DECISION

Disney Enterprises, Inc. v. Jimmy Parfait

Claim Number:  FA0408000310575

PARTIES

Complainant is Disney Enterprises, Inc. (“Complainant”), represented by J. Andrew Coombs, 450 North Brand Boulevard, Suite 600, Glendale, CA 91203-2349.  Respondent is Jimmy Parfait (“Respondent”), 206 Rooks Drive, Slidell, LA 70458.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <disneytravelagent.com>, registered with Namebay.

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 August 9, 2004; the Forum received a hard copy of the Complaint on August 10, 2004.

On August 10, 2004, Namebay confirmed by e-mail to the Forum that the domain name <disneytravelagent.com> is registered with Namebay and that Respondent is the current registrant of the name. Namebay has verified that Respondent is bound by the Namebay 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 August 11, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 31, 2004 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@disneytravelagent.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 7, 2004, 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 makes the following assertions:

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

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

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

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

FINDINGS

Complainant, Disney Enterprises, Inc., is in the entertainment business and is associated with a variety of entertainment-related goods and services. 

Complainant owns hundreds of trademark registrations in numerous countries and with the United States Patent and Trademark Office for its DISNEY marks, including DISNEY (Reg. No. 1,162,727 issued July 28, 1981), DISNEY ONLINE (Reg. No. 2,194,742 issued October 13, 1998), DISNEY.COM (2,156,261 issued May 12, 1998), DISNEYLAND (Reg. No. 1,037,788 issued April 13, 1976) and numerous others.  Complainant has used the DISNEY marks continuously and extensively in commerce since 1923 in association with its entertainment business.

Respondent registered the <disneytravelagent.com> domain name on November 14, 2003.  Respondent is using the disputed domain name to redirect Internet users to a website hosting a search engine and displaying hyperlinks to numerous other websites.  Additionally, the website displays the message “This domain is for sale!” and invites immediate submissions of offers to purchase the domain name registration.  The bottom of the screen informs users that the current website is provided as a service by Trafficz.com, which provides services for domain name holders to make revenue from a site when the holder has not yet put it to a specific use.

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 in this proceeding that it has rights in the DISNEY marks through registration with the United States Patent and Trademark Office and by continuous use of the marks in commerce for the last eighty-one years.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

The <disneytravelagent.com> domain name registered by Respondent is confusingly similar to Complainant’s DISNEY mark because the domain name incorporates Complainant’s mark in its entirety, adding only the generic or descriptive terms “travel” and “agent.”  The mere addition of generic or descriptive words to Complainant’s registered mark does not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).  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 Complainant combined with a generic word or term); see also Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety Complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar).

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

Rights or Legitimate Interests

Complainant asserts that Respondent has no rights to or legitimate interests in the <disneytravelagent.com> domain name.  Due to Respondent’s failure to respond to the Complaint, it is assumed that Respondent lacks rights and legitimate interests in the disputed domain name.  Moreover, once Complainant makes the necessary prima facie showing, the burden shifts to Respondent to show that it does have rights or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also 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 Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Furthermore, where Complainant makes the prima facie showing and Respondent does not respond, the Panel may accept all reasonable allegations and inferences in the Complaint as true.  See 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.”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent is using the <disneytravelagent.com> domain name to redirect Internet users to a website that features a search engine and hyperlinks to a variety of websites, as well as an offer to sell the domain name registration and a method for submitting offers to buy the domain name registration.  Respondent’s use of a domain name that is confusingly similar to Complainant’s DISNEY mark to redirect Internet users interested in Complainant’s products to a commercial website that offers a search engine and hyperlinks to websites unrelated to Complainant’s products and services, coupled with Respondent’s willingness to sell the domain name registration, is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that Respondent’s diversionary use of Complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that Respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).

Finally, Respondent offered no evidence, and no proof in the record suggests, that Respondent is commonly known by the <disneytravelagent.com> domain name.  Furthermore, Complainant has not authorized or licensed Respondent to use its DISNEY mark.  Thus, Respondent has not established rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

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

Registration and Use in Bad Faith

The <disneytravelagent.com> domain name resolves to a website which offers the domain name registration for sale and invites the submission of offers on the website.  This is evidence that Respondent registered the domain name primarily or the purpose of selling the domain name registration in excess of Respondent’s out-of-pocket expenses.  Thus the Panel finds that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(i).  See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (finding that when the domain name itself notes that it is “available for lease or sale,” evidence that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(i) can be inferred from the fact that “the sole value of the [<wwwdinersclub.com] domain name is dictated by its relation to Complainant’s registered DINERS CLUB mark); see also General Elec. Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that Respondent registered and used the domain name in bad faith by using the domain name to direct users to a general site offering the domain name for sale).

Furthermore, Respondent intentionally registered the <disneytravelagent.com> domain name, containing Complainant’s well-known mark in its entirety, for Respondent’s commercial gain.  The disputed domain name diverts Internet users seeking Complainant’s DISNEY mark to Respondent’s commercial website through the use of a domain name that is confusingly similar to Complainant’s mark.  Furthermore, Respondent is unfairly and opportunistically benefiting from the goodwill associated with Complainant’s DISNEY mark.  Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Kmart v. Khan, 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).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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

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

James A. Carmody, Esq., Panelist

Dated:  September 20, 2004

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