National Arbitration Forum

 

DECISION

 

Disney Enterprises, Inc. v. Artmidia Comunicacao Visual Criacao E Arte Ltda.

Claim Number: FA0512000603590

 

PARTIES

Complainant is Disney Enterprises, Inc. (“Complainant”), represented by J. Andrew Coombs, of J. Andrew Coombs, A Professional Corporation, 450 North Brand Boulevard, Suite 600, Glendale, CA 91203-2349.  Respondent is Artmidia Comunicacao Visual Criacao E Arte Ltda (“Respondent”), 212 Belo Horizonte, MG 30120050.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <disneylandia.com> and <disneylandia.net>, registered with Bulkregister, LLC.

 

PANEL

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.

 

Honorable Paul A. Dorf (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 30, 2005; the National Arbitration Forum received a hard copy of the Complaint on November 30, 2005.

 

On December 6, 2005, Bulkregister, LLC. confirmed by e-mail to the National Arbitration Forum that the <disneylandia.com> and <disneylandia.net> domain names are registered with Bulkregister, LLC. and that the Respondent is the current registrant of the name.  Bulkregister, LLC. has verified that Respondent is bound by the Bulkregister, LLC. 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 December 8, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 28, 2005 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@disneylandia.com and postmaster@disneylandia.net by e-mail.

 

A timely Response was received and determined to be complete on December 28, 2005.

 

On January 3, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that the domain names at issue fully incorporate Complainant’s famous, long standing and widely registered trademarks making them identical or confusingly similar to Complainant’s famous mark;  that Respondent had no legitimate interest in the domain names at issue; and that the Respondent registered and used the domain names at issue in bad faith.

 

B. Respondent

Respondent contends that they did not register the domain name at issue in bad faith, and that they would transfer the domain name at issue if they were paid the costs of the registration and renewal and maintenance of the internet site.

 

FINDINGS

Complainant has been the owner of many registrations for the Disney trademark in the United States and countries all over the world.  Complaint has continually used these marks for a variety of entertainment related goods and services.  Complaint owns a registration in Brazil for the “Disneylandia” mark.  These trademarks were established well before the Respondent registered the domain names at issue. 

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the 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.

 

Identical and/or Confusingly Similar

 

As stated above, the Complainant has registered the “Disney” trademark with the United States Patent and Trademark Office (“USPTO”).   This is sufficient evidence to establish Complainant’s right to the mark and the domain names at issue.   See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).

 

Further, the addition of the letters “ia” to the end of Complainant’s DISNEYLAND mark is insufficient to distinguish the domain names at issue from Complainant’s mark.  The term “disneylandia” is the Portuguese translation of the DISNEYLAND mark, and Complianant holds such a trademark for this term in Brazil.  Therefore, the <disneylandia.com> and <disneylandia.net> domain names are confusingly similar to Complainant’s mark.  See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON).

 

Rights or Legitimate Interests

 

Respondent has not provided any objective evidence to indicate it has rights or legitimate interests in the domain names at issue.  Complainant, as stated above, holds trademark registrations for both the “Disney” and “Disneylandia” marks.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).

 

It appears from the evidence presented that the domain names as issue are being used as portals to Respondent’s own website in an effort to divert Internet users for Respondent’s own commercial gain.  Such diversionary use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's registration and use of the <gayaol.com> domain name with the intent to divert Internet users to Respondent's website suggests that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”).

 

Further, Respondent has not presented any objective evidence to indicate it has permission to register domain names featuring Complainant’s DISNEYLAND mark or that it is commonly known by the <disneylandia.com> and <disneylandia.net> domain names.  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).

 

 

Registration and Use in Bad Faith

 

Respondent’s use of the <disneylandia.com> and <disneylandia.net> domain names to divert Internet users to Respondent’s website for its own commercial gain.  Such commercial use will likely cause confusion among Internet users as to Complainant’s sponsorship of or affiliation with Respondent’s disputed domain name.   See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <disneylandia.com> and <disneylandia.net> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Honorable Paul A. Dorf (Ret.), Panelist
Dated: January 16, 2006

 

 

 

 

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page

 

National Arbitration Forum