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Generic Top Level Domain Name (gTLD) Decisions |
Disney Enterprises, Inc. v. Janice
McSherry d/b/a Florida Vacation Homes
Claim Number: FA0304000154589
PARTIES
Complainant
is Disney Enterprises, Inc.,
Burbank, CA (“Complainant”) represented by J.
Andrew Coombs. Respondent is Janice McSherry Florida Vacation Homes,
Graham, NC (“Respondent”) represented by Gilbert
J. Andia, of MacCord Mason.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <disneyvacationvillas.com>,
registered with Tucows, 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.
Tyrus
R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on April 15, 2003; the Forum received
a hard copy of the
Complaint on April 14, 2003.
On
April 15, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain
name <disneyvacationvillas.com>
is registered with Tucows, Inc. and that the Respondent is the current
registrant of the name. Tucows, Inc. has verified that Respondent
is bound by
the Tucows, 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
April 28, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 19,
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@disneyvacationvillas.com by e-mail.
A
timely Response was received and determined to be complete on May 19, 2003.
Complainant’s
Additional Submission was received and determined to be timely and complete on
May 22, 2003.
Respondent’s
Additional Submission was received and determined to be timely and complete on
May 27, 2003
On June 3, 2003, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Tyrus R.
Atkinson, Jr., as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Disney
Enterprises, Inc., a Delaware corporation, with its principal place of business
in Burbank, California, is an entertainment
company and owner of a vast array
of intellectual properties, including many trademarks and copyrighted works
associated with live-action
and animated movies and television shows as well as
a radio network. Disney also maintains a significant presence on the Internet
via subsidiary and otherwise affiliated companies owning and operating various
urls and websites. Among these sites
are <Disney.com>, theme park specific sites such as <disneyland.com>
and a travel-specific website,
<Disney.go.com/vacations>. These sites inform the public about and
promote Disney goods and services distributed, sold or offered by Disney or its
affiliated
companies.
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. The Complainant has been for many
years the owner of hundreds of registrations
for the DISNEY trademark in
countries all over the world. The DISNEY mark is so widely accepted in the mind
of the general public,
that said name has become unquestionably famous and
distinctive and has acquired secondary meaning and distinctiveness throughout
the United States and around the world.
Respondent,
Janice McSherry, registered the domain name <disneyvacationvillas.com>. Respondent is doing business as Florida
Vacation Homes in the State of North Carolina.
The disputed domain name directs users to Respondent’s website through
which it sells vacation homes in an area close to Complainant’s
Disneyworld
theme part and resort in Florida.
Despite Complainant’s repeated requests, Respondent has not stopped
using the domain name nor specified a reasonable time when Respondent’s
infringing use will stop.
The
domain name <disneyvacationvillas.com> is confusingly similar to
Complainant’s trademark DISNEY. Respondent has no rights or legitimate
interests in the domain name.
Respondent is not authorized by Complainant to use the domain name in
this or any other way. Respondent is
not and has not been commonly known by the disputed domain name. Although Respondent used the trade name
“Disney Vacation Villas” on its website, such an unauthorized use does not
establish legitimate
interests in the domain name.
Respondent
registered the domain name in order to infringe Complainant’s rights in its
mark, to trade off Complainant’s goodwill and
to usurp Internet traffic rightly
intended for Complainant. Respondent’s use of the domain name does not and
cannot constitute a
bona fide offering of goods or services.
Respondent
registered and used the domain name in bad faith. Respondent is intentionally using the domain name to attract, for
commercial gain, Internet users to a website by creating a likelihood
of
confusion and Complainant’s mark as to source, sponsorship, affiliation or
endorsement of the website, or of a product or service
offered through the
website.
The
international fame of the DISNEY trademark, combined with widespread marketing
of DISNEY related goods and services within the
United States, where Respondent
is located, are more than enough to impute to Respondent knowledge of Disney’s
prior trademark rights. Clearly
Respondent knew of Complainant’s mark prior to registration of the domain name. Registration of the domain name with actual
knowledge of Complainant’s trademark is bad faith.
B.
Respondent
Janice
McSherry has been conducting business under the name “Disney Vacation Villas”
since April 2000. Her small business
rents privately owned homes to visitors to the Disney-area (Orlando and
Kissimmee, Florida). Her website
provides a single portal for approximately 55 homes with which she has rental
agreements.
