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Generic Top Level Domain Name (gTLD) Decisions |
Disney Enterprises, Inc. v. na a/k/a Garret Hodson
Claim Number: FA0305000158165
Complainant is Disney
Enterprises, Inc., Burbank, CA (“Complainant”) represented by
J. Andrew Coombs, of J. Andrew Coombs, A Professional Corporation. Respondent
is na a/k/a Garret Hodson, Orange, CA (“Respondent”).
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue
is <disney-auctions.com>, registered with Go Daddy Software,
Inc.
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.
Honorable Paul A. Dorf
(Ret.) as Panelist.
Complainant submitted a
Complaint to the National Arbitration Forum (the "Forum")
electronically on May 20, 2003; the Forum
received a hard copy of the Complaint
on May 21, 2003.
On May 23, 2003, Go
Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <disney-auctions.com>
is registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy Software, Inc. has
verified that Respondent is
bound by the Go Daddy Software, 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 May 23, 2003, a
Notification of Complaint and Commencement of Administrative Proceeding (the
"Commencement Notification"),
setting a deadline of June 12, 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@disney-auctions.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 June 20, 2003,
pursuant to Complainant's request to have the dispute decided by a
single-member Panel, the Forum appointed Honorable
Paul A. Dorf (Ret.) as
Panelist.
Having reviewed the
communications records, the Administrative Panel (the "Panel") finds
that the Forum has discharged its
responsibility under Paragraph 2(a) of the
Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules")
"to
employ reasonably available means calculated to achieve actual notice
to Respondent." Therefore, the
Panel may issue its decision based on the documents submitted and in accordance
with the ICANN Policy, ICANN Rules,
the Forum's Supplemental Rules and any
rules and principles of law that the Panel deems applicable, without the
benefit of any Response
from Respondent.
Complainant requests
that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <disney-auctions.com>
domain name is confusingly similar to Complainant’s DISNEY mark.
2. Respondent does not have
any rights or legitimate interests in the <disney-auctions.com>
domain name.
3. Respondent registered
and used the <disney-auctions.com> domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Disney
Enterprises, Inc., is an entertainment company and owner of many trademarks and
copyrighted works associated with
live-action and animated movies, television
shows and a radio network. Since 1923,
Complainant, or its predecessors in interest, have continuously used and
applied the DISNEY mark and DISNEY-formative
marks for a variety of goods and
services. Complainant maintains a
significant presence on the Internet via subsidiary and otherwise affiliated
companies owning and operating
various urls and websites including
<disney.com> and <disneyauctions.com>. Complainant also
maintains a webpage on the eBay, Inc. auction website (“eBay”).
Complainant obtained a
registration on July 28, 1981 with the United States Patent and Trademark
Office (“USPTO”) for the DISNEY mark
(Reg. No. 1,162,727) related to children’s
story book and a newspaper. Complainant
owns many domain names using its DISNEY mark, including <disney.com>,
<disneyland.com> and <disneyauctions.com>. The domain name, <disneyauctions.com>
was registered in November 2000 and automatically re-directs users to the
“Disney Auctions”
webpage and <disney-auctions.net> , which automatically
redirects users to the <disney.com> homepage. Complainant’s <disney.com> was first registered in 1990 to
promote the Walt Disney Company and to provide access to certain
other Disney
products and services. All uses of
Complainant’s trademarks incorporated into domain names are owned by
Complainant.
Respondent registered
the <disney-auctions.com> domain name on February 18, 2003. Respondent offered the domain name for sale
on the eBay auctions website for $1,800.00 and included Complainant’s “Disney
Auctions”
logo on its auction webpage.
Respondent described the Domain Name as being a “Premier Domain Name”
and exclaimed, “Think of the possibility of being connected
with
Disney!!!!!!” Respondent has not made
an active use of the domain name and there is no operational website in
connection with the domain name.
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.
Complainant has
established rights in the DISNEY mark through registration with the USPTO on
July 28, 1981. In addition, Complainant
has continuously used the DISNEY mark since 1923 for a variety of goods and
uses. See The Men’s Wearhouse, Inc.
v. Brian 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”). As one court stated more than 30 years ago, “the association of
the name ‘DISNEY’ with the business enterprises, goods, services and
activities
of [the Complainant and its affiliated companies] is so widely accepted in the
mind of the general public…that said name
has become and is distinctive…and has
acquired and now has a secondary meaning and distinctiveness throughout the
United States…”
Walt Disney World Co. v. Disney Area Acreage, Inc., 316
F.Supp. 285, 286-287 (S.D. Fla. 1970); see also Disney Enterprises, Inc. v.
