Disney Enterprises, Inc. v. Nicolas Noel
Claim
Number: FA0309000198805
Complainant is Disney Enterprises, Inc., Burbank, CA,
USA (“Complainant”) represented by J.
Andrew Coombs, of J. Andrew Coombs, A Professional Corporation, 450 North Brand Boulevard, Suite 600,
Glendale, CA 92103-2349. Respondent is Nicolas Noel, 18 Impasse
Estaunie, Toulouse, France (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <euro-disney.com>, registered with Enom,
Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on September 29, 2003; the Forum received a hard copy of the
Complaint on October 2, 2003.
On
October 6, 2003, Enom, Inc. confirmed to the Forum that the domain name <euro-disney.com>
is registered with Enom, Inc. and that Respondent is the current registrant of
the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by third
parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On
October 7, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of October
27, 2003 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@euro-disney.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
November 4, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Sandra Franklin 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."
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 makes the following assertions:
1. Respondent’s <euro-disney.com>
domain name is identical to Complainant’s EURO DISNEY mark.
2. Respondent does not have any rights or
legitimate interests in the <euro-disney.com> domain name.
3. Respondent registered and used the <euro-disney.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is
an entertainment company and owner of the famous DISNEY trademark (Reg. No.
1,162,727) and DISNEY-formative marks.
The DISNEY mark is, “widely accepted in the mind of the general public .
. . and has acquired . . . a secondary meaning and distinctiveness.” Walt Disney World Co. v. Disney Area
Acreage, Inc., 316 F. Supp. 285, 286-87 (S.D. Fla. 1970); see also Disney Enters., Inc. v.
Zuccarini, D2001-0489 (WIPO June 19, 2001) (DISNEY mark is “highly
distinctive and unquestionably famous”).
Complainant
registered the EURO DISNEY mark in France in 1991 (Reg. No. 1,637,628), the
jurisdiction in which Respondent is located, and has since continued to use the
mark in commerce. Complainant
registered the domain name <eurodisney.com> in 2002. Complainant has not authorized any use of
its marks by Respondent.
Respondent
registered the disputed domain name, <euro-disney.com>, on
September 2, 2003. Respondent uses the
domain name to redirect Internet users to <futurosope.com>, a website
relating to a theme park operating in competition with Complainant. The website contains no information
referring to <euro-disney.com>.
The WHOIS documentation of <euro-disney.com> does not
contain any information that would imply a relationship between Respondent and
the disputed domain name.
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."
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(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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.
Complainant has
rights in the EURO DISNEY mark through its registration in France and
continuous use in commerce since at least 1991.
The difference
between the disputed domain name, <euro-disney.com>, and the EURO
DISNEY mark is that the former contains a hyphen separating “euro” from
“disney”. The disputed domain name
contains Complainant’s mark in its entirety.
If the only difference between a mark and a domain name is a hyphen,
then the domain name is considered sufficiently identical to the mark. See France
Telecom SA v. France Telecom Users Group, D2002-0144 (WIPO April 22, 2002)
finding that Complainant’s "FRANCE TELECOM" mark was identical to the
domain name <france-telecom.com> because the addition of a hyphen did not
change the identical nature; see also
InfoSpace.com v. Tenenbaum Ofer, D2000-0075 (WIPO Apr. 27, 2000) (“the
domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark.
The addition of a hyphen is not a distinguishing feature”); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19,
2000) finding that putting a hyphen between words of Complainant’s mark is
identical to and confusingly similar to Complainant’s mark.
Therefore,
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant
asserts that Respondent lacks rights or legitimate interests in <euro-disney.com>. Respondent has failed to respond. Therefore, this Panel may reasonably infer
that Respondent lacks rights or legitimate interests in <euro-disney.com>. See
Charles Jourdan Holding AG v.
AAIM, D2000-0403 (WIPO June 27, 2000) finding it appropriate for the Panel
to draw adverse inferences from Respondent’s failure to reply to the Complaint;
see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14,
2000) drawing two inferences based on Respondent’s failure to respond: (1)
Respondent does not deny the facts asserted by Complainant, and (2) Respondent
does not deny conclusions which Complainant asserts can be drawn from the
facts.
Respondent has
provided no evidence that <euro-disney.com> is used in connection
with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or
a legitimate noncommercial or fair use of the domain name as stated in Policy ¶
4(c)(iii). Respondent uses the domain
name to redirect Internet users to a competitor of Complainant. Redirecting users to a competitor of a
mark’s owner is not a right or legitimate interest. See Clear Channel
Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum
Jan. 2, 2003) finding that Respondent, as a competitor of Complainant, had no
rights or legitimate interests in a domain name that utilized Complainant’s
mark for its competing website; see
also Winmark Corp. d/b/a Play It Again Sports v. In The Zone a/k/a Giant
Sports Factory, FA 128652 (Nat. Arb. Forum Dec. 6, 2002) finding
that Respondent had no rights or legitimate interests in a domain name that
used Complainant’s mark to redirect Internet users to a competitor’s website.
There is no
evidence that Respondent has ever been commonly known by the disputed domain
name pursuant to Policy ¶ 4(c)(ii).
Respondent’s website does not contain any relevant information relating
to the domain name. Additionally, the
WHOIS registration information fails to imply that Respondent is commonly known
by the name. See Gallup Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) finding that
Respondent does not have rights in a domain name when Respondent is not known
by the mark; see also Tercent Inc.
v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) finding that “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply.
Therefore,
Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent
registered a domain name confusingly similar to Complainant’s mark to divert
Internet users to a competitor’s website.
It is a reasonable inference that Respondent’s purpose of registration
and use was to either disrupt or create confusion for Complainant’s business in
bad faith pursuant to Policy ¶¶ 4(b)(iii) & (iv). See Surface Protection
Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) finding that,
given the competitive relationship between Complainant and Respondent,
Respondent likely registered the contested domain name with the intent to
disrupt Complainant's business and create user confusion; see also S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) finding Respondent acted in bad faith by
attracting Internet users to a website that competes with Complainant’s
business.
Therefore, Complainant
has satisfied 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 <euro-disney.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
November 11, 2003
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page