Disney Enterprises, Inc. v. Elmer Morales
Claim Number: FA0505000475191
PARTIES
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 Elmer Morales (“Respondent”), TBD, Los Angeles, CA 90047.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <disneydirectaffiliates.com>, <disneystoredirect.com>, <disneydirekt.com> and <disneedirect.com>, registered with Go Daddy Software, Inc.
PANEL
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.
Barry
Schreiber as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
12, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 13, 2005.
On
May 13, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <disneydirectaffiliates.com>, <disneystoredirect.com>, <disneydirekt.com> and <disneedirect.com> are registered with Go Daddy Software,
Inc. and that the Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that
Respondent is bound by the Go Daddy Software, 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
May 13, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 2,
2005 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@disneydirectaffiliates.com,
postmaster@disneystoredirect.com, postmaster@disneydirekt.com and
postmaster@disneedirect.com by e-mail.
An
electronic copy of the Response was received on June 3, 2005. The Response was received after the response
deadline and no hard copy was received.
Therefore, the Response is not considered to be in compliance with ICANN
Rule # 5(a).
On June 13, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Barry Schreiber as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant Disney has been for many years the owner
of hundreds of registrations for the DISNEY trademark and DISNEY-formative
marks in countries all over the world. Since 1923, Complainant, or its
predecessors in interest, has continuously used and applied the DISNEY mark and
DISNEY-formative marks for a variety of entertainment-related goods and
services. See Exhibit F (printouts from United States
Patent and Trademark Office evidencing DISNEY-formative trademarks).
Complainant’s
registration of the trademarks infringed before Respondent’s registration of
the Domain Names is sufficient to prove that Complainant has rights in the
trademark. See Aetna Inc.
v. Jacoby Partners FA125816 (NAF
Nov. 22, 2002). The primacy of Disney’s
trademarks over infringing domain names has been asserted, recognized and
enforced in other proceedings initiated pursuant to the UDRP. See, for example, Disney Enters., Inc. v. Hodson, FA 158165 (Nat. Arb. Forum July 1, 2003)
(“[A]ssociation of the name Disney [with the Complainant is] widely accepted in
the mind of the general public.”); Disney Enters., Inc. v. Dot
Stop, FA 145277 (Nat. Arb. Forum
Mar. 17, 2003).
FACTUAL AND LEGAL GROUNDS
This
Complaint is based on the following factual and legal grounds:
a. Respondent’s Domain Names Fully
Incorporate Complainant’s Famous, Long-Standing and Widely Registered
Trademarks.
Complainant
owns numerous trademark registrations, only a few of which are listed above and
evidence of which are attached as exhibits for the word mark DISNEY. Examples of domain name registrations
evidencing use of these trademarks by Complainant are attached as Exhibit
G. This includes www.disney.com, and www.disneystore.com. The Domain Names fully incorporate the
DISNEY trademark.
The
test of confusing similarity under the UDRP is confined to a consideration of
the disputed domain name and the trademark, without reference to other
issues. Microsoft Corp. v. WDW Inc.,
et. al., D2002-0412 (WIPO July 1,
2002). The disputed Domain Names are
confusingly similar to Complainant’s mark, as it incorporates the trademark in
its entirety. The addition of generic
words (“direct” or “direct affiliates” for example) to a famous trademark
demonstrates confusing similarity to a complainant’s mark. Microsoft, supra (finding confusing similarity where
the domain name in dispute contains the identical mark of the Complainant
combined with a generic word or term); Yahoo! Inc. v. Seocho, FA 109050
(Nat. Arb. Forum May 13, 2002) (same).
Similarly, the change of one letter – Disney to Disnee - or the misspelling
of one letter – direct to direkt – are also insufficient to refute likelihood
of confusion. These minor differences
are not enough to distinguish the Domain Names from Complainant’s famous
Trademark. See, Disney Enters.,
Inc. v. Avalon Domains, FA 411746 (NAF Mar. 24, 2005) and cases collected
there.
b.
Respondent
Has No Legitimate Interest in the Domain Names.
Several distinct grounds support the
conclusion that the Respondent has no legitimate interest in the Domain
Names. First, Respondent is not
authorized by Complainant to use the Domain Names. "[I]n the absence of any license or permission from the
Complainant to use any of its trademarks or to apply for or use any domain name
incorporating those trademarks, it is clear that no actual or contemplated bona
fide or legitimate use of the domain name could be claimed by Respondent.” Guerlain
S.A. v. Peikang, D2000-0055 (WIPO Mar. 21, 2000).
Second, Respondent registered and uses
the Domain Names to infringe Complainant’s rights in its mark, to trade off
Complainant’s goodwill. In particular,
Respondent maintains a directory of commercial links unrelated to Complainant
(although some may be related by subject matter). Respondent profits from the redirection of traffic otherwise
intended for Complainant by redirection to websites which appear to provide
compensation for the traffic so provided.
Societe Air France v. SZK.com,
D2003-0518 (WIPO Aug. 22, 2003) (Respondent uses the domain name to divert
users to various commercial websites from which it can be inferred that
Respondent makes a profit from such diversion).
