Disney Enterprises, Inc. v. Lou Diaz / Hospedarse.com
Claim Number: FA1610001696842
Complainant is Disney Enterprises, Inc. (“Complainant”), represented by J. Andrew Coombs of J. ANDREW COOMBS, A Professional Corporation, California, USA. Respondent is Lou Diaz / Hospedarse.com (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <crucerodisney.com> ‘the Domain Name’) registered with GoDaddy.com, LLC.
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.
<<Dawn Osborne of Palmer Biggs IP>> as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 5, 2016; the Forum received payment on October 5, 2016.
On October 6, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <crucerodisney.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 October 6, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 26, 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@crucerodisney.com. Also on October 6, 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 November 3, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant owns many registered trade marks for DISNEY all over the world for a variety of goods and services. It is a leading producer of children’s entertainment goods and services and operates a cruise line with home ports all over the world. It is the owner of disney.com, disneycruises.com, disneycruise.com and Disney vacation.com. The Disney mark is famous.
The Domain Name is confusingly similar to Complainant’s DISNEY mark as it incorporates it in its entirety merely adding the Spanish word ‘crucero’ which means cruises and refers to Complainant’s cruise line.
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not authorized by Complainant to use its trade mark. Respondent is not commonly known by the Domain Name.
The Domain Name resolves to a temporary ‘Sorry This site is not currently available’ page. Respondent’s passive holding of the Domain Name for over ten years evidences a lack of legitimate rights. Respondent must have known when it selected the Domain Name that the public would associate it with Complainant and Complainant’s trade mark.
The similarity of the Domain Name with the trade mark for which Complainant’s goods and services are registered shows Respondent clearly knew of the DISNEY trade mark before registering the name.
Non-use of the Domain Name also evidences bad faith.
Complainant wrote to Respondent, but Respondent did not transfer the Domain Name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of many registrations for the mark DISNEY, including in the USA where Respondent is based, for a wide variety of goods and services including cruise line services from 1996.
The Domain Name which was registered in 2006 has not been used.
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.”).
The Domain Name consist of Complainant's DISNEY mark (which is registered in the USA for cruiseline and other services and products with first use in commerce for cruise line services recorded as 1996), the generic word ‘crucero’ meaning cruise in Spanish and the gTLD .com. Previous panels have found confusing similarity when a respondent merely adds a generic term to a complainant's mark. See Wiluna Holdings LLC v Edna Sherman, FA 1652781 (Forum Jan 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy 4 (a)(i). The Panel agrees that the addition of a generic term to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy, especially as Complainant offers cruise line services.
The gTLD .com does not serve to distinguish the Domain Name from the DISNEY mark, which is the distinctive component of the Domain Name. See Red Hat Inc v Haecke FA 726010 (Nat Arb Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose to a mark in which Complainant has rights.
Rights or Legitimate Interests
Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to use Complainant’s mark in the Domain Name. It does not appear to be commonly known by the Domain Name or authorised by Complainant. There is no evidence of any use by Respondent of the Domain Name. See Bloomberg LP 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 a 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 non-commercial or fair use of the domain name pursuant to Policy 4( c ) (iii). As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Respondent has not made any active use of the Domain Name for ten years. Panels have found evidence of bad faith registration and use pursuant to Policy
4(c)(iii) where a Respondent fails to make any active use of a domain name. See DCI SA v Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000)(concluding that the respondent’s [failure to make active use of the ] domain name satisfies the requirement of 4 (a)(iii) of the Policy). Complainant asserts that Respondent must have known of its name due to the fame of its mark in the USA where the Respondent is based. Respondent has not responded and, therefore, has not denied that this is the case. The Panel is of the opinion that the use of the Spanish word for cruises indicates Respondent has knowledge of Complainant’s business. As such, the Panel finds that Respondent has engaged in bad faith registration and use 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 <crucerodisney.com> domain name be TRANSFERRED from Respondent to Complainant.
<<Dawn Osborne>>, Panelist
Dated: <<November 7, 2016>>
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