Respondent
registered the domain name in January 2000.
At that time she was aware, and still is aware, of a proliferation of
competitors in the home rental market using the word “Disney”
in the domain
name as a geographic indicator.
Respondent has taken steps many of those competitors have not in that
she has avoided the use of any copyrighted material, graphics,
or marks
associated with Complainant. She takes
all reasonable steps to differentiate her services from those of her
competitors, and from Complainant.
Consumers have never been confused, but instead understand that the
services Respondent offers are distinct and different from Complainant. There is no likelihood of confusion.
Respondent
does not dispute the national and international strength of DISNEY as a
trademark. However, the Internet is
replete with domain names, unrelated to Complainant, that use DISNEY or DISNEY
formatives with a domain name.
Complainant has allowed its mark to become diluted throughout the
Internet. Since consumers on the
Internet will encounter a large number of domain names containing the word
DISNEY, it is not reasonable to
conclude that they are likely to confuse these
marks with websites sponsored or owned by Complainant.
Respondent
has legitimately conducted business as “Disney Vacation Villas International”
for years prior to this dispute. Copies
of correspondence, contracts, and other business documents bear this out.
Respondent
has not intentionally attempted to attract Internet users to her website by
creating a likelihood of confusion as to source,
sponsorship, affiliation or
endorsement. Respondent designed the
content of her website to avoid any confusion based on the website’s “look and
feel.” The content clearly
distinguishes the website from one sponsored or endorsed by Complainant. Respondent has no content that can be
associated with Complainant, and provides a disclaimer specifically informing
consumers that
there is no such association.
Respondent did not register and use the domain name in bad faith. Complainant fails to prove any element of
bad faith against Respondent.
C.
Complainant’s Additional Submission
Complainant
contends that Respondent admits all elements of Complainant’s claim. Complainant contests Respondent’s assertion
that she is known as “Disney Vacation Villas, International” but rather that
she has been
known as “Florida Vacation Homes”. Complainant argues that the fact that Respondent is not the only
one in the world to infringe Complainant’s rights is no ground for
denial of
relief in this proceeding. Any dilution
caused by other possible infringements by domain name registrants like
Respondent constitutes further grounds to enforce
Complainant’s rights here and
in other UDRP matters. Existence of
other infringers is not a basis to deny Complainant relief. Respondent’s
showing of the “Disney Vacation Villas” name
in promotional materials, in
private banking records and billings are unauthorized uses and cannot
demonstrate legitimate use with
the context of the domain name. Respondent admits that she does not qualify
in connection with a bona fide offering of goods or services. To be a bona fide offering, the Respondent
must use the site to sell only the trademarked goods, otherwise, it is using
the trademark
to bait Internet users then switch them to other goods. Respondent admits that she selected the URL
to compete with the other websites for business of renting properties close to
Complainant’s
theme park. The concept
that vacation homes rentals for properties located “close to” the theme parks
do not compete with rentals for properties
located “on” the theme park property
requires a peculiarly narrow focus.
Even if one accepts that visitors to her website are not likely to be
confused once they read her site, registration and use of this
domain name is
in bad faith because it creates initial interest confusion.
D. Respondent’s Additional Submission.
Respondent
contends that consumers typically refer to the area around Complainant’s theme
part as “Disney.” This descriptive use
as a geographic indicator is relevant to show the domain name, by itself, does
not bait consumers into thinking
that it is affiliated with Complainant. Consumers searching for rental homes near
Disney or in the Disney area will search the Internet and find Respondent’s
website on their
own. Consumers who
find Respondent’s website are specifically not looking for a “Disney” sponsored
website. Consumers are able to
understand and appreciate the number of Disney formative websites that are not
affiliated with Disney, and will
not make such a connection. Complainant has no evidence on any of the
factors set out in the UDRP to demonstrate bad faith. Respondent had no intent to attract Internet users away from
Complainant. Respondent was attempting
to compete with the other services for the business of renting homes “near
Disney.” None of the additional factors
are established in this case.
Respondent denies that she committed any of the acts of bad faith set
out in the Policy and contends that no evidence is presented
to prove that she
did any act consistent with bad faith. Respondent did not “intentionally attempt”
to attract consumers to her website
be creating confusion with Complainant’s
mark. Instead, Respondent was aware of
a proliferation of websites with that word in the domain name, and never
considered that Complainant
would find her website particularly bothersome.
