DECISION

Disney Enterprises Inc. v. Kristen DeCamp

Claim Number:  FA0404000250765

PARTIES

Complainant is Disney Enterprises Inc. (“Complainant”), represented by Julia Matheson, of Finnegan Henderson Farabow Garrett & Dunner L.L.P., 1300 I Street NW, Washington, DC 20005.  Respondent is Kristen DeCamp (“Respondent”), 6745 E. Superstition Springs B1, Apartment #1057, Mesa, AZ 85206.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mickeymouseclub.com>, registered with Go Daddy Software, 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.,  Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 5, 2004; the Forum received a hard copy of the Complaint on April 6, 2004.

On April 5, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <mickeymouseclub.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 April 7, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 27, 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@mickeymouseclub.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 May 13, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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 <mickeymouseclub.com> domain name is confusingly similar to Complainant’s MICKEY MOUSE mark.

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

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

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

FINDINGS

Complainant, Disney Enterprises Inc., is an entertainment company that produces live and animated movies, television shows as well as a radio network.  Complainant also operates theme parks.

Complainant has used the MICKEY MOUSE mark since 1928, registering the following versions of it with the U.S. Patent and Trademark (“USPTO”) on the respective dates:

MICKEY MOUSE (stylized)	247,156	September 18, 1928
MICKEY MOUSE	315,056	July 17, 1934
MICKEY MOUSE (and design)	313,765	June 5, 1934
MICKEY MOUSE (stylized)	309,098	January 2, 1934
MICKEY MOUSE	1,152,389	April 28, 1981

 

Complainant has used the MICKEY MOUSE CLUB mark on a children’s television show since 1955.  The MICKEY MOUSE CLUB first aired in 1955 and ran for 360 episodes (its theme song, incidentally, spelled out Complainant’s MICKEY MOUSE mark).  Complainant subsequently syndicated the show from 1955-1959 and 1975-1976.   A new show by the same name ran until 1978 and another version of the show that ran from 1989-1995.  All programs were subsequently rebroadcast on Complainant’s cable station.  Complainant registered the MICKEY MOUSE CLUB mark on September 14, 1999 (Reg. No. 2,278,297).

Respondent registered the <mickeymouseclub.com> domain name on May 30, 1998.  Respondent has used the domain name for various under construction websites as well as directories that provide information related to Complainant’s business, such as “Disney vacations,” “Disney resorts,” and “Disney Orlando.” 

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 rights in the MICKEY MOUSE mark pursuant to Policy ¶ 4(a)(i), as evidenced by its registration with the USPTO and use in commerce.  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).

Complainant also has rights in the MICKEY MOUSE CLUB mark pursuant to Policy ¶ 4(a)(i), as evidenced by its proof of secondary meaning.  See S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that Complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law”).

The <mickeymouseclub.com> domain name is identical to the MICKEY MOUSE CLUB mark and confusingly similar to the MICKEY MOUSE mark.  The only difference is the addition of the generic term “club,” which does not significantly distinguish the domain name from the mark under 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 Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either 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).

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

Rights or Legitimate Interests

When Complainant asserts a prima facie case against Respondent, the burden shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  Respondent has failed to submit a Response. Therefore, the Panel infers that Respondent lacks rights and legitimate interests in the disputed domain name.  See 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 in respect of 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 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).

Furthermore, because Respondent has not submitted a Response, it is appropriate for the Panel 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) (failure to respond allows all reasonable inferences of fact in the allegations of the Complaint to be deemed true); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

The Panel finds that Respondent does not have rights or legitimate interests in the domain name.  Respondent is appropriating Complainant’s mark to collect and advertise goods and services related to Complainant’s business.  Appropriating Complainant’s mark to advertise related goods is not 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 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 U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that Respondent’s use of Complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services).

There is nothing in the record, including the WHOIS registration information, that indicates that Respondent is commonly known by <mickeymouseclub.com> pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. 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 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).

Accordingly, the Panel finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

The Panel finds that Respondent is using the <mickeymouseclub.com> domain name in bad faith.  Respondent is appropriating Complainant’s mark to offer goods and services related to Complainant.  Because Respondent provides information in a directory context, the Panel infers that it is receiving payment for click-through referrals.  The Panel finds that Respondent is creating confusion for commercial gain, which evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See 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); 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)).

Respondent is also offering services that are in competition with those offered by Complainant.  The Panel infers that Respondent is attempting to disrupt the business of a competitor because it has appropriated Complainant’s mark for a domain name that offers competing services; this is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business).

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 <mickeymouseclub.com> domain name be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated:  May 26, 2004

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