Thus, Respondent’s use of the Domain
Names does not and cannot constitute a bona fide offering of goods or
services. Ciccione v. Parisi, D2000-0847 (WIPO Oct. 12, 2000)
(“[U]se which intentionally trades on the fame of another cannot constitute a
‘bona fide’ offering of goods and services”); Chanel, Inc. v. Cologne Zone,
D2000-1809 (WIPO Mar. 6, 2001)( “[B]ona fide use does not exist when the
intended use is a deliberate infringement of another’s rights.”). Complainant has not authorized Respondent to
use its trademark or to seek the registration of any domain name incorporating
the mark. Respondent must have known
when he selected the disputed Domain Names that the public would incorrectly
associate it with Complainant and Complainant’s marks. In fact, given the distinctiveness and fame
of the mark, there is no plausible explanation for the Respondents’
registration of the Domain Names other than to trade upon the goodwill the
Complainant has developed in its mark.
Respondent had no legitimate interest in doing so. Universal City Studios, Inc. v.
HarperStephens, D2000-0716 (WIPO Sept. 5, 2000).
Respondent is not and has not been
commonly known by the disputed Domain Names.
Respondent does not use the trademarks to identify itself on its website
or for any other legitimate purpose.
Even if Respondent has used the trade name, such an unauthorized use
does not establish legitimate interests in the Domain Names. Compaq Info. Techs. Group, LP v.
Waterlooplein Ltd., FA0204000109718 (NAF May 29, 2002).
c.
Respondent
Registered and Uses the Domain Names in Bad Faith.
Respondent’s registration and use of the
Domain Names separately meets the bad faith elements set forth in Section 4(b)(iv)
of the UDRP because Respondent is intentionally using the Domain Names to
attract, for commercial gain, Internet users to a website by creating a
likelihood of confusion with Complainant’s mark as to the source, sponsorship,
affiliation or endorsement of the website, or of a product or service offered
through the website.
In particular, Respondent “parks” his
domain and lists links to related and unrelated sites from which he can be
presumed to derive a commercial reward.
Societe Air France v. SZK.com,
infra (Respondent uses the domain name to divert users to various
commercial websites from which it can be inferred that Respondent makes a
profit from such diversion). By using
the disputed Domain Names to direct Internet traffic to websites other than
those owned by Complainant, Respondent is trading on the value of the mark
established by Complainant.
Due to the similarity of the Domain Names
with the trademark, along with its long-established and widespread use and
registration, Respondent clearly knew of Complainant’s mark prior to
registering the Domain Names. Choice Hotels Int’l, Inc. v. Dinoia, infra
(Respondent’s knowledge of Complainant’s trademark can be inferred from reading
the website on which references to Complainant’s trademarks appear); FNAC v. SZK.com, D2004-0413 (WIPO July
26, 2004) (bad faith established by knowledge of Complainant’s trademark which
can be inferred from fame of the trademark).
By registering the Domain Names with
actual knowledge of Complainant’s mark, Respondent acted in bad faith by
breaching his registration contract with the registrar because he falsely
represented that his registration of the Domain Names did not infringe the
legal rights of any third party. Thus,
the registration constituted bad faith under the UDRP. See Google Inc. v. wwwgoogle.com,
D2000-1240 (WIPO Nov. 9, 2000).
Respondent separately meets the bad faith
requirement of Section 4(a)(iii) because the Respondent’s registration of
multiple domains, many with minor typographical errors constitutes
typosquatting. Typosquatting, standing
alone, is evidence of bad faith. See Disney
Enters., Inc. v. Avalon Domains, infra
(holding that typosquatting is “inherently parasitic and of itself evidence of
bad faith”); National Ass’n of
Professional Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21,
2003).
B.
Respondent
An
electronic copy of the Response was received on June 3, 2005. The Response was received after the response
deadline and no hard copy was received. Therefore, the Response is not considered to
be in compliance with ICANN Rule # 5(a).
Nevertheless,
for purposes of this decision, the Panelist has decided to include Respondent’s
conceding response as part of the
record and has taken such response into consideration in the Panelist’s
findings and decision.
“Respondent is not using the domain names
in question and is willing to either cancel or transfer the domain name
registrations to the Complainant. Since this is the remedy the Complainant is
pursuing, there is no need for a review and decision by a member of the
Administrative Panel.
Either the National Arbitration Forum or the Complainant should inform the
Respondent whether the Complainant would like the domain name registrations
transferred or canceled. Clear instructions should be provided on how to
proceed with this matter.”
FINDINGS
The Panel has
decided to accept the Response in making its decision, and notes that
Respondent has chosen not to challenge any of Complainant’s assertions but,
rather, to agree to transfer the disputed domain names to Complainant in
satisfaction of Complainant’s requested remedy. Therefore, under such
circumstances, where Respondent has agreed to comply with Complainant’s
request, the Panel felt it to be expedient and judicial to forego the
traditional UDRP analysis and order the transfer of the domain names. See Boehringer Ingelheim Int’l GmbH v.
Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003)
(transferring the domain name registration where Respondent stipulated to the
transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc.,
FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both
asked for the domain name to be transferred to the Complainant. Since the requests of the parties in this
case are identical, the Panel has no scope to do anything other than to
recognize the common request, and it has no mandate to make findings of fact or
of compliance (or not) with the Policy.”).
DECISION
Having
established and determined that the requests of the parties in this case are
identical, in that the Respondent does not contest Complainants’ remedy, the
Panel concludes that relief shall be GRANTED..
Accordingly, it is Ordered that the <disneydirectaffiliates.com>,
<disneystoredirect.com>, <disneydirekt.com> and <disneedirect.com>
domain names be TRANSFERRED from Respondent to Complainant.
Barry Schreiber, Panelist
Dated: June 24, 2005
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