National
Arbitration Forum
DECISION
Disney Enterprises, Inc. v. Florida Villas & Homes by Elite
Claim Number: FA0512000609082
PARTIES
Complainant is Disney Enterprises, Inc. (“Complainant”), represented by J.
Andrew Coombs, of J. Andrew Coombs, A Professional Corporation, 450 North Brand
Boulevard, Suite 600, Glendale, CA 91203-2349. Respondent is Florida Villas &
Homes by Elite (“Respondent”), 4638 Cumbrian Kakes Drive, Kissimmee, FL
34746-6716.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <selectdisneyvacations.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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on December 12, 2005; the National Arbitration Forum received a
hard copy of the Complaint on December 13, 2005.
On December 13, 2005, Go Daddy Software, Inc. confirmed by e-mail to the
National Arbitration Forum that the <selectdisneyvacations.com> domain name is
registered with Go Daddy Software, Inc. and that the 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 December 14, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 3, 2006 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@selectdisneyvacations.com by e-mail.
A timely Response was received and determined to be complete on January 3, 2006.
On January 11, 2006, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to
Complainant.
PARTIES’ CONTENTIONS
A. Complainant
a. Respondent’s Domain Name Fully Incorporates Complainant’s Famous,
Long-Standing and Widely Registered Disney Trademarks.
Complainant owns numerous trademark registrations for the word mark DISNEY. Many
of these registrations specifically describe travel-related goods and services
as among the Complainant’s uses of the Disney Trademarks. This includes
www.disney.com, www.disneyvacation.com and www.disneylandvacation.com, each of
which fully incorporates the Disney Trademarks.
The test of confusing similarity under the UDRP is confined to a consideration
of the disputed domain name and the trademark, without reference to other
issues. Microsoft Corporation v. WDW Inc., et. al., D2002-0412 (WIPO July 1,
2002). The disputed Domain Name is confusingly similar to the Disney Trademarks,
as it incorporates the Disney Trademarks in their entirety.
The addition of generic words (“vacation” for example) to a famous trademark
demonstrates confusing similarity with a complainant’s mark. Microsoft, supra
(finding confusing similarity where the domain name in dispute contains the
identical mark of the Complainant combined with a generic word or term); Yahoo!
Inc. v. Seocho, FA109050 (NAF May 13, 2002) (same). Indeed, the fact that the
additional generic word bears a close relationship with certain of Complainant’s
established business activities makes confusing similarity more likely than
otherwise. DC Comics, et al. v. IQ Management Corp., FA 514423 (NAF Aug. 22.
2005) (the term “costume” is closely related to Complainant’s mark and fails to
adequately distinguish the domain name).
b. Respondent Has No Legitimate Interest in the Domain Name.
Several distinct grounds support the conclusion that the Respondent has no
legitimate interest in the Domain Name. First, Respondent is not authorized by
Complainant to use the Domain Name. "[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.” Guerlain S.A. v. Peikang, D2000-0055 (WIPO March 21, 2000).
Second, Respondent registered and uses the Domain Name to infringe Complainant’s
rights in its DISNEY Trademarks, to trade off Complainant’s goodwill. In
particular, the website to which the Domain Name directs Internet users offers
accommodations near Kissimmee, Florida, near the world-famous Walt Disney World
Resort. Respondent profits from by redirecting to Complainant's competitors
traffic otherwise intended for Complainant by redirecting them to a website
which offers accommodation unrelated to and unapproved by Complainant. Instead
of a true “Disney Vacation” the Internet user is offered accommodations located
near the Walt Disney World resort. Previous panels convened pursuant to the UDRP
have found this does not constitute a legitimate use. See, for example, Disney
Enterprises, Inc. v. My Disney Vacation FA553392 (NAF Oct. 18, 2005); Disney
Enterprises, Inc. v. McSherry FA 154589 (NAF June 17, 2003).
