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#Disney is closed but it still files #UDRPs for infringing #domain names

Catched.com

Disney might be closed for now, but its lawyers are still working full time.

The famous company with the famous trademark enforces it whenever possible, even though its parks are closed due to the Coronavirus pandemic, and Disney is losing billions of dollars in revenue.

A UDRP was filed against the domain name DisneyLimousineService.com which has been active as a business since 2006.

One might wonder why it took Disney 14 years to file this UDRP, but one thing is certain: You can’t incorporate famous trademarks such as DISNEY into your own service, even if you cater