Disney Enterprises, Inc. v. Michele
Dinoia d/b/a SZK.com
Claim
Number: FA0408000318792
Complainant is Disney Enterprises, Inc. (“Complainant”),
represented by J. Andrew Coombs, 450 North Brand Boulevard, Suite
600, Glendale, CA 91203-2349.
Respondent is Michele Dinoia d/b/a SZK.com (“Respondent”), Via Trilussa 11, Pineto, TE, IT 64025.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <disneycostumes.com>, registered with Onlinenic,
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on August 27, 2004; the Forum received a hard copy of the
Complaint on August 27, 2004.
On
August 29, 2004, Onlinenic, Inc. confirmed by e-mail to the Forum that the
domain name <disneycostumes.com> is registered with Onlinenic,
Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc.
has verified that Respondent is bound by the Onlinenic, 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
September 3, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of September 23, 2004 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@disneycostumes.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
October 1, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed the Honorable Charles K.
McCotter, Jr. (Ret.) 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 <disneycostumes.com>
domain name is confusingly similar to Complainant’s DISNEY mark.
2. Respondent does not have any rights or
legitimate interests in the <disneycostumes.com> domain name.
3. Respondent registered and used the <disneycostumes.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
holds several registrations for the DISNEY mark, including registrations with
the Italian Trademark Office and Community Trademark Office (Reg. No. 732,711
registered on April 11, 1997).
Complainant also holds a registration for the DISNEY mark with the U.S.
Patent and Trademark Office (“USPTO”) (Reg. No. 1,162,727 registered on July
28, 1981).
Respondent
registered the <disneycostumes.com> domain name on May 21,
2003. The domain name redirects
Internet users to a website that provides links to commercial websites
unrelated to Complainant. Respondent
receives referral fees for redirecting Internet users to these commercial
websites via 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
established through registration with the USPTO, and the Italian Trademark
Office and Community Trademark Office that it has rights in the DISNEY
mark. See Men’s Wearhouse, Inc. v.
Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark
law, registered marks hold a presumption that they are inherently distinctive
and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption).
Respondent’s <disneycostumes.com>
domain name is confusingly similar to Complainant’s DISNEY mark because the
domain name fully incorporates the domain name and merely adds the generic word
“costumes” and the generic top-level domain “.com.” The addition of a generic word and a generic top-level domain is
insufficient to distinguish the domain name from Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding
confusing similarity where the domain name in dispute contains the identical
mark of Complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Kil, D2000-1409
(WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary
descriptive word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to submit a Response to the Complaint; therefore, the Panel will accept
all reasonable allegations and inferences in the Complaint as true. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000)
(“[i]n the absence of a response, it is appropriate to accept as true all
allegations of the Complaint”); see also Vertical Solutions Mgmt.,
Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000)
(holding that Respondent’s failure to respond allows all reasonable inferences
of fact in the allegations of Complainant to be deemed true).
Furthermore, due
to Respondent’s failure to respond, the Panel infers that Respondent lacks
rights and legitimate interests in the <disneycostumes.com> domain
name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000)
(finding no rights or legitimate interests where Respondent fails to respond); see
also Parfums Christian Dior v. QTR
Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a
Response, Respondent has failed to invoke any circumstance which could
demonstrate any rights or legitimate interests in the domain name).
Nothing in the
record indicates that Respondent is commonly known by the <disneycostumes.com>
domain name. Moreover, Complainant
has not authorized or licensed Respondent to register or use domain names that
incorporate the DISNEY mark. Therefore,
the Panel concludes that Respondent lacks rights and legitimate interests in
the domain name pursuant to Policy ¶ 4(c)(ii).
See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “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); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior
rights in the domain name precede Respondent’s registration; (3) Respondent is not
commonly known by the domain name in question).
In addition,
Respondent commercially benefits from use of the <disneycostumes.com> domain
name because it takes advantage of the goodwill associated with Complainant’s
mark. Complainant asserts that Respondent
uses the domain name to earn referral fees by using it to redirect Internet
users to commercial websites. Due to
Respondent’s failure to contest this assertion, the Panel accepts this
assertion as true. The Panel concludes
that Respondent’s use of the domain name 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). See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000)
(finding no rights or legitimate interests in the famous MSNBC mark where
Respondent attempted to profit using Complainant’s mark by redirecting Internet
traffic to its own website); see also WeddingChannel.com Inc. v. Vasiliev,
FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that Respondent’s use of the
disputed domain name to redirect Internet users to websites unrelated to
Complainant’s mark, websites where Respondent presumably receives a referral
fee for each misdirected Internet user, was not a bona fide offering of goods
or services as contemplated by the Policy).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
commercially benefits from use of the <disneycostumes.com> domain
name by receiving referral fees for diverting Internet users to commercial
websites. Thus, Respondent commercially
benefits by causing Internet user confusion with Complainant’s mark. Respondent’s use of the domain name is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto.,
FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name
was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) because
Respondent intentionally attempted to attract Internet users to its fraudulent
website by using Complainant’s famous marks and likeness); see also Kmart v.
Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent
profits from its diversionary use of Complainant's mark when the domain name
resolves to commercial websites and Respondent fails to contest the Complaint,
it may be concluded that Respondent is using the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv)).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <disneycostumes.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
October 12, 2004
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