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Disney Enterprises, Inc. v. JaniceMcSherry d/b/a Florida Vacation Homes [2003] GENDND 617 (17 June 2003)


National Arbitration Forum

DECISION

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.

Identical and/or Confusingly Similar

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).

Rights or Legitimate Interests

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).

Registration and Use in Bad Faith

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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