Thus, Respondent’s use of the Domain Name does not and cannot constitute a bona
fide offering of goods or services. Madonna Ciccione a/k/a Madonna v. Dan Parisi,
et. al., D2000-0847 (WIPO October 12, 2000) (“use which intentionally trades on
the fame of another cannot constitute a ‘bona fide’ offering of goods and
services”); Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO March 6, 2001)( “bona
fide use does not exist when the intended use is a deliberate infringement of
another’s rights”). Complainant has not authorized Respondent to use its
trademarks or to seek the registration of any domain name incorporating the
marks. Respondent must have known when selecting the disputed Domain Name that
the public would incorrectly associate it with Complainant and Complainant’s
marks. In fact, given the distinctiveness and fame of the mark, there is no
plausible explanation for the Respondents’ registration of the Domain Name other
than to trade upon the goodwill the Complainant has developed in its marks.
Respondent had no legitimate interest in doing so. Universal City Studios, Inc.
v. HarperStephens, D2000-0716 (WIPO September 5, 2000).
Respondent is not and has not been commonly known by the disputed Domain Name.
Respondent does not use the trademarks to identify itself on its website or for
any other legitimate purpose. Respondent’s use of the trademark in its WHOIS
registration is an unauthorized use and, as such, insufficient to establish
legitimate interest in the Domain Name. Compaq Information Technologies Group,
LP v. Waterlooplein Ltd., FA0204000109718 (NAF May 29, 2002).
c. Respondent Registered and Uses the Domain Name in Bad Faith.
Respondent’s registration and use of the Domain Name separately meets the bad
faith 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.
In particular, Respondent offers accommodations (on a commercial basis) located
at Kissimmee, Florida, near the Walt Disney World Resort. By using the disputed
Domain Name to direct Internet traffic to websites other than those owned by
Complainant, Respondent is trading on the value of the mark established by
Complainant. Such a use constitutes bad faith. Disney Enterprises, Inc. v.
McSherry , supra, (bad faith use of the domain name Disney Vacation Villas by
commercial use of site to sell vacation rentals unaffiliated with Complainant
owner of the DISNEY trademark).
Due to the similarity of the Domain Name with the Disney Trademarks, along with
its long-established and widespread use and registration of the DISNEY
Trademarks, Respondent clearly knew of Complainant’s marks before registering
the Domain Name. Choice Hotels International, Inc. v.Dinoia, infra (Respondent’s
knowledge of Complainant’s trademark can be inferred from reading the website on
which references to Complainant’s trademarks appear); FNAC v. SZK.com,
D2004-0413 (WIPO July 26, 2004)(bad faith established by knowledge of
Complainant’s trademark which can be inferred from fame of the trademark).
Muppet Holding Company LLC v. Brown FA 518373 (NAF Aug. 26, 2005) (fame of
Complainant’s mark, its registration with the USPTO and the obvious link between
Complainant’s mark and the content of Respondent’s website all suggest that
Respondent had both actual and constructive knowledge of Complainant’s rights in
the mark.)
By registering the Domain Name with actual knowledge of Complainant’s marks,
Respondent acted in bad faith by breaching its registration contract with the
registrar because it falsely represented that its registration of the Domain
Name did not infringe the legal rights of any third party. Thus, the
registration constituted bad faith under the UDRP. See Google Inc. v.
wwwgoogle.com, D2000-1240 (WIPO November 9, 2000).
Respondent also evidences bad faith in its failure to cease using the website or
to respond to Complainant’s demands that it cease and desist from his wrongful
use of the Domain Name. See Exhibit I (demand letter); RRI Financial Inc. v. Ray
Chen, D2001-1242 (WIPO December 11, 2001), holding that a failure to respond to
cease and desist demands is a factor supporting a finding of bad faith.
B. Respondent
Respondent’s letter of objection said:
“I am writing in reference to the use of the domain name being used by our
company www.selectdisneyvacations.com and the complaint from the Disney
Corporation. I would like to apologize for the delay in responding as I have
been in the UK and with the holiday season have been unable to respond sooner.
