Disney Enterprises, Inc. v. WebMogul a/k/a WebMogul, Inc.
Claim Number: FA1311001528176
Complainant is Disney Enterprises, Inc. (“Complainant”), represented by J. Andrew Coombs of J. ANDREW COOMBS, A Professional Corporation, California, USA. Respondent is WebMogul a/k/a WebMogul, Inc. (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <chasedisneycard.com>, <chasedisneyvisa.com>, <disneychasecard.com>, and <wwwdisneymovies.com>, registered with DNC HOLDINGS, 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 J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 4, 2013; the National Arbitration Forum received payment on November 4, 2013.
On November 5, 2013, DNC HOLDINGS, INC. confirmed by e-mail to the National Arbitration Forum that the <chasedisneycard.com>, <chasedisneyvisa.com>, <disneychasecard.com>, and <wwwdisneymovies.com> domain names are registered with DNC HOLDINGS, INC. and that Respondent is the current registrant of the names. DNC HOLDINGS, INC. has verified that Respondent is bound by the DNC HOLDINGS, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 5, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 25, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@chasedisneycard.com, postmaster@chasedisneyvisa.com, postmaster@disneychasecard.com, and postmaster@wwwdisneymovies.com. Also on November 5, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 2, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <chasedisneycard.com>, <chasedisneyvisa.com>, <disneychasecard.com>, and <wwwdisneymovies.com> domain names are confusingly similar to Complainant’s DISNEY mark.
2. Respondent does not have any rights or legitimate interests in the <chasedisneycard.com>, <chasedisneyvisa.com>, <disneychasecard.com>, and <wwwdisneymovies.com> domain names.
3. Respondent registered and uses the <chasedisneycard.com>, <chasedisneyvisa.com>, <disneychasecard.com>, and <wwwdisneymovies.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns registrations for its famous DISNEY trademark and related trademarks with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,162,727 registered July 28, 1981.) Through Complainant’s partnership with Chase Bank U.S.A., Complainant offers its Disney Visa rewards program.
Respondent registered the disputed domain names on the following dates:
<chasedisneycard.com> created August 14, 2005.
<chasedisneyvisa.com> created August 30, 2006.
<disneychasecard.com> created December 25, 2007.
<wwwdisneymovies.com> created June 8, 2006.
Respondent uses the <chasedisneycard.com>, <chasedisneyvisa.com>, and <disneychasecard.com> domain names to redirect Internet users to Respondent’s website featuring goods and services in competition with Complainant’s business. Respondent’s does not make an active use of the <wwwdisneymovies.com> 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."
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.
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.”).
The Panel finds that Complainant has rights in its DISNEY mark through its registrations with the USPTO. Previous panels have found that providing evidence of a registration for a trademark with a recognized trademark authority, such as the USPTO, is sufficient to establish rights under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Respondent’s <chasedisneycard.com>, <chasedisneyvisa.com>, <disneychasecard.com>, and <wwwdisneymovies.com> domain names contain the generic top-level domain (“gTLD”) “.com,” along with terms descriptive of Complainant’s business, such as “card” and “movies.” Previous panels have found that adding additional words and a gTLD to a registered mark will not overcome a confusingly similar finding under Policy ¶ 4(a)(i). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds no distinctive, descriptive and generic terms, some of which describe Complainant’s business.”). Previous panels have found that variations such as “www” are also insufficient to differentiate a disputed domain name from a given mark. See Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters "www" are not distinct in the "Internet world" and thus the respondent 's <wwwmarieclaire.com> domain name is confusingly similar to the complainant's MARIE CLAIRE trademark). Thus, the Panel finds that Respondent’s <chasedisneycard.com>, <chasedisneyvisa.com>, <disneychasecard.com>, and <wwwdisneymovies.com> domain names are confusingly similar to Complainant’s DISNEY mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent is not commonly known by the <chasedisneycard.com>, <chasedisneyvisa.com>, <disneychasecard.com>, and <wwwdisneymovies.com> domain names under Policy ¶ 4(c)(ii). Complainant argues that Respondent does not use the DISNEY trademark or the disputed domain name to identify itself for any legitimate purpose. Complainant states that Respondent is not authorized by Complainant to use the disputed domain names in any way. The WHOIS information for Respondent’s disputed domain names lists “WebMogul” as the registrant. Previous panels have found that a respondent was not commonly known by a domain name where there was no indication on the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii) because Respondent is not commonly known by the disputed domain names.
