLD. The generic term “online” and the “.com” gTLD can be disregarded when assessing the confusing similarity of the disputed domain name with the previous signs. Accordingly, the Panel finds that Respondent’s <clubpenguinonline.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
In numerous previous cases, it has been decided that 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 that subsequently the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant argues that Respondent lacks rights and legitimate interests in the <clubpenguinonline.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use the CLUB PENGUIN mark in any way. Relevant WHOIS information may be used to identify the respondent per Policy ¶ 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Additionally, lack of authorization from a complainant to use its mark may be further evidence that a respondent is not commonly known by a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The Panel notes that the WHOIS information identifies Respondent as “Adeyori Adebowale”. No information of the WHOIS record indicates that Respondent is authorized to use Complainant’s mark in any way. Accordingly, the Panel concludes that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Complainant contends that Respondent fails to use the <clubpenguinonline.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Specifically, Complainant alleges Respondent uses the disputed domain name to divert internet users to a webpage that offers goods and services in direct competition with those offered by Complainant. Use of a domain name to redirect internet users to a webpage that offers competing goods and services may not be considered a bona fide offering or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Complainant provides screenshots of the webpages associated with the disputed domain name, which features an unauthorized version of Complainant’s club penguin online game. See Compl. Ex. I. The Panel notes that the <clubpenguinonline.com> domain name has a Twitter account that specifically states that the website is a purported “recreation of the original Club Penguin.” See Compl. Ex. J. The Panel concludes that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent registered and uses the <clubpenguinonline.com> domain name in bad faith. Specifically, Complainant asserts that Respondent uses the disputed domain name to disrupt Complainant’s business as the website features infringing and pirated content not authorized by Complainant. Use of a domain name to offer pirated copies of Complainant’s products may be evidence of bad faith under Policy ¶ 4(b).(iii) See Wall v. Silva, FA 105899 (Forum Apr. 29, 2002) (finding that despite respondent’s claim that it used the <josephinewall.com> domain name, which was identical to complainant’s JOSEPHINE WALL mark, to help complainant become popular in the United States, the Panel found that the respondent’s use of the domain name to sell the complainant’s artwork in the United States constituted disruption pursuant to Policy ¶ 4(b)(iii)); see also Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum Dec. 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”).
Complainant provided screenshots of the webpages and Twitter account associated with the disputed domain name, which show Respondent offering a version of Complainant’s Club Penguin online game. See Compl. Ex. I. Therefore, the Panel concludes that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii).
Furthermore, Complainant alleges that Respondent registered and uses the <clubpenguinonline.com> domain name with actual knowledge of Complainant’s rights in the CLUB PENGUIN mark prior to registration of the disputed domain name. A respondent may be presumed to have actual knowledge of the complainant’s rights in the mark where the mark is famous according to Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”).
Complainant argues that Respondent uses the disputed domain name to operate an online gaming site that is identical to Complainant’s. See Compl. Ex. I. Additionally, Complainant provides articles regarding the overall success of the Club Penguin website in support of its contention. See Compl. Ex. D.
Also, in its Response, Respondent explicitly refers to the original “Club Penguin” game of Complainant: “In that case, I would just like to say that Club Penguin Online is an educational experiment and the only reason why the game is so successful is because many people wish to play the classic original Club Penguin, hence our domain name.” From this statement, it follows that Respondent was well aware of the existence of the original “Club Penguin” game and of Complainant’s rights to the mark “CLUB PENGUIN”. Respondent’s statement that the website available via the disputed domain name is an “educational experiment” is not supported by evidence or further argumentation. The Panel concludes that this statement lacks plausibility.
Consequently, the Panel concludes that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <clubpenguinonline.com> domain name be TRANSFERRED from Respondent to Complainant.
Mr. Bart Van Besien, Panelist
Dated: August 27, 2018
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