Complainant has attempted to use information from “settlement communications”
between
counsel in an attempt to bolster its case. The Panel should properly not consider any such information. Respondent continues to move away from
active use of the domain name.
Respondent will make changes, and will continue its efforts to
re-establish its Internet presence without use of the domain name,
even if
successful in this case.
FINDINGS
1.
Complainant
is an entertainment company and owner of intellectual properties including
trademarks associated with live-action and
animated movies and television shows
as well as a radio network. Complainant
maintains a presence on the Internet by use of domain names containing the
trademark, DISNEY, either alone or in combination
with other words.
2.
Complainant
registered the trademark DISNEY with the United States Patent and Trademark
Office on July 28, 1981; the service mark
DISNEY ONLINE on October 13, 1998;
the service mark DISNEY.COM on May 12, 1998; and the trademark, service mark
DISNEYLAND on April
13, 1976.
3.
Complainant
owns and operates an extensive theme park and resort near Orlando, Florida that
goes by the name “Disneyworld.”
4.
The Panel
takes notice that Complainant provides resort rental properties either through
ownership of rental properties or in connection
with affiliated entities who
offer rentals on the premises of “Disneyworld.”
5.
Respondent
is an individual residing in North Carolina who is in the business of being a
rental agent for homeowners in the Orlando
and Kissimmee, Florida, area who
desire to rent their homes. Respondent
has agreements with approximately 55 homeowners to rent their homes. Respondent rents the homes in question
through use of the Internet and by other means.
6.
Respondent
using the trade name, “Florida Vacation Homes”, registered the domain name <disneyvacationvillas.com>
on January 20, 2000.
7.
Respondent
at some time thereafter began operating a website at <disneyvacationvillas.com>
which website bore the title “Disney Vacation Villas International.” The website contained in small letters at
the end of the web pages the following: “Disney Vacation Villas International
is not Sponsored
by or Affiliated with Walt Disney, Co. or any of its Subsidiaries
or Related Companies.”
8.
There are
at least 40 other rental companies operating on the Internet attempting to rent
properties near Complainant’s theme park
which contain the word DISNEY as part
of the domain name.
9.
Complainant
sent a cease and desist letter to “Florida Vacation Homes” on August 2,
2002. Respondent promptly replied and a
series of letters were exchanged between counsel for the parties, which failed
to resolve the dispute. This domain
name dispute proceeding was thereafter initiated.
10. The domain name <disneyvacationvillas.com>
is confusingly similar to Complainant’s trademark, DISNEY, and its service
marks.
11. Respondent has no rights to or legitimate
interests in the domain name.
12. Respondent registered and used the domain
name <disneyvacationvillas.com> in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant
has rights;
(2)
the
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.
Complainant has the responsibility of
proving that the domain name is identical or confusingly similar to a trademark
or service mark
in which the Complainant has rights. See Policy ¶ 4(a)(i).
Complainant’s registration of the trademark DISNEY with the
United States Patent and Trademark office prior to Respondent’s registration
of
the domain name is sufficient to prove that Complainant has rights in the
trademark for the purposes of this section.
See Aetna Inc. v. Jacoby Partners 1999-2, LLC, AF125816 (Nat.
Arb. Forum Nov. 22, 2002).
Respondent contends that “confusing” must
have some connotation of involving the environment in which the domain name is
used, as
opposed to merely being “similar.” Respondent contends that the “vast
number of domain names including the word DISNEY demonstrates
that…
[Respondent’s]… domain name is not confusingly similar to Complainant’s
mark”.
Complainant argues that Respondent’s <disneyvacationvillas.com>
domain name is confusingly similar to its DISNEY mark. Complainant argues that Respondent’s domain
name incorporates Complainant’s famous DISNEY mark in its entirety and merely
adds the
generic words “vacation” and “villas.” Complaint is correct. See
Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026
(WIPO Mar. 23, 2001) which found confusing similarity where the domain name in
dispute contains the identical mark of Complainant
combined with a generic word
or term. See also Sony Kubushiki
Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) finding that neither
the addition of an ordinary descriptive word nor the suffix “.com” detract from
the overall impression of the dominant part of the name in each case, namely
the trademark “Sony” and thus Policy ¶ 4(a)(i) is satisfied. See also AXA China Region, Ltd. v. KANNET
Ltd, D2000-1377 (WIPO Nov. 29, 2000) finding that common geographic
qualifiers or generic nouns can rarely be relied upon to differentiate
the mark
if the other elements of the domain name comprise a mark or marks in which
another party has rights. See also
Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, D2001-0489
(WIPO June 19, 2001) finding “disneychanel.com”, “disneywallpaper.com”,
“disneywold.com”, “disneywolrd.com”, disneyworl.com”
and “walddisney.com”
confusingly similar to the trademark DISNEY.