Complainant claims that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) or ¶ 4(c)(iii). Complainant contends that Respondent uses the <chasedisneycard.com>, <chasedisneyvisa.com>, and <disneychasecard.com> domain names to redirect Internet users to a website displaying links to sites related to Complainant’s products and services, as well as other third-party goods and services. The Panel notes headings on Respondent’s website such as “Apply Instant Credit,” “Disney Rewards Credit Card,” “Disney Visa,” “Student Credit Card,” “Chase Credit Card,” “disneyrewardscredit Card,” “Watch TV Now,” and “Auto Insurance Rate.” Previous panels have found that using a confusingly similar domain name to resolve to a website featuring third-party links that compete with a complainant is not a bona fide offering of goods or services, or a legitimate noncommercial or fair use of a domain name. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds that Respondent’s use of the <chasedisneycard.com>, <chasedisneyvisa.com>, and <disneychasecard.com> domain names is not 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).”).
Complainant claims that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <wwwdisneymovies.com> domain name by using it to redirect to a closed “affiliate tracking” account page. Complainant states that Respondent has been inactively holding this domain name for over six years. Previous panels have found that passive holding of a domain name does not confer rights or legitimate interests in the domain name. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel therefore finds that Respondent’s use of the <wwwdisneymovies.com> domain name does not establish rights or legitimate interests in the disputed domain name because Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent has established a pattern of conduct by registering multiple domain names infringing on the same DISNEY mark. Previous panels have found bad faith use and registration under Policy ¶ 4(b)(ii) where a respondent registered multiple domain names infringing on the same trademark. See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)). The Panel thus finds that Respondent registered and is using the <chasedisneycard.com>, <chasedisneyvisa.com>, <disneychasecard.com>, and <wwwdisneymovies.com> domain names in bad faith under Policy ¶ 4(b)(ii).
Respondent uses the <chasedisneycard.com>, <chasedisneyvisa.com>, and <disneychasecard.com> confusingly similar domain names to redirect Internet users to Respondent’s commercial websites featuring goods and services that compete with Complainant’s business, thus disrupting Complainant’s business under Policy ¶ 4(b)(iii). Previous panels have found that using a confusingly similar domain name to resolve to a website featuring links that compete with a complainant, indicates a respondent’s intent to disrupt the complainant’s business in bad faith. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). The Panel therefore finds that Respondent registered and is using the <chasedisneycard.com>, <chasedisneyvisa.com>, and <disneychasecard.com> domain names in bad faith under Policy ¶ 4(b)(iii).
Respondent registered the <chasedisneycard.com>, <chasedisneyvisa.com>, and <disneychasecard.com> disputed domain names to attract Internet users, for commercial gain, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the websites. Previous panels have found bad faith under Policy ¶ 4(b)(iv) when a domain name resolves to a website that provides links to a complainant’s competitors and respondent presumably commercially profits. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”) The Panel finds that Respondent has registered and is using the <chasedisneycard.com>, <chasedisneyvisa.com>, and <disneychasecard.com> domain names in bad faith under Policy ¶ 4(b)(iv).
Respondent’s non-use of the <wwwdisneymovies.com> domain name demonstrates bad faith under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). The Panel thus finds that Respondent registered and is also using the <wwwdisneymovies.com> domain name in bad faith.
Complainant argues that, in light of the fame and notoriety of Complainant's DISNEY mark, it is inconceivable that Respondent could have registered the <chasedisneycard.com>, <chasedisneyvisa.com>, <disneychasecard.com>, and <wwwdisneymovies.com> domain names without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel agrees and finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name, further evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds that 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 <chasedisneycard.com>, <chasedisneyvisa.com>, <disneychasecard.com>, and <wwwdisneymovies.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 6, 2013
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