Disney Enterprises Inc. v. Jared Meyers d/b/a
Online Holdings
Claim Number: FA0605000697818
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, USA. Respondent is Jared Meyers d/b/a Online Holdings (“Respondent”), represented by Bruce E. Matter, of Law Offices of Bruce E. Matter, P.C., 12413 Rousseau Terrace, North Potomac, MD 20878.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <disneyparks.com>,
registered with Go Daddy Software, Inc.
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.
Professor Darryl C. Wilson as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 28, 2006; the National Arbitration Forum received a
hard copy of the Complaint on May 1, 2006.
On May 1, 2006, Go Daddy Software, Inc. confirmed by e-mail to the
National Arbitration Forum that the <disneyparks.com>
domain name is registered with Go Daddy Software, Inc. and that the Respondent
is the current registrant of the name. Go
Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy
Software, 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 May 3, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of May 23, 2006 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@disneyparks.com by e-mail.
A timely Response was received and determined to be complete on May 30,
2006.
An Additional Submission from Complainant was timely received on June
2, 2006.
An Additional Submission from Respondent was timely received on June 7,
2006.
On June 12, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Professor Darryl C. Wilson as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts that it is the owner of
hundreds of registrations for the DISNEY trademark and other DISNEY-formative
marks in countries all over the world.
Complainant states that it or its predecessors have continuously used
and applied the trademark for a variety of goods and services since 1923. The uses of the trademark include use in
connection with the operation of a number of theme parks and incorporate
services associated with leisure activities at various resorts. Complainant asserts that it also owns
numerous domain names evidencing use of the DISNEY trademark and that
Respondent’s domain name <disneyparks.com>
fully incorporates Complainant’s famous, long-standing, widely registered
trademark. Complainant argues that
Respondent has no legitimate interest in the domain name and as such registered
the domain name in bad faith.
B. Respondent
Respondent asserts that it has rights to use the disputed domain name
based on the fact that it created the domain name <disneyparks.com> on or about March 5, 1999 and renewed the
same on or about March 6, 2006.
Respondent also asserts that the phrase “disney parks” is not subject to
enforceable trademark rights because of years of common usage. Respondent further asserts that Complainant
is estopped from claiming trademark rights due to its acquiescence to the
long-standing, widespread use of “disney parks” on the web. Respondent argues that it has a legitimate
interest based on its long-standing and bona fide intent to use the subject
domain name which is reflected in its past and ongoing interest in developing a
website that will benefit both parties and others. Respondent additionally asserts that it has turned down
unsolicited offers to purchase the domain name and has not used the domain in
connection with any links or illegitimate websites that might divert traffic
away from Complainant or otherwise disrupt Complainant’s business operations.
C. Additional Submissions
Complainant further asserted that Respondent’s plan to develop a
website offering competing travel related services and Respondent’s knowledge
of Complainant’s trademark evidenced Respondent’s lack of legitimate interest
and bad faith. Complainant additionally
stated that infringing uses by others did not provide a defense for Respondent
nor does estoppel because the latter was either not part of UDRP policy or
because Respondent failed to provide evidence in support thereof.
Respondent reasserted its legitimate rights in the disputed domain name
and affirmed its belief that Complainant failed to sustain its burden in
proving each of the required elements as set forth in the UDRP policy.
FINDINGS
Complainant, Disney Enterprises, Inc., has
for many years owned multiple registrations for the DISNEY trademark and
related marks in countries throughout the world. DISNEY is a famous mark that has been widely registered and used
in conjunction with numerous goods and services including theme parks, resorts,
and leisure activities. Complainant’s
current registrations include the marks DISNEY (Reg. No. 1,162,727 issued July
28, 1981); DISNEY ONLINE (Reg. No. 2,194,742 issued October 13, 1998); and
DISNEYLAND (Reg. No. 1,037,788 issued April 13, 1976. Complainant also owns numerous domain names that also incorporate
the DISNEY mark such as <disney.com>, <waltdisney.com>
and <waltdisneyworld.com>.
On March 13, 2006 Complainant filed an “intent-to-use” application to
register the mark “Disney Parks” as a service mark for education and
entertainment services.
Respondent, Online Holdings, Inc. registered
the disputed domain name <disneyparks.com>
on March 5, 1999. Respondent has no
currently developed website to which the domain resolves although it asserts
that it always had a desire to establish a website that promotes and advertises
travel and tourism services in geographic areas around Disney theme parks. Respondent provided the affidavit of an
individual who identifies himself as a technology consultant with a company who
worked on a proposed website for Respondent during the year 1999.
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.
Complainant contends that the <disneyparks.com> domain name is
confusingly similar to its DISNEY mark because the disputed domain name
contains the entire registered mark and merely adds the term “parks” which
describes Complainant’s theme park operations.
The addition of the term “parks” to Complainant’s mark does not avoid confusing
similarity pursuant to Policy ¶4(a)(i).
See Disney v. McSherry, FA
154589 (Nat. Arb. Forum June 17, 2003) (finding the
<disneyvacationvillas.com> domain name to be confusingly similar to
Complainant’s DISNEY mark because it incorporated Complainant’s entire famous
mark and merely added two terms to it.); see also Disney Enterprises, Inc. v. Zuccarini, D2001-0489 (WIPO
June 19, 2001) (finding <disneychanel.com>, <disneywallpaper.com>,
<disneywold.com>, <disneywolrd.com>, <disneyworl.com>, and
<walddisney.com> confusingly similar to the DISNEY trademark).
