Disney Enterprises Inc. v. Nevis Domains
Claim Number: FA0606000739876
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 Nevis Domains (“Respondent”), P.O. Box 626, Suite 201, Charlestown Nevis, II 00000 KN.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <disneychannelgames.com>, registered with Moniker Online Services, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 27, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 27, 2006.
On June 29, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <disneychannelgames.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 July 6, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 26, 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@disneychannelgames.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 1, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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:
Complainant is an internationally renowned purveyor of children’s entertainment goods and services.
Complainant holds a registration with the United States Patent and Trademark Office (“USPTO”) for the DISNEY mark (Reg. No. 1,162,727 issued July 28, 1981).
Complainant uses the DISNEY mark in connection with movies, theme parks, computer games, television programs, books and countless other merchandise.
Complainant has registered the domain names <disney.com>, <disneychannel.com> and <disneyland.com>, all including the DISNEY mark, for use in connection with providing children’s entertainment goods and services.
Respondent is not sponsored by or in any way affiliated with Complainant, and Complainant has never given Respondent authorization to use Complainant’s DISNEY mark in a domain name.
Respondent registered the <disneychannelgames.com> domain name on March 19, 2003.
Respondent is using the disputed domain name to redirect Internet users to Respondent’s website which consists wholly of links to third-party websites.
Many of these links are to websites offering children’s entertainment goods and services in direct competition with those of Complainant.
Other such links appear to be offering Complainant’s goods and services for sale and still other links are unrelated to Complainant, connecting to websites offering credit reporting services, and online gambling, amongst other things.
Respondent’s <disneychannelgames.com> domain name is confusingly similar to Complainant’s DISNEY mark.
Respondent does not have any rights or legitimate interests in the domain name <disneychannelgames.com>.
Respondent registered and uses the <disneychannelgames.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark 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 was registered and is being used by Respondent in bad faith.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the DISNEY mark
through its registration with the USPTO.
Such registration is sufficient to establish rights in the mark pursuant
to Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002): "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." 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.”
The <disneychannelgames.com> domain name is confusingly similar to Complainant’s DISNEY mark. The name includes Complainant’s mark in its entirety and merely adds the terms “channel” and “games.” The terms “channel” and “games” are descriptive of Complainant’s business, and are terms which are used frequently by Complainant in connection with the DISNEY mark to describe Complainant’s children’s entertainment goods and services. Respondent’s use of Complainant’s mark in conjunction with terms describing Complainant’s business does not overcome the confusing similarity between the disputed domain name and Complainant’s mark, and, in fact, increases the potential to confuse Internet users. Thus, by combining a famous mark with terms describing Complainant’s business, Respondent has registered a confusingly similar domain name as contemplated by Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001):
[T]he
fact that a domain name wholly incorporates a Complainant’s registered mark is
sufficient to establish identity or confusing similarity for purposes of the
Policy despite the addition of other words to such marks.
See also Space
Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000)
(finding confusing similarity where a respondent’s domain name combines a
complainant’s mark with a generic term that has an obvious relationship to the
complainant’s business); see also Am.
Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum
Dec. 15, 2003) (finding that the addition of the term “assurance,” to a
complainant’s AIG mark failed to sufficiently differentiate the name from the
mark under Policy ¶ 4(a)(i) because the appended term related directly to that
complainant’s business).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant’s submission of a Complaint including the assertion that Respondent lacks rights or legitimate interests in the <disneychannelgames.com> domain constitutes a prima facie case under the Policy. The creation of a prima facie case shifts the burden to Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Respondent is afforded the opportunity to submit a Response in order to offer evidence that it has rights or legitimate interests in the disputed domain name. Respondent’s failure to avail itself of the opportunity to respond may be viewed by the Panel as evidence that Respondent does not have rights or legitimate interests in the disputed domain name. In the absence of evidence to the contrary, the Panel may also assume that the facts asserted by Complainant are correct. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Because
Complainant’s Submission constitutes a prima
facie case under the Policy, the burden effectively shifts to Respondent.
