DECISION

Disney Enterprises, Inc. v. Taro Yamamoto

Claim Number: FA0211000133753

PARTIES

Complainant is Disney Enterprises, Inc., Burbank, CA, USA (“Complainant”) represented by J. Andrew Coombs, of J. Andrew Coombs, A Professional Corporation.  Respondent is Taro Yamamoto, Saitama, JAPAN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tokyodisneyresort.com>, registered with A Technology Company, Inc. d/b/a namesystem.com.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 15, 2002; the Forum received a hard copy of the Complaint on November 18, 2002.

On November 22, 2002, A Technology Company, Inc. d/b/a namesystem.com confirmed by e-mail to the Forum that the domain name <tokyodisneyresort.com> is registered with A Technology Company, Inc. d/b/a namesystem.com and that Respondent is the current registrant of the name.  A Technology Company, Inc. d/b/a namesystem.com has verified that Respondent is bound by the A Technology Company, Inc. d/b/a namesystem.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 November 25, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 16, 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@tokyodisneyresort.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 December 30, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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. Complainant argues that Respondent’s <tokyodisneyresort.com> domain name is confusingly similar and identical to Complainant’s registered disney and TOKYO DISNEY RESORT marks.

2. Complainant argues that Respondent does not have rights to or legitimate interests in the <tokyodisneyresort.com> domain name.

3. Complainant argues that Respondent registered and used the <tokyodisneyresort.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 the DISNEY mark. The DISNEY mark is registered with the United States Patent and Trademark Office (“USTPO”) on the Principal Register (Reg. No. 1,162,727). The TOKYO DISNEY RESORT mark is registered in Japan, where Respondent is listed as residing  (Reg. No. 4,246,975). Moreover, there are several other DISNEY formative marks registered worldwide.  

Since Complainant’s inception in 1923, Complainant or its predecessors in interest, have continuously used and applied the DISNEY and subsequent TOKYO DISNEY RESORT mark continuously and have not given authorization either expressly or implied to Respondent to use the marks.

Complainant is world renown for being a provider of a multitude of goods and services under its marks. 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 including, but not limited to, travel, theme parks, resort destinations and distribution of merchandise related to its enterprise.  Over the past eight decades, Complainant has marketed and expanded its worldwide recognition to a point where the name DISNEY has become undeniably 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 <tokyodisneyresort.com>.

Respondent’s <tokyodisneyresort.com> domain name was registered on July 19, 2002. The disputed domain name is not operational and automatially redirects Internet traffic to a blank webpage. Respondent has attempted to auction the disputed domain name on Yahoo! and encouraged Complainant to place a bid starting at $30,000.

 

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 TOKYO DISNEY RESORT marks through registration with the USTPO and registration with the proper Japanese authorities, as well as subsequent continuous use of the marks.

Respondent’s <tokyodisneyresort.com> domain name is identical to Complainant’s TOKYO DISNEY RESORT mark. Respondent’s <tokyodisneyresort.com> domain name incorporates Complainant’s entire mark without any variation or reference to other issues. Moreover, the mere addition of a general top-level domain such as “.com” does not prevent a finding of identicality. When a disputed domain name incorporates the entire regitered mark of another, then the domain name can be said to be ipso facto identical  See Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is plainly identical to Complainant’s MYSTIC LAKE trademark and service mark); see also Fed’n of Gay Games, Inc. v. Hodgson & Scanlon, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to Complainant's registered trademark GAY GAMES); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).

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 attempted to auction off the disputed domain name registration for a substantial profit, thereby benefiting from Complainant’s extremely well-known mark. There is no evidence of rights or legitimate interests under Policy ¶ 4(c)(i) or 4(c)(iii) when Respondent attempts to turn a profit and has shown no bona fide offering of goods or services, and fails to make a fair or noncommercial use of the domain name. See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Kinko’s Inc. v. eToll, Inc., FA 94447 (Nat. Arb. Forum May 27, 2000) (finding that Respondent has no rights or legitimate interests in the domain name where it appeared that the domain name was registered for ultimate use by Complainant); see also Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark).

There has been no evidence submitted to indicate that Respondent has a substantial affiliation with, or is known by the <tokyodisneyresort.com> domain name. On the other hand, Complainant has established itself as the sole possessor of all legitimate rights and interests in the DISNEY and TOKYO DISNEY RESORT marks. The Panel notes that it would be difficult for Respondent to show that it had rights or legitimate interests in a domain name containing Complainant’s famous DISNEY mark given the worldwide recognition of said mark. Since Respondent has not come forward with a viable alternative for its use of the registered mark of Complainant, it can be deduced that Respondent has no rights to the domain name according to Policy ¶ 4(c)(ii). See 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); see also 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 registered and is using the disputed domain name in bad faith.

Complainant’s registered TOKYO DISNEY RESORT mark is registered in Japan, Respondent’s place of domicile. Respondent was placed on constructive notice by virtue of registration of Complainant’s mark with the Japanese trademark authorities. Moreover, given the worldwide identification of the DISNEY mark with Complainant, it can also be assumed that Respondent was aware of the mark, and therefore had notice. Respondent’s registration of the disputed domain name thereafter, containing Complainant’s mark, is an indication of bad faith registration. See 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); see also Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name)

Respondent intentionally attempted to engage in selling the disputed domain name registration, constituting bad faith registration and use under Policy ¶ 4(b)(i). Since no use of the domain name occurred, it can be inferred that the primary motivation for registration was to profit from the domain name registration. When one intends not to use a domain name, and merely tries to re-sell rights in the domain name registration for profit, then bad faith results. See Dollar Rent A Car Sys. Inc. v. Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that Respondent demonstrated bad faith by registering the domain name with the intent to transfer it to Complainant for $3,000, an amount in excess of its out of pocket costs); see also Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that Respondent demonstrated bad faith when he requested monetary compensation beyond out of pocket costs in exchange for the registered domain name).

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 <tokyodisneyresort.com> be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated: January 9, 2003

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