Respondent admits that she choose the
domain name to suggest an association with Complainant’s “Disneyworld” theme
park. Having chosen a domain name meant
to be similar to Complainant’s mark, Respondent cannot be successful in
contending that the domain
name is not confusingly similar.
Complainant prevails under Policy ¶
4(a)(i).
The Policy places the burden of proof on
this issue upon Complainant. See Policy ¶ (4)(a)(ii). However, if Complainant can make a prima
facie showing of no rights or legitimate interests in Respondent, the burden
shifts to Respondent
to prove her rights and legitimate interests in the domain
name. This rule is suggested in the Policy ¶ 4(c) where Respondent is
invited
to “…Demonstrate Your Rights to and Legitimate Interests in the Domain Name in
Responding to a Complaint.” Panels have
interpreted Policy ¶ (4)(c) to require Respondent to go forward with the
evidence once a showing is made by Complainant.
See Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) in which it was stated “Where a
complainant has asserted that the respondent has no rights or legitimate
interests in respect of the domain name, it is incumbent upon the respondent to
come forward with concrete evidence rebutting this
assertion. This information is uniquely within the
knowledge and control of the respondent.
Failure of a respondent to come forward with such evidence is tantamount
to admitting the truth of complainant’s assertions in this
regard.”
Complainant states that it has not
authorized Respondent to use its trademark or to seek the registration of any
domain name incorporating
the mark.
Complainant states that Respondent is not authorized by Complainant to
use the domain name in this or any other way.
Complainant states that Respondent is not and has not been commonly
known by the disputed domain name.
Although Respondent uses the trade name “Disney Vacation Villas” on its
website, such an unauthorized use does not establish legitimate
interests in
the domain name. Complainant states
that Respondent does not make legitimate, noncommercial or fair use of the
domain name without intending to mislead
or divert consumers or to tarnish
Complainant’s mark for commercial gain.
Complainant states that Respondent uses
the domain name to direct Internet users to a website that offers commercial
goods and services. The disputed domain
name directs users to Respondent’s website through which it sells vacation
homes in an area close to Complainant’s
Disneyworld theme park and resort in
Florida. Respondent registered the
domain name in order to infringe upon Complainant’s rights in its mark, to
trade off Complainant’s goodwill
and to usurp Internet traffic rightly intended
for Complainant.
Complainant’s showing is sufficient to
shift the burden of demonstrating legitimate rights to and interests in the
domain name to
Respondent.
Respondent meets this responsibility by
advancing one argument only, though it is argued in several different
ways. Respondent states that: “For years prior to notice of this dispute,
and at least since 2000, Ms. McSherry has been using the Domain Name in
connection with
a bona fide offering of services, to wit: rental of privately-owned vacation homes
near Complainant’s theme park…Ms. McSherry has legitimately conducted business
as Disney
Vacation Villas, International for years prior to this dispute…documents
establish that Ms. McSherry is, and has been, known as Disney
Vacation Villas
by her customers and by her business associates.”
Respondent is proceeding under Policy ¶
4(c)(i) and (ii) which state:
(i)
before any
notice to you of the dispute, your use of, or demonstrable preparations to use,
the domain name or a name corresponding
to the domain name in connection with a
bona fide offering of goods or services; or
(ii)
you (as an
individual, business, or other organization) have been commonly known by the
domain name, even if you have acquired no
trademark or service mark rights;
No evidence is presented, nor does Respondent argue, that
Respondent was known as “Disney Vacation Villas” or “Disney Vacation Villas,
International” at any time prior to registration of the domain name <disneyvacationvillas.com>. Complainant argues and the evidence
shows that prior to registration, Respondent was known as “Florida Vacation
Villas”, the name
under which she registered the domain name in dispute. Policy
¶ 4(c)(ii) has been interpreted “to require a showing that one has
been
commonly known by the domain name prior to registration of the domain name to
prevail.” See RMO, Inc. v. Burbridge, FA 96040 (Nat. Arb. Forum May 16,
2001). Respondent was not commonly
known as “Disney Vacation Villas” prior to registration of the domain
name. Respondent only began using
“Disney Vacation Villas” after registration.