Respondent’s failure to respond means that Respondent has not presented any
circumstances that would promote its rights or legitimate interests in the
subject domain name under Policy ¶ 4(a)(ii).
See also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”)
Despite Respondent’s failure to respond, the Panel will evaluate the available evidence to determine whether Respondent has rights or legitimate interests in the disputed domain name as contemplated by Policy ¶ 4(c).
Respondent does not deny Complainant’s assertion that Respondent uses the domain name <disneychannelgames.com> to redirect Internet users to Respondent’s website, which lacks any original content and is composed entirely of links to third-party websites. Many of these links redirect Internet users to third-party websites offering children’s entertainment goods and services in direct competition with those of Complainant, as well as link to other websites purportedly offering Complainant’s goods and services, without any authorization from Complainant, and still others link to websites completely unrelated to Complainant. Presumably, Respondent receives financial remuneration from these links to third-party websites in the form of pay-per-click referral fees. Respondent’s use of a confusingly similar domain name to redirect Internet users to Respondent’s website in order to generate referral fees for Respondent is not a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii). See Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that a respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); see also 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that a respondent’s use of the domain names <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> to redirect Internet users to a website featuring advertisements and links to a complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use.
In addition, there is no evidence indicating that Respondent
is commonly known by the <disneychannelgames.com> domain
name. Respondent’s WHOIS information
identifies Respondent as “Nevis Domains.”
Further, Complainant asserts, without contradiction from Respondent,
that Respondent is not sponsored by or affiliated with Complainant in any way
and Complainant has never given Respondent authorization to use Complainant’s
DISNEY mark in a domain name. This is
evidence that Respondent lacks rights or legitimate interests in the disputed
domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA
139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that “nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply);
see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
a respondent was not commonly known by the mark there in issue and never
applied for a license or permission from a complainant to use the trademarked
name); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without evidence to support the assertion that a respondent is commonly known
by a domain name, the assertion must be rejected).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
There is no dispute that Respondent is using the <disneychannelgames.com>
domain name to redirect Internet users to its website, which features links
to both competing and unrelated third-party websites. By using a confusingly similar domain name to draw Internet users
to its website, and populating that website with links to competing third-party
websites offering children’s entertainment goods and services, Respondent is
diverting Complainant’s potential customers away from Complainant’s legitimate
websites and to the websites of its competitors. Such behavior is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding that a respondent acted in bad
faith by attracting Internet users to a website that competed with a
complainant’s business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000)
(finding that a respondent diverted business from a complainant to a
competitor’s website within the meaning of Policy ¶ 4(b)(iii)).
Moreover, Respondent’s <disneychannelgames.com>
domain name is confusingly similar to Complainant’s DISNEY mark. Internet users seeking Complainant’s
children’s entertainment goods and services at its genuine website may easily
be redirected instead to Respondent’s website either through running an
Internet search including Complainant’s mark and the descriptive terms used by
Respondent, or by typing the same directly into a web browser. The confusing similarity between the
disputed domain name and Complainant’s mark increases the possibility that
Internet users thus directed to Respondent’s website may believe that
Respondent’s website is affiliated with or sponsored by Complainant. Respondent is presumably profiting from this
confusion when Internet users click on the links to third-party websites,
generating referral fees for Respondent.
Respondent’s use of the contested domain name to attract Internet users
to Respondent’s website in order to generate referral fees from links to
third-party websites is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA
204147 (Nat. Arb. Forum Dec. 8, 2003): “Although Complainant’s principal
website is <century21.com>, many Internet users are likely to use search
engines to find Complainant’s website, only to be misled to Respondent’s
website at the <century21realty.biz> domain name, which features links
for competing real estate websites.
Therefore, it is likely that Internet users seeking Complainant’s
website, but who end up at Respondent’s website, will be confused as to the
source, sponsorship, affiliation or endorsement of Respondent’s website.” See also Associated
Newspapers Ltd. v. Domain Manager,
FA 201976 (Nat. Arb. Forum Nov. 19, 2003): “Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <disneychannelgames.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 11, 2006
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