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Generic Top Level Domain Name (gTLD) Decisions |
Disney Enterprises, Inc. v. Lorna Kang
Claim Number: FA0209000125375
PARTIES
Complainant
is Disney Enterprises, Inc.,
Burbank, CA, USA (“Complainant”) represented by J. Andrew Coombs, of J.
Andrew Coombs, A Professional Corporation.
Respondent is Lorna Kang,
Perak, MALAYSIA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <disneylandhotel.com>,
registered with Dotregistrar.com.
PANEL
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.
James
A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 19, 2002; the Forum
received a hard copy of the
Complaint on September 23, 2002.
On
September 24, 2002, Dotregistrar.com confirmed by e-mail to the Forum that the
domain name <disneylandhotel.com>
is registered with Dotregistrar.com and that Respondent is the current
registrant of the name. Dotregistrar.com has verified that
Respondent is bound
by the Dotregistrar.com 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
September 27, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of October, 15 2002 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@disneylandhotel.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the Forum transmitted
to the parties a Notification of Respondent Default.
On
September 19, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed
James A. Carmody, 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.” 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1.
Respondent’s
<disneylandhotel.com> domain
name is confusingly similar to Complainant’s registered disney and DISNEYLAND marks.
2.
Respondent
does not have rights to or legitimate interests in the <disneylandhotel.com> domain name.
3.
Respondent
registered and used the <disneylandhotel.com>
domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response in this proceeding.
FINDINGS
Complainant is the owner of numerous
marks incorporating DISNEY. Both DISNEY and DISNEYLAND are registered with the
United States
Patent and Trademark Office (“USTPO”) on the Principle Register.
Moreover, the DISNEY and other DISNEY-formative marks are registered
in several
other countries, including Malaysia, where the Respondent is listed as
residing. Since Complainant’s inception in 1923,
Complainant or its
predecessors in interest, has continuously used and applied the DISNEY and
subsequent DISNEYLAND mark continuously
and has not given authorization either
expressly or implied to Respondent.
Complainant is world renown for being a
provider of a multitude of goods and services. Since Complainant’s early
beginnings in 1923,
it has expanded to an international business enterprise in
the production and marketing of numerous goods and services. Over the past eight decades, Complainant has
marketed and expanded its worldwide recognition to a point where the name
DISNEY has
become unquestionably distinctive.
Complainant also maintains the domain
names <disney.com> and <disneyland.com>. These websites promote its
products and
services as well as the Disneyland amusement park. Both of these
websites were registered prior to the registration of <disneylandhotel.com>
on March 24, 2002.
Respondent’s domain name resolves to a
pop-up screen that appears and states, “CONGRATULATIONS!!! YOU’VE WON VIRTUAL
REALITY CASINO!
Click on OK and get up to +100$ Bonus on your first deposit!”
If a consumer clicks on “OK”, they are directed to <super-casino.com>,
an
online gambling site. However, if one chooses to click “CANCEL”, then they are
directed to <vipfares.com>, an online travel
service which offers hotels,
flights and car rentals to various travel destinations.
DISCUSSION
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.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the 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.
Paragraph
4(a) of the Policy requires that the 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.
Identical and/or Confusingly Similar
Complainant
has established rights in the DISNEY and DISNEYLAND marks through registration
with the USTPO and subsequent continuous
use of the marks.
Respondent’s <disneylandhotel.com>
is
confusingly similar to Complainant’s DISNEY and DISNEYLAND marks. Respondent
incorporates Complainant’s entire mark in its domain
name. Given the fame and
international recognition of Complainant’s mark, the mere addition of the
generic word “hotel” is not adequate
to create a distinct and unique domain
name that is not confusingly similar. The mere addition of generic terms that
refer to the
business in which Complainant is associated with does not create a
distinctive and dissimilar connotation. Marriott Int’l v. Café au
lait, FA 93670, (Nat.
Arb. Forum Mar. 13, 2000) (finding that the Respondent’s domain name
<marriott-hotel.com> is confusingly similar
to Complainant’s MARRIOTT
mark); Brown & Bigelow, Inc. v. Rodela,
FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the
<hoylecasino.net> domain name is confusingly similar to Complainant’s
HOYLE mark, and that the addition of “casino,” a generic word describing the
type of business in which Complainant is engaged, does
not take the disputed
domain name out of the realm of confusing similarity).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has thus been satisfied.
Rights or Legitimate Interests
Respondent has not submitted a reply to
Complainant’s allegations, thereby permitting the Panel to conclude that all
reasonable inferences
made by Complainant are true and accurate unless there is
evidence that is clearly contradictory.
Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure
to respond allows all reasonable inferences of fact in the allegations of
Complainant
to be deemed true); Desotec N.V. v. Jacobi Carbons AB, D2000-1398
(WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that
Complainant’s allegations are true unless
clearly contradicted by the
evidence). There is no evidence that
contradicts the allegations of Complainant.
Complainant has presented evidence that substantiates its claim that
Respondent has no legitimate rights or interests in the contested
domain name.
Respondent deliberately registered the
disputed domain name to capitalize on Complainant’s commonly known mark. Moreover, it used Complainant’s mark to
divert Internet consumers to either a gambling site or a travel site. There are
no rights
or legitimate interests when one tries to benefit from the
unauthorized use of another’s mark by diverting Internet traffic to other
websites pursuant to Policy ¶ 4(c)(i) and 4(c)(iii). Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb.
Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain
name to confuse and divert Internet
traffic is not a legitimate use of the
domain name); Big Dog Holdings, Inc. v.
Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use
when Respondent was diverting consumers to its own website by
using
Complainant’s trademarks).
There has been no evidence submitted to
indicate that Respondent has a substantial affiliation with, or is known by the
<disneylandhotel.com> name. On the other hand, Complainant has
established itself as the sole possessor of all legitimate rights and interests
in the name
DISNEY and DISNEYLAND. Since Respondent has not come forward with a
viable alternative rationalization for its use of
the registered mark of Complainant, and uses a confusingly similar domain name
to direct
users to another site, it can be deduced that Respondent has no
rights to the domain name according to Policy ¶ 4(c)(ii). Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) Respondent is not a licensee of
Complainant;
(2) Complainant’s prior rights in the domain name precede
Respondent’s registration; (3) Respondent is not commonly known by the
domain
name in question); Nike, Inc. v. B. B. de
Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate
interests where one “would be hard pressed to find a person who
may show a
right or legitimate interest” in a domain name containing Complainant's
distinct and famous NIKE trademark).
Accordingly, the Panel finds that Policy
¶ 4(a)(ii) has thus been satisfied.
Registration and Use in Bad Faith
Respondent has
registered and is using the disputed domain name in bad faith. Complainant’s
registered mark of DISNEY is registered
in Malaysia, Respondent’s place of
domicile. Respondent was placed on constructive notice by virtue of
registration of Complainant’s
mark with the Malaysian trademark authorities.
Respondent’s registration of the disputed domain name thereafter, containing
Complainant’s
mark, is an indication of bad faith registration. Exxon
Mobil Corp. v. Fisher,
D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and
constructive knowledge of Complainant’s EXXON mark given
the worldwide
prominence of the mark and thus Respondent registered the domain name in bad
faith). Victoria’s Cyber Secret Ltd. P’ship v. V
Secret Catalogue, Inc., 161 F.Supp.2d
1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of
a trademark or service mark] is constructive
notice of a claim of ownership so
as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. §
1072)
Complainant asserts a claim
of bad faith under Policy ¶ 4(b)(i), arguing that Respondent registered the
domain name primarily to sell, rent, or otherwise transfer it for
valuable consideration in excess of Respondent’s out of pocket expenses
(emphasis added). Essentially,
Complainant reasons that by directly diverting
Internet users to another website for profit, Respondent is “renting” the
domain name.
Although the Panel is permitted to conclude all uncontested
reasonable assertions made by Complainant, there is not enough factual
evidence
to sustain an inquiry into this legal argument. Therefore, the Panel chooses to
remain sub silentio on this issue, at this time, while concentrating
on the other more persuasive legal arguments presented by Complainant.
As stated
previously, Complainant is a well-known international business enterprise and
its name and service marks are renown through
extensive marketing and
advertising. Respondent has capitalized on Complainant’s marks as well as
reputation by registering and using
domain names so similar to the registered
marks. According to Policy ¶ 4(b)(iv), evidence of bad faith registration and
use is shown
when registration of a domain name occurs in order to utilize
another’s well known reputation by attracting Internet users to a website,
for
commercial gain. Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21,
2000) (finding bad faith where Respondent registered and used an infringing
domain name to attract
users to a website sponsored by Respondent); Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the Respondent
directed Internet users seeking Complainant’s site
to its own website for
commercial gain).
Accordingly, the Panel finds that Policy
¶ 4(a)(iii) has thus been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel hereby concludes that the requested
relief shall
be GRANTED.
Accordingly, it is ordered that the
domain name <disneylandhotel.com> be
TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: November 18, 2002
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