Respondent correctly notes that the disputed
domain name <disneyparks.com>
predates Complainant’s trademark application for the mark “Disney Parks” by
seven (7) years. But Complainant is not
relying on the pending application and instead points to the DISNEY mark and
other DISNEY related registrations that were famous long before Respondent
created the disputed domain name.
Respondent states that web users will not be confused by seeing the
disputed domain name <disneyparks.com>
because they have become so accustomed to the words “Disney Parks” in so many
context on the web. Respondent offers
no evidence in support of this assertion, instead urging “the panel to go
deeper in its analysis of the facts presented and the principles involved” and
ignore prior decisions finding confusing similarity where the Respondent’s
domain name combines a Complainant’s mark with a generic term. Respondent would have the Complainant
provide evidence that the words “Disney Parks” are not generic, however such
proof is not required under Policy ¶4(a)(i), nor is the panel empowered to
commit genericide on DISNEY, a valid, registered, uncontestable famous mark.
Complainant has proven this element.
Complainant argues that Respondent has no
right or legitimate interests in the disputed domain name pursuant to Policy
¶4(a)(ii). The registrant information
for the disputed domain indicate Jared Meyers d/b/a Online Holdings and
Respondent nowhere asserts that he or it is currently or has been commonly
known by the domain name. Failure to
assert that one is currently or has been commonly known by a domain name in
dispute indicates a lack of rights or legitimate interests in that name. See
Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that the respondent does not have rights in a domain name when
the respondent is not known by the mark); see
also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22,
2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik
a/k/a David Sanders.’ Given the WHOIS
domain name registration information, Respondent is not commonly known by the
[<awvacations.com>] domain name.”)
Respondent also admits that it has not used
the <disneyparks.com>domain
name since its creation seven (7) years ago.
Respondent has not shown that it has used the disputed domain name for 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
LFP, Inc. v. B & J Props., FA 10967 (Nat. Arb. Forum May 30, 2002) (A
the respondent cannot simply do nothing and effectively “sit on his rights” for
an extended period of time when the respondent might be capable of doing
otherwise); see also Am. Online, Inc. v.
Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4. 2003) (“Respondent’s passive holding of the
<aolfact.com> domain name for over six months is evidence that Respondent
lacks rights and legitimate interests in the domain name.”).
Respondent’s plans for future use of the
domain name for goods and services near DISNEY parks do not constitute
legitimate business preparations since use of the domain name in that fashion
will potentially divert customers from Complainant’s websites using the DISNEY
mark that offer similar goods and services.
Furthermore, Respondent can offer the same or similar goods and services
without relying upon a domain name that incorporates Complainant’s trademark.
Complainant has proven this element.
Respondent knew or should have known of
Complainant’s DISNEY trademark at the time it registered the disputed domain
name <disneyparks.com> since
the trademark had been registered and in use domestically and internationally and
is a famous mark. Furthermore,
Respondent’s information indicates an Orlando address and Orlando is the site
of Complainant’s largest theme park, WALT DISNEY WORLD RESORT. See
Victoria’s Secret v. Hardin, FA 96694 (Nat. Arb. Forum Mar. 31, 2001) (finding
that “[i]n light of the notoriety of Complainant’s famous mark, Respondent had
actual or constructive knowledge of the BODY BY VICTORIA marks at the time
[Respondent] registered the disputed domain name” and such knowledge
constituted bad faith); see also Exxon
Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the
respondent had actual and constructive knowledge of the complainant’s EXXON
mark given the worldwide prominence of the mark and thus the respondent
registered the domain name in bad faith).
Respondent argues that it has not violated
any of the factors under Policy ¶4(b) however the circumstances are listed as
“in particular but without limitation” thus indicating that failure to violate
one or more of these four (4) factors is not dispositive of the bad faith
issue. See Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000)
(finding that the Policy “indicates that its listing of bad faith is without limitation”); see also Channel Tunnel Group Ltd. V. Powell,
D2000-0038 (WIPO Mar. 17, 2000) (“[J]ust because Respondent’s conduct does not
fall within the ‘particular’ circumstances set out in [¶4(b)] of the Policy, is
not conclusive that the [<euro-tunnel.com>] domain name in issue was
registered in and is being used in bad faith.”). Furthermore, Respondent’s planned use for the disputed domain
name includes actions that would clearly violate one or more factors if they
were currently being undertaken.
Respondent’s passive holding of the disputed
domain name for seven (7) years provides evidence of bad faith registration and
use under Policy ¶4(a)(iii). See DCI S.A. v. Link Commercial Corp.,
D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive
holding of the domain name satisfies the requirement of ¶4(a)(iii) of the
Policy); see also Caravan Club v. Mrgsale,
FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no
use of the domain name or website that connects with the domain name, and that
passive holding of a domain name permits an inference of registration and use
in bad faith).
Additionally, Respondent’s passive holding of
the disputed domain name undercuts the assertion of a laches defense. Complainant did not fail to act against
Respondent or otherwise sit on its rights to Respondent’s detriment since
Respondent has never actively utilized the disputed domain name. Respondent’s efforts at arguing related
equitable defenses such as estoppel and acquiescence are equally misplaced as
these legal arguments are not contemplated by the Policy. Moreover, recognition of these arguments in
accordance with Respondent’s desires requires the Panel to make a legal
determination regarding the continuing validity of Complainant’s DISNEY mark. Such action is beyond the scope of the UDRP
proceeding and if Respondent desires such an outcome it should avail itself of
the proper judicial proceedings by which such a result might be accomplished.
Complainant has proven this element.
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 <disneyparks.com>
domain name be TRANSFERRED from Respondent to Complainant.
Professor Darryl C. Wilson, Panelist
Dated: June 26, 2006
DCW:lsb (6-26-06)
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