Respondent cannot prevail under Policy ¶ 4(c)(ii).
Respondent contends that rental of vacation homes is a bona
fide offering of goods or services. That is true. But that alone is not enough.
Respondent is using Complainant’s trademark as part of the domain name
to attract Internet users to her site with knowledge of the
trademark both
before registration and thereafter in competition with not only other rental
agents but with Complainant which rents
vacation lodgings on the theme park
grounds either in hotels owned by Complainant or licensed by Complainant for
that purpose. Policy ¶ 4(c)(i) has been
interpreted to mean that no such use constitutes a bona fide offering of goods
and services. See Big Dog Holdings, Inc. v. Day, FA93554 (Nat. Arb.
Forum Mar. 9, 2000) which held that no legitimate use can be found when
respondent was diverting consumers to its
own website by using complainant’s
trademarks in a domain name. See
also N. Coast Med., Inc. v. Allegro Med., FA95541 (Nat. Arb. Forum Oct. 2,
2000). The principal was best stated in
Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”,
D2000-0847 (WIPO May 28, 2001), where it was stated as follows: “use which intentionally trades on the fame
of another can not constitute a ‘bona fide’ offering of goods and
services. To conclude otherwise would
mean that a Respondent could rely on intentional infringement to demonstrate a
legitimate interest, an
interpretation that is obviously contrary to the intent
of the Policy”.
Respondent argues that the rule set out
in the Madonna Ciccone case should not be applied to Respondent in this case
since Respondent
does not “intentionally” trade on the fame of Complainant and
there is no intentional infringement of Complainant’s trademark. Respondent does not intend to compete with
Complainant, it is argued. Respondent
only intends to compete with other real estate agents, she contends. The Panel cannot accept Respondent’s
contention that she does not intend to compete with Complainant when the
evidence shows that
she actually does compete with Complainant. See Starwood
Hotels & Resorts Worldwide, Inc. v. 613 181 BC Ltd. a/k/a Travel Domains, FA117051
(Nat. Arb. Forum Sept. 26, 2002) finding that the alleged intent of a
respondent cannot, by itself, carry the issue for respondent
where other facts
illustrate violations of the Policy.
The evidence is clear that Respondent
intends to rent vacation homes to persons who want to visit Complainant’s theme
park. While other rental agents are
intending to do the same thing, all of the rental agents compete directly with
Complainant in the rental
of accommodations to those who desire to visit Complainant’s
theme park. Respondent cannot prevail
under Policy ¶ 4(c) for any of the reasons advanced in the Response or any
inference which might be legitimately
drawn from the pleadings.
Complainant prevails under Policy ¶
4(a)(ii).
Policy ¶ 4(a) requires Complainant to
prove that the domain name has been registered and is being used in bad
faith. The methods that Complainant may
use to prove bad faith are set out in Policy ¶ 4(b).
Complainant advances two points. The first is that because of the fame of the
DISNEY trademark, combined with widespread marketing of DISNEY related goods
and services
within the United States, where Respondent is located, are more
than enough to impute to Respondent knowledge of Complainant’s mark
and since
the mark is so internationally distinctive and famous Respondent must have had
actual knowledge of the mark prior to registration. Respondent admits that she knew of the DISNEY mark prior to registration
because of its fame. Complainant
contends that this factual situation shows bad faith for breaching the
registration contract with Tucows because it falsely
represented that its
registration did not infringe upon the rights of any third party. Complainant cites Google, Inc. v. wwwgoogle.com
and Jimmy Stavesh Behain, D2000-1240 (WIPO Nov. 9, 2000) for this
proposition.
The Panel notes that the Google case was
one decided in default and one in which the defaulting Respondent registered
the exact name
in which Complainant held a trademark. The Panel does not find the facts of this case similar enough to
those in the Google case to warrant using the holding in the Google
case a
precedent in this case.
Complainant next contends that Respondent’s registration and
use of the domain name meets the elements set forth in Section 4(b)(iv)
of the
UDRP because Respondent is intentionally using the domain name 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. Complainant says: “By using the disputed Domain Name to direct
Internet traffic to Respondent’s own commercial website, Respondent is trading
on the
value of the mark established by Complainant. Respondent clearly derives economic benefit from this conduct by
receiving compensation for vacation services provided by Respondent’s
business. This constitutes bad faith registration and
use under the UDRP.”
