DECISION

Disney Enterprises, Inc. v. Gary Hamilton

Claim Number:  FA0302000145226

PARTIES

Complainant is Disney Enterprises, Inc., Burbank, CA (“Complainant”) represented by J. Andrew Coombs, of J. Andrew Coombs, A Professional Corporation. Respondent is Gary Hamilton, Las Vegas, NV (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <disneymania.com>, registered with Innerwise, Inc. d/b/a Itsyourdomain.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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 10, 2003; the Forum received a hard copy of the Complaint on February 10, 2003.

On Februaury 10, 2003, Innerwise, Inc. d/b/a Itsyourdomain.Com confirmed by e-mail to the Forum that the domain name <disneymania.com> is registered with Innerwise, Inc. d/b/a Itsyourdomain.Com and that Respondent is the current registrant of the name.  Innerwise, Inc. d/b/a Itsyourdomain.Com has verified that Respondent is bound by the Innerwise, Inc. d/b/a Itsyourdomain.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 February 10, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 3, 2003 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@disneymania.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 March 11, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 makes the following assertions:

1. Respondent’s <disneymania.com> domain name is confusingly similar to Complainant’s DISNEY mark.

2. Respondent does not have any rights or legitimate interests in the <disneymania.com> domain name.

3. Respondent registered and used the <disneymania.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant has used the DISNEY mark since 1923 in relation to a variety of entertainment goods and services.  Complainant owns hundreds of registrations for the DISNEY mark with the United States Patent and Trademark Office (“USPTO”) including Registration Numbers 1,162,727 and 2,194,747.  Complainant also holds numerous domain name registrations incorporating the DISNEY mark including <disney.com>, <disneychannel.com>, and <disneyland.com>. 

Respondent is using the <disneymania.com> domain name to redirect Internet users to <star777.com>, a website that offers commercial goods and services.  The <star777.com> website offers links to movies, vacations, and online gambling.  When an Internet user attempts to exit the website a series of pop-up advertisements confronts the user offering links to an online adult dating program and a baseball card trading business.  Respondent has no license or permission from Complainant to use the DISNEY mark.

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 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 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 that it has rights in the DISNEY mark through registration with the USPTO and continuous use in the entertainment industry since 1923.

Respondent’s <disneymania.com> domain name is confusingly similar to Complainant’s DISNEY mark because it incorporates Complainant’s entire mark and merely adds the generic term “mania” to the end.  The addition of a generic term to the end of a famous mark does not create any distinctive characteristics capable of overcoming a claim of confusing similarity.  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0023 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to submit a Response.  Thus, the Panel is permitted to accept all reasonable allegations and inferences in the Complaint as true.  See 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); 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”).

Moreover, Respondent has failed to invoke any circumstances that could demonstrate rights and legitimate interests in the domain name.  When Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the Respondent has failed to invoke any circumstance that could demonstrate any rights or legitimate interests in the domain name).

Respondent is using the <disneymania.com> domain name to redirect Internet users to <star777.com>, a website offering numerous links to commercial sources.  The Panel infers that Respondent is making a profit from the Internet traffic it diverts to this website.  The use of an infringing domain name to divert Internet traffic interested in Complainant to an unrelated website is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using the Complainant’s mark by redirecting Internet traffic to its own website).

Based on the fame of Complainant’s DISNEY mark, Respondent would be hard-pressed to establish that it is commonly known by DISNEY, DISNEY MANIA, or <disneymania.com>.  Respondent has failed to come forward with any evidence that it is commonly known by the domain name or any derivative thereof.  Thus, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark); 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 been satisfied.

Registration and Use in Bad Faith

Based on the fame of Complainant’s DISNEY mark the Panel infers that Respondent was on notice of Complainant’s rights when it registered the <disneymania.com> domain name.  Registration of an infringing domain name despite actual knowledge of Complainant’s rights is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also 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).

Respondent is using the <disneymania.com> domain name to divert Internet users to <star777.com> for Respondent’s commercial gain.  The <star777.com> website features links to online gambling and travel offers and the Panel infers that Respondent is profiting from the Internet traffic it diverts to this website.  Respondent’s behavior is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

Thus, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <disneymania.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  March 17, 2003

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