Disney Enterprises, Inc. v. Mark Brekhus / MortgageAmericaNetwork.com
Claim Number: FA1606001679070
Complainant is Disney Enterprises, Inc. (“Complainant”), represented by J. Andrew Coombs of J. ANDREW COOMBS, A Professional Corporation, California, USA. Respondent is Mark Brekhus / MortgageAmericaNetwork.com (“Respondent”), South Dakota, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <disneyrivercruises.com> and <disneyspecialist.com>, registered with GoDaddy.com, LLC.
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 June 10, 2016; the Forum received payment on June 10, 2016.
On June 13, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <disneyrivercruises.com> and <disneyspecialist.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 June 13, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 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@disneyrivercruises.com, postmaster@disneyspecialist.com. Also on June 13, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 11, 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
i) Complainant’s affiliates use the DISNEY mark in connection with movies, television programs, books, and merchandise. Other affiliates of Complainant own and operate cruise lines and recently expanded their vacation division operations to river cruising. In connection with these goods and services, Complainant has registered the DISNEY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,162,727, registered July 28, 1981), which demonstrates rights in the mark. Respondent’s <disneyrivercruises.com> and <disneyspecialist.com> domain names are confusingly similar to the DISNEY mark as they incorporate the entire mark and add the generic terms “river cruise” or “specialist.”
ii) Respondent has no rights or legitimate interests in the domain names. Respondent is not commonly known by the domain names, and Complainant has not authorized Respondent to use the DISNEY mark. Further, Respondent has failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the domains resolve to inactive web pages.
iii) Respondent uses the domain names in bad faith. First, Respondent has demonstrated a pattern of bad faith by registering multiple domain names in the current proceeding. Second, both domains resolve to inactive web pages. Third, Respondent registered the domains with actual knowledge of Complainant’s rights in the DISNEY mark. Finally, Respondent’s bad faith is evident from its failure to cease and desist from wrongful use of the domains by not transferring the domains after being notified by Complainant of Respondent’s unauthorized use.
B. Respondent
Respondent has failed to submit a formal Response. The Panel notes that the <disneyrivercruises.com> domain name was registered on August 18, 2015, and the <disneyspecialist.com> domain name was registered on August 23, 2014.
Complainant established that it has rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and uses the disputed domain names 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."
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(f), 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 (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.”).
Complainant’s affiliates use the DISNEY mark in connection with movies, television programs, books, and merchandise. Other affiliates of Complainant own and operate cruise lines and recently expanded their vacation division operations to river cruising. In connection with these goods and services, Complainant has registered the DISNEY mark with the USPTO (e.g., Reg. No. 1,162,727, registered July 28, 1981), which Complainant argues demonstrates its rights in the mark. Panels have found that a registration with the USPTO is sufficient to establish rights in a trademark. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i).). Therefore, the Panel concludes that Complainant has demonstrated rights in the DISNEY mark under Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s domains are confusingly similar to the DISNEY mark as they incorporate the entire mark and add the generic terms “river cruise” or “specialist.” The Panel also notes that Respondent has affixed the generic top-level domain (“gTLD”) “.com” to the domains. Panels have held that neither the addition of a generic term nor the affixation of the “.com” gTLD is sufficient to differentiate a domain name from a mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). Accordingly, the Panel agrees with Complainant and holds that Respondent’s domains are confusingly similar to Complainant’s mark.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then 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 (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 (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 alleges that Respondent is not commonly known by the domain names because there is no evidence to indicate such and because Complainant has not authorized Respondent to use the DISNEY mark. The Panel notes that the WHOIS information lists “Mark Brekhus” as Registrant, and that Respondent has failed to provide further evidence to indicate that it is commonly known by the domain names. Panels have found, under similar circumstances, that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (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). Therefore, the Panel finds that Respondent is not commonly known by the domain names under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent has failed to use the domains to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the domains resolve to inactive web pages. Complainant’s evidence shows the resolving pages, which display the messages “website coming soon!” (<disneyrivercruises.com>) and “Sorry! This site is not currently available” (<disneyspecialist.com>). Panels have found that a respondent’s failure to use a domain name is sufficient to show a failure to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Thus, the Panel finds that Respondent has failed to use the domains to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Complainant alleges that Respondent’s current use of the domains demonstrates bad faith because the domains resolve to inactive web pages. The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.) The particular circumstances of this case that the Panel has considered are:
i) The Complainant has been for many years the owner of hundreds of registrations for the Complainant's trademark 'DISNEY' in countries all over the world. The Complainant's trademark is so widely accepted in the mind of the general public that it has become famous and distinctive throughout the United States and around the world, and
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain names.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain names constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain names in bad faith. As such, the Panel finds that Respondent uses the domains in bad faith under Policy ¶ 4(a)(iii).
Complainant alleges that Respondent registered the domains with actual knowledge of Complainant’s rights in the DISNEY mark. Complainant argues that the mark was made famous through Complainant’s extensive marketing, and that the mark is so well known that Respondent must have had actual knowledge of the mark at the time the domains were registered. Panels have found that when a respondent has actual knowledge of a complainant’s rights in a mark, the registration of a confusingly similar domain name is done in bad faith under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights). The Panel infers from the fame of the Complainant's mark that Respondent had actual knowledge of Complainant’s rights in the DISNEY mark at the time the domains were registered, the Panel finds that Respondent registered the domains in bad faith under 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 <disneyrivercruises.com> and <disneyspecialist.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: July 21, 2016
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