John Zuccarini, et. Al., D2001-0489 (WIPO June 19, 2001) (DISNEY mark is
“highly distinctive and unquestionably famous”).
Complainant owns many
domain names using its DISNEY mark, including <disney.com>,
<disneyland.com> and <disneyauctions.com>. The <disneyauctions> domain name was
registered in November 2000 and automatically re-directs users to the “Disney
Auctions”
webpage, and <disney-auctions.net> , which automatically
redirects users to the <disney.com> homepage. Complainant owns all uses of its trademarks incorporated into
domain names. Complainant’s
<disney.com> was first registered in 1990 to promote the Walt Disney
Company and to provide access to certain
other Disney products and
services. See Wal-Mart Stores, Inc.
v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of
the Complainant to register all possible domain names that surround
its
substantive mark does not hinder Complainant’s rights in the mark. “Trademark owners are not required to create
‘libraries’ of domain names in order to protect themselves”); see also
Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9,
2000) (finding common law rights in the mark BIBBERO as the Complainant,
Bibbero Systems, Inc (Complainant
owns a trademark for its full company name)
had developed brand name recognition with the BIBBERO term by which the
Complainant is
commonly known).
Accordingly, the Panel
finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to
submit a Response in this proceeding.
Thus, the Panel is permitted to accept all reasonable allegations and
inferences in the Complaint as true. See
Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat.
Arb. Forum July 31, 2000) (Respondent’s failure to respond allows all
reasonable inferences of fact in the allegations
of Complainant to be deemed
true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the
absence of a response, it is appropriate to accept as true all allegations of
the Complaint”).
Respondent’s use of the
domain name does not and cannot constitute a bona fide offering of goods or
services because Respondent registered
and uses the domain name to infringe
Complainant’s rights in its mark, to trade off Complainant’s goodwill and to
usurp Internet
traffic rightly intended for Complainant. Complainant has not authorized Respondent to
use its trademark or to seek the registration of any domain name incorporating
the mark. Respondent must have known
when he selected the domain name that the public would incorrectly associate it
with Complainant and Complainant’s
marks.
Given the distinctiveness and fame of the DISNEY and DISNEY-formative
marks, there is no plausible explanation for Respondents’ registration
of the
domain name other than to trade upon the goodwill Complainant has developed in
its marks. Despite Complainant’s
demands, Respondent refuses to acknowledge Complainant’s rights in the domain
name and has communicated his
intent to “keep [] it for some time.” Thus, Respondent fails to establish rights or a legitimate
interest in the domain name under Policy ¶ 4(c)(i). See Guerlain S.A. v. Peikang, D2000-0055 (WIPO March 21,
2000) (holding that “[i]n the absence of any license or permission from the
Complainant to use any of its
trademarks or to apply for or use any domain name
incorporating those trademarks, it is clear that no actual or contemplated bona
fide or legitimate use of the domain name could be claimed by Respondent; see
also Body Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (Nov. 26, 2000)
(finding bad faith where (1) Respondent failed to use the domain name and (2)
it is clear that Respondent
registered the domain name as an opportunistic
attempt to gain from the goodwill of Complainant).
Respondent is not and
has not been commonly known by the disputed domain name. Respondent does not use the trade name
“Disney Auctions” on a website or for any other purpose. Even if Respondent has used the trade name,
such an unauthorized use does not establish rights or legitimate interests in
the domain
name. Therefore, Respondent
does not have rights or legitimate interests in the domain name under 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 Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO
Dec. 21, 2000) (finding that no person besides Complainant could claim a right
or a legitimate interest with respect
to the domain name <nike-shoes.com>).
Furthermore, Respondent,
Garret Hodson, is not commonly known by the disputed domain name as evidenced
by both the name given in the
WHOIS contact information for the disputed domain
name and the fame surrounding Complainant’s longstanding use of the DISNEY
mark. Thus, the evidence supports the
reasonable inference that Policy ¶ 4(c)(ii) does not apply to Respondent. See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly
known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also Foot Locker Retail, Inc. v. Bruce Gibson,
FA 139693 (Nat. Arb. Forum Feb. 4, 2003) (stating that [d]ue to the fame of Complainant’s FOOT LOCKER family of
marks…and the fact that Respondent’s WHOIS information reveals its name to be
“Bruce Gibson,” the Panel infers that Respondent was not “commonly known by”
any of the disputed domain names prior to their registration,
and concludes
that Policy ¶ 4(c)(ii) does not apply to Respondent”).
