DECISION

Disney Enterprises, Inc. v. Hassan Kaakani

Claim Number: FA0312000218874

PARTIES

Complainant is Disney Enterprises, Inc. (“Complainant”) represented by J. Andrew Coombs, 450 North Brand Boulevard, Suite 600, Glendale, CA 92103-2349. Respondent is Hassan Kaakani (“Respondent”), 330 Oak Street, Excelsior, MN 55331.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <aladdindvd.com>, <aladdinvideo.com> and <videoaladdin.com> registered with Bulkregister, LLC.

PANEL

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

Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically December 10, 2003; the Forum received a hard copy of the Complaint December 12, 2003.

On December 11, 2003, Bulkregister, LLC., confirmed by e-mail to the Forum that the domain names <aladdindvd.com>, <aladdinvideo.com> and <videoaladdin.com> are registered with Bulkregister, LLC. and that Respondent is the current registrant of the names. Bulkregister, LLC., verified that Respondent is bound by the Bulkregister, LLC. 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 December 12, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 2, 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@aladdindvd.com, postmaster@aladdinvideo.com and postmaster@videoaladdin.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 January 12, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain names registered by Respondent, <aladdindvd.com>, <aladdinvideo.com> and <videoaladdin.com>, are confusingly similar to Complainant’s ALADDIN mark.

2. Respondent has no rights to or legitimate interests in the <aladdindvd.com>, <aladdinvideo.com> and <videoaladdin.com> domain names.

3. Respondent registered and used the <aladdindvd.com>, <aladdinvideo.com> and <videoaladdin.com> domain names in bad faith.

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

FINDINGS

Complainant is an internationally known 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. Complainant’s animated motion picture Aladdin was first released in November 1992. The film enjoyed considerable critical and box office success, winning two Academy Awards and earning box office receipts in the United States exceeding $200 million and almost $500 million worldwide. In 1999, Complainant announced its plans to release certain of its most popular animated features on DVD format.

Respondent registered the <aladdindvd.com> domain name on April 15, 2000, and the <aladdinvideo.com> and <videoaladdin.com> domain names on April 8, 2000. Respondent has not yet associated any of the disputed domain names with an active website.

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 will draw such inferences as the Panel 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 to and/or Confusingly Similar

Complainant argues that it has acquired common law trademark rights in the ALADDIN mark through the animated motion picture’s considerable critical and box office success. The Panel finds that Complainant demonstrated with extrinsic evidence in this proceeding that it has sufficient common law rights in the ALADDIN mark for purposes of Policy ¶ 4(a)(i). See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”).

Complainant argues that Respondent’s <aladdindvd.com>, <aladdinvideo.com> and <videoaladdin.com> domain names are confusingly similar to Complainant’s ALADDIN mark because the disputed domain names appropriate Complainant’s entire mark and simply add the generic or descriptive terms “DVD” and “video” to the mark. The addition of a generic or descriptive terms fails to significantly distinguish the domain names from the mark under Policy ¶ 4(a)(i) because the added terms directly relate to Complainant’s business of selling the Aladdin film on video and DVD. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (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 Complainant has established Policy ¶ 4(a)(i).

Rights to or Legitimate Interests

Complainant alleges that it has rights to and legitimate interests in the ALLADIN mark and that Respondent has no such rights.  Respondent has not stepped forward to contest these allegations made in the Complaint. Thus, the Panel accepts all reasonable inferences and allegations in the Complaint as true. See Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do); see also 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).

Furthermore, based on Complainant’s failure to contest Complainant’s allegations, the Panel is permitted to presume that Respondent lacks all rights to and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

Respondent has not yet associated any of the <aladdindvd.com>, <aladdinvideo.com> and <videoaladdin.com> domain names with an active website. Respondent’s nonuse of the disputed domain names for well over three years demonstrates neither a bona fide offering of goods or services with regard to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use with regard to Policy ¶ 4(c)(iii). See State Fair of Texas v. State Fair Guides, FA 95066 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that Respondents have not established any rights or legitimate interests in the domain name).

Complainant asserts that it has not authorized Respondent to use the ALADDIN mark or to register any domain name incorporating said mark. Moreover, Respondent has proffered no proof and no evidence in the record suggests that Respondent has such authorization or that Respondent is commonly known by <aladdindvd.com>, <aladdinvideo.com> or <videoaladdin.com>. Thus, the Panel finds that Respondent has failed to demonstrate any rights to or legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

The Panel finds that Policy ¶ 4(a)(ii) has been established.

Registration and Use in Bad Faith

Respondent’s registration of three domain names incorporating Complainant’s common law mark establishes a pattern of registering domain names to prevent Complainant from reflecting the ALADDIN mark in a corresponding domain name, which constitutes evidence of bad faith registration and use in accordance with Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that registration of more than one domain name that infringes on another’s registered mark(s) supports the inference that Respondent knew of Complainant’s marks upon registering the domain names; and the registration of multiple domain names that infringe on Complainant’s trademark(s) is evidence of a pattern of conduct); see also Gamesville.com, Inc. v. Zuccarini, FA 95294 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent engaged in a pattern of conduct of registering domain names to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, which is evidence of registration and use in bad faith).

Furthermore, Respondent’s failure to use the <aladdindvd.com>, <aladdinvideo.com> and <videoaladdin.com> domain names for well over three years is passive holding of a domain name and supports findings that Respondent’s registration and use was done in bad faith, pursuant to Policy ¶ 4(a)(iii). See Mondich & Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that Respondent’s failure to develop its website in a two-year period raises the inference of registration in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).

The Panel finds that Complainant has established Policy ¶ 4(a)(iii).

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 <aladdindvd.com>, <aladdinvideo.com> and <videoaladdin.com> domain names be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: January 26, 2004.

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