Respondent counters this argument by
contending that “Ms. McSherry has not intentionally attempted to attract
Internet users to her
website by creating a likelihood of confusion…Ms.
McSherry designed the content of her website to avoid any confusion based on
the
website’s ‘look and feel’…The content clearly distinguishes the website
from one sponsored or endorsed by Complainant…Ms. McSherry
has no content that
can be associated with Complainant, and a disclaimer specifically informing
consumers that there is no such association…Consumers
seeking an expensive
vacation home rental are typically savvy consumers that are not likely to be
confused, and in fact have not
been confused.”
Respondent attached several e-mail
messages from consumers stating that such consumers were not mislead or
confused when viewing Respondent’s
website.
Complainant responds by arguing that
“Even if one accepts the Respondent’s theory that visitors to her website are
not likely to be
confused once that read her site, registration and use of this
Domain Name is in bad faith because it creates initial interest
confusion.” Complainant cites Brookfield
Communications, Inc. v. West Coast Entertainment Corp., [1999] USCA9 225; 174 F.3d 1036 (9th
Cir. 1999); OBH, Inc. et al v.
Spotlight Magazine, Inc. 86 F. Supp 2nd 176 (W.D.N.Y. 2000); Mobil
Oil Corp. v. Pegasus Petroleum Corp, [1987] USCA2 413; 818 F. 2d 254 (2nd Cir. 1987).
Respondent states that she recognizes that initial interest
confusion is only one factor considered by certain Panelists when determining
bad
faith. Respondent says she has found no
case where the issue of initial interest confusion, by itself, has been the
foundation for a finding
of bad faith as proposed by Complainant.
The evidence in this case shows as
follows. Respondent knew of Complainant’s
trademark prior to registration of the domain name containing the mark. She choose to use Complainant’s trademark as
part of the domain name for the intended purpose of attracting Internet users
who were
seeking rental properties either close to or on the property of
Complainant’s theme park. Respondent is
competing with not only other rental agents doing the same thing she does, but
directly with Complainant which provides
rental lodgings within the theme
park. Respondent does not employ graphics
of DISNEY characters, nor state that her website is sponsored by Disney. A disclaimer in small print at the end of
the web pages states that the website is not associated with DISNEY.
Based upon this evidence, the Panel must
find that by use of the domain name <disneyvacationvillas.com>, Respondent
is intentionally attempting to attract, for commercial gain, Internet users by
creating a likelihood of confusion with
the Complainant’s mark, DISNEY, as to
the source, sponsorship, affiliation, or endorsement of the website. Any reasonable Internet user seeing the
domain name is likely to assume that the website is sponsored or affiliated
with Complainant. Respondent has intentionally
created this situation by use of the DISNEY mark. There is nothing in the domain name to suggest that it is not
endorsed or affiliated with Complainant.
While it is true that the disclaimer at the end of the web page
presentation at <disneyvacationvillas.com> states that it is not
affiliated with Complainant, an Internet user desiring to rent a vacation
property from Complainant by use of
the Internet might be influenced to rent a
vacation property from Respondent once Respondent’s site is reached and the
information
upon it read and evaluated by the Internet user. That appears to be a factual situation where
initial interest confusion can cause damage to a trademark holder whose mark is
used
by another in a domain name.
A disclaimer of the type used by
Respondent in this case is not sufficient to insulate Respondent from a finding
of bad faith. See Yahoo, Inc. v. Cho, FA146934 (Nat. Arb. Forum April
16, 2003) finding a use of a disclaimer does not mitigate bad faith because of
initial interest confusion.
Respondent registered and used the domain
name <disneyvacationvillas.com> in bad faith. See G.D. Searle
& Co. v. Celebrex Drugstore, FA123933 (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.
See also
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. See also Drs. Foster & Smith, Inc. v.
Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000), finding bad faith where
respondent directed Internet users seeking complainant’s site to
its own
website for commercial gain.
Complainant prevails under Policy ¶
4(a)(iii).
DECISION
Having
established all three elements required under ICANN Policy the Panel concludes
that relief shall be GRANTED.
Accordingly, it is Ordered that the <disneyvacationvillas.com>
domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 17, 2003
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