Respondent’s current use
of the <disney-auctions.com> domain name, purporting to offer the
registration for sale for $1,800.00, does not evidence a legitimate
noncommercial or fair
use of the domain name.
Respondent offered the domain name for sale on the eBay auctions website
for $1,800.00 and included Complainant’s “Disney Auctions”
logo on his auction
webpage. Respondent described the
domain name as being a “Premier Domain Name” and exclaimed, “Think of the
possibility of being connected
with Disney!!!!!!” Respondent has not made an active use of the domain name and
there is no operational website in connection with the domain name. The disputed domain name automatically re-directs
users to a Go Daddy webpage that indicates to users that the domain name is
“parked”
and is for sale. Therefore,
Respondent fails to establish rights or legitimate interests in the domain name
under Policy ¶ 4(c)(iii). See J.
Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum
Sept. 7, 2000) (finding rights or legitimate interests do not exist when one
has made no use of the websites
that are located at the domain names at issue,
other than to sell the domain names for profit); see BMW AG v. Loophole,
D2000-1156 (WIPO Oct. 26, 2000) (finding no rights in the domain name where
Respondent claimed to be using the domain name for a
non-commercial purpose but
had made no actual use of the domain name).
Accordingly, the Panel finds that Respondent
does not have rights or legitimate interests in the <disney-auctions.com> domain name under Policy ¶ 4(a)(ii).
Respondent has offered
the domain name for sale on the eBay auctions website for $1,800.00 and has
informed the Complainant of his
intent to “keep [the domain name registration]
for some time.” Thus, circumstances
indicate that Respondent registered the domain name primarily for the purpose
of selling or transferring the domain
name registration to Complainant. Respondent’s failure to develop or
articulate a purpose for the domain name reinforces this finding. Respondent registered and used the domain
name in bad faith pursuant to Policy ¶ 4(b)(i). See Wrenchead.com, Inc. v. Hammersla, D2000-1222 (WIPO
Dec. 12, 2000) (finding that offering the domain name for sale at an auction
site is evidence of bad faith registration
and use); see also World
Wrestling Fed’n Entmt., Inc. v. Bosman,
D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in
bad faith because he offered to sell the domain name
for valuable consideration
in excess of any out-of-pocket costs).
Furthermore, Respondent
registered the domain name in bad faith because 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’s knowledge of Disney’s prior trademark rights. See Northwest Airlines, Inc. v. Koch,
FA 95688 (Nat. Arb. Forum Oct. 27, 2000) (“the selection of a domain name
[northwest-airlines.com] which entirely incorporates the
name of the world’s
fourth largest airline could not have been done in good faith”); see also
Chanel, Inc. AG v. Designer Exposure, D2000-1832 (WIPO Feb. 15, 2001)
(finding that Respondent's registration and use of the famous CHANEL mark
suggests opportunistic
bad faith).
Since the DISNEY mark is
so internationally distinctive and famous, Respondent clearly knew or should
have known of Complainant’s
mark prior to registering the domain name. By registering the domain name with actual
or constructive knowledge of Complainant’s mark, Respondent acted in bad faith
by breaching
his registration contract with Go Daddy because he falsely
represented that his registration of the domain name did not infringe
the
rights of any third party. Thus, the
registration constituted bad faith. See
Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding
that Respondent had actual and constructive knowledge of Complainant’s EXXON
mark given
the worldwide prominence of the mark and thus Respondent registered
the domain name in bad faith); see also Victoria's Secret v. Hardin, FA
96694 (Nat. Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety
of Complainants' famous marks, Respondent had
actual or constructive knowledge
of the BODY BY VICTORIA marks at the time she registered the disputed domain
name and such knowledge
constituted bad faith).
The Panel finds that
Policy ¶ 4(a)(iii) has been satisfied.
Having established all
three elements required under ICANN Policy, the Panel concludes that relief
shall be GRANTED.
Accordingly, it is
Ordered that the <disney-auctions.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf
(Ret.), Panelist
Dated: July 1, 2003
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