Disney Canada, Inc. (formerly Club Penguin Entertainment Inc.) and Disney Enterprises, Inc. v. Nikola Petkovic
Claim Number: FA1601001657945
Complainant is Disney Canada, Inc. (formerly Club Penguin Entertainment Inc.) and Disney Enterprises, Inc. (“Complainant”), represented by J. Andrew Coombs of J. ANDREW COOMBS, A Professional Corporation, California, USA. Respondent is Nikola Petkovic (“Respondent”), Serbia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <clubpenguin.pw> and <onceuponatime.pw>, registered with Alpnames Limited.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 25, 2016; the Forum received payment on January 25, 2016.
On January 26, 2016, Alpnames Limited confirmed by e-mail to the Forum that the <clubpenguin.pw> and <onceuponatime.pw> domain names are registered with Alpnames Limited and that Respondent is the current registrant of the names. Alpnames Limited has verified that Respondent is bound by the Alpnames Limited 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 January 26, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 15, 2016 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@clubpenguin.pw, postmaster@onceuponatime.pw. Also on January 26, 2016, 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.
A timely Response was received and determined to be complete on January 28, 2016.
On February 2, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
i) Complainant owns the ONCE UPON A TIME and CLUB PENGUIN marks through trademark registrations with the United States Patent and Trademark Office (“USPTO”) (CLUB PENGUIN- Reg. No. 4,150,662, registered May 29, 2012) (ONCE UPON A TIME- Reg. No. 4,230,524, registered October 23, 2012). Complainant uses the ONCE UPON A TIME mark in connection with a television series and the CLUB PENGUIN mark in connection with a fun, ad-free, virtual world where children and families can play games and interact safely on the Internet. The disputed domain names are confusingly similar to the trademarks, as Respondent has simply used the marks in their entirety, less the spacing, and attached the country code top level domain (“ccTLD”) “.pw.”
ii) Respondent lacks rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, as evidenced by the available WHOIS information for the disputed domain names. Further, Respondent has been neither licensed nor authorized to use Complainant’s trademarks. Next, Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain names. Rather, Respondent uses the <clubpenguin.pw> domain name to redirect to “Rile5.pw Test Ground” website, which features gaming and entertainment discussions that discuss Complainant and its business. Additionally, Respondent uses the <onceuponatime.pw> domain name to resolve to a database featuring unauthorized downloadable episodes of Complainant’s television series.
iii) Respondent has registered and is using the disputed domain names in bad faith. Respondent has acted in bad faith under Policy ¶ 4(b)(iii), by using the <onceuponatime.pw> domain name to offer unauthorized videos of Complainant’s television series. Respondent uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv) by redirecting Internet users away from Complainant’s websites to its own websites for commercial gain. Finally, Respondent registered the disputed domain name with actual and/or constructive knowledge of Complainant and its rights in the trademarks.
B. Respondent
The laws Complainant has cited do not apply internationally. United States laws do not apply globally. Respondent uses the disputed domain names for an academic project, to test stability maintenance, and security required to run a Massive Multiplayer Online Game. The content provided is for educational purposes only.
The Panel notes that the <onceuponatime.pw> domain name was registered on October 24, 2015 and the <clubpenguin.pw> domain name was registered on October 7, 2015.
Additionally, the Panel sees that Respondent has sent an email in which it states, “We have contacted our domain registrar and we have asked for a domain cancellation of onceuponatime.pw and clubpenguin.pw. We apologize for the inconvenience. The domain will be cancelled within 7 days.”
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants in this matter: Disney Canada, Inc. and some of its affiliated companies, including, but not limited to, Disney Enterprises, Inc. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
Complainants simply contends that Disney Canada, Inc. (formerly Club Penguin Entertainment Inc.) and Disney Enterprises, Inc. are affiliated companies without submitting any supporting documents. As such, on February 3, 2016 the Panel issued a Procedural Order to request additional documentation from Complainants pursuant to ICANN Rule 12 setting a deadline of February 11, 2016. However, Complainants failed to submit additional documentation to prove a link or nexus between the two entities before the deadline.
As such, the Panel finds that Complainants have failed to demonstrate a sufficient nexus or link to each other to allow multiple parties to proceed as one party.
Complainants have failed to demonstrate a sufficient nexus or link to each other to allow multiple parties to proceed as one party.
The Panel determines that Complainants have failed to demonstrate a sufficient nexus or link to each other to allow multiple parties to proceed as one party, and thus dismisses the case without prejudice to one of the parties bringing this dispute individually.
Ho Hyun Nahm, Esq., Panelist
Dated: February 13, 2016
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