DECISION

Disney Enterprises, Inc. v. P.O.P. Plastics, Inc.

Claim Number:  FA0409000320150

PARTIES

Complainant is Disney Enterprises, Inc. (“Complainant”), represented by J. Andrew Coombs, 450 North Brand Boulevard, Suite 600, Glendale, CA 91203-2349.  Respondent is P.O.P Plastics, Inc. (“Respondent”), 2225 Faraday, Suite C, Carlsbad, CA 92008.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <disneyshop.com>, registered with Network Solutions, Inc.

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.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 1, 2004; the Forum received a hard copy of the Complaint on September 1, 2004.

On September 2, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <disneyshop.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 September 3, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 23, 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@disneyshop.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 October 4, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Louis E. Condon 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 <disneyshop.com> domain name is confusingly similar to Complainant’s DISNEY mark.

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

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

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

FINDINGS

Since 1923, Complainant and/or its predecessors-in-interest have continuously used the DISNEY mark or other DISNEY-formative marks to identify the source of a variety of goods and services that relate to the entertainment market.  Complainant registered the DISNEY mark with the United States Patent and Trademark Office on July 28, 1981 (Reg. No. 1,162,727) in connection with children’s storybooks. 

Respondent registered the disputed domain name <disneyshop.com> on May 8, 2002.  Respondent has used the disputed domain name to host a website that offered a variety of hyperlinks that related directly to Complainant’s DISNEY mark, including links to “Disney,” “Disney florida,” “Disney Vacations,” and “Disney Vacation Packages.”  The resolved website also contained a heading labeled “Sponsored Links,” which lists well-known sponsoring websites such as <cheaptickets.com>, <priceline.com>, and <touristtips.com>.

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 rights in the DISNEY mark pursuant to paragraph 4(a)(i) of the Policy as the result of its registration of the mark with the United States Patent and Trademark Office.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the United States Patent and Trademark Office creates a presumption of rights in a mark).

It is well established that incorporating a third party’s mark in a domain name and merely appending the term “shop” to the mark fails to alleviate the confusing similarity that exists when a domain name contains another’s mark.  The domain name <disneyshop.com> incorporates Complainant’s DISNEY mark in its entirety and has merely appended the term “shop,” which does not remove the confusing similarity betweent the domain name and mark pursuant to paragraph 4(a)(i) of the Policy.  See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that the domain name <shopllbean.com> is confusingly similar to Complainant’s L.L. BEAN mark because “the word ‘shop’ has to do with the Complainant’s business” and when it is combined with Complainant’s mark “consumers are confused and misled”); see also Victoria's Secret et al v. Hostdifferent.net, FA 96500 (Nat. Arb. Forum Feb. 28, 2001) (finding that the domain name <shopvictoriassecret.com> is confusingly similar to Complainant’s VICTORIA'S SECRET mark because the “mere addition of the term ‘shop’ does not reduce the likelihood of confusion under Policy 4(a)(i)”); see also Venator Group Retail, Inc. v. ShopStarNetwork, FA 100575 (Nat. Arb. Forum Dec. 10, 2001) (finding that the domain name <shopfootlocker.com> is confusingly similar to Complainant’s FOOT LOCKER mark and stating that the “addition of the term ‘shop’ does not create a mark capable of defeating a claim of confusing similarity”).

Therefore, Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

The failure to respond to the Complaint allows the Panel to accept all reasonable allegations set forth in the Complaint as true, unless clearly contradicted by the evidence.

See Vert. 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); 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, the failure to respond may be construed as an implicit admission that Respondent lacks rights and legitimate interests in the disputed domain name.  See 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); see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29, 2004) (“The failure of Respondent to respond to the Complaint functions both as an implicit admission that Respondent lacks rights to and legitimate interests in the domain names, as well as a presumption that Complainant’s reasonable allegations are true.”).

Respondent is using a domain name that is confusingly similar to Complainant’s DISNEY mark to host a website that offers links to a variety of websites that relate directly to Complainant’s mark.  The resolved website also contains a series of “Sponsored Links,” which are links posted by a domain name registrant on behalf of a third party, and in consideration of some form of compensation, usually determined by the quantity of visitors clicking on the posted link.  Sponsored links provide businesses the ability to attract potential customers to an online location, and function as advertisements. Therefore, Respondent is commercially profiting from the use of the confusingly similar domain name by capitalizing upon the goodwill associated with Complainant’s DISNEY mark.  Such is not a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy nor a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy.  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that Respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name); see also Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that Respondent did not have rights or legitimate interests in a domain name that used Complainant’s mark and redirected Internet users to a website that pays domain name registrants for referring those users to its search engine and pop-up advertisements).

The record does not indicate that Respondent is commonly known by the domain name <disneyshop.com> pursuant to paragraph 4(c)(ii) of the Policy.  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).

Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Paragraph 4(b)(iv) of the Policy is violated when a domain name registrant intentionally attempts to attract Internet users to its online location for commercial gain by creating a likelihood of confusion with a complainant’s mark.  In the instant case, Respondent: (1) registered a domain name that is confusingly similar to Complainant’s DISNEY mark, (2) hosted a series of hyperlinks to commercial businesses that directly relate to Complainant’s mark, (3) commercially profited from the use of sponsored links, and (4) failed to respond to the Complaint.  These facts lead the Panel to believe that Respondent intentionally attempted to attract Internet users to the disputed domain name for the purpose of commercial gain, by creating a likelihood of confusion with Complainant’s DISNEY mark.  Thus, Respondent violated paragraph 4(b)(iv) of the Policy.  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); 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 used 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 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)).

The fact that Respondent registered a domain name that incorporated Complainant’s DISNEY mark, and then proceeded to host a website that offered a variety of links directly related to Complainant’s mark is evidence that Respondent had actual knowledge of Complainant’s rights in the DISNEY mark prior to registering the disputed domain name, which further demonstrates that Respondent registered and used the disputed domain name in bad faith.  See Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse.").

Complainant has established Policy ¶ 4(a)(iii).

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

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

Louis E. Condon, Panelist

Dated:  October 18, 2004

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