Firstly I would like to bring to your attention that we have changed the use of
this domain immediately on receiving the Complaint Notification, the site is now
under www.selectfloridavacation.com but due to advanced marketing and the way
the search engines promote our web site the domain is still active diverting the
traffic. When the domain was originally purchased through networks solutions I
really didn’t believe and still feel we have done nothing wrong.
We are a small company serving private investors with the management of vacation
homes around the Kissimmee area. Part of our function is rent the homes to
people wanting to visit the area on vacation. Our clients come for a number of
reasons including visiting the attractions in the area as well as business
functions at the convention center and the coast.
When Disney first made contact with us asking us to remove certain items from
the website this was immediately done for them. There are a large number of
Companies that are using Disney in their domain names together with other trade
mark protected items. We have always tried not to offend Disney with anything
that may conflict with their trademarked products.
We do not want to and cannot fight Disney on this complaint but would ask for
their compassion on allowing us to carry on using the domain until the end of
April and then we would cease to use the name there afterwards.”
FINDINGS
The domain name will be transferred because:
(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.
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.
The Panel will not be used as a forum to conduct settlement negotiations between
the parties. Those should have occurred before this proceeding was brought or
outside this proceeding. The Panel was asked to make a ruling and it will do so.
Panels do not act as mediators.
Identical and/or Confusingly Similar
Complainant has established rights in the DISNEY mark pursuant to Policy
¶4(a)(i) through registration with the USPTO. See Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's
federal trademark registrations establish Complainant's rights in the BLIZZARD
mark.”); see also 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 [or] have acquired secondary meaning”).
The domain name incorporates the entirely of Complainant’s registered and
distinctive trademark. The addition of the top-level domain “.com” is irrelevant
in determining whether the domain name is confusingly similar to Complainant’s
mark. See Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr.
27, 2000) (holding that the domain name <robohelp.com> is identical to the
complainant’s registered ROBOHELP trademark, and that the "addition of .com is
not a distinguishing difference"); see also Busy Body, Inc. v. Fitness Outlet
Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic
top-level domain (gTLD) name ‘.com’ is . . . without legal significance since
use of a gTLD is required of domain name registrants").
Likewise the addition the common words “select” and “vacations” does not
sufficiently differentiate this domain name. Complainant actually sells
vacations similar (but not identical) to the ones Respondent is selling. The
parties certainly are in direct competition, especially from Respondent’s
viewpoint. Confusion is inevitable.
The Panel finds Policy ¶4(a)(i) satisfied.
Rights or Legitimate Interests
Complainant asserts
Respondent does not have rights or legitimate interests in the <SelectDisneyVacations.com>
domain name. When a complainant establishes a prima facie case pursuant to
Policy ¶4(a)(ii), the burden shifts to the respondent to prove that it has
rights or legitimate interests. Respondent agrees it has no rights to the Disney
mark.
Respondent is not commonly known by the <SelectDisneyVacations.com> domain name.
Respondent has not established rights or legitimate interests in the disputed
domain name pursuant to 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 Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat.
Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because
respondent is not commonly known by the disputed domain name or using the domain
name in connection with a legitimate or fair use); see also Hartford Fire Ins.
Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that
the respondent has no rights or legitimate interests in domain names because it
is not commonly known by the complainant’s marks and the respondent has not used
the domain names in connection with a bona fide offering of goods and services
or for a legitimate noncommercial or fair use).
The Panel finds Policy ¶4(a)(ii) satisfied.
Registration and Use in Bad Faith
Given the fact the Respondent:
1. had no rights to the Disney mark when it registered the domain name and knew
it;
2. has no rights to the domain name now and knows it;
3. wishes to continue trading under the domain name until it expires, making a
profit by using Complainant’s registered trademark;
it is clear Respondent registered and uses the domain name in bad faith.
The Panel finds Policy ¶4(a)(iii) satisfied.
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 <selectdisneyvacations.com> domain name be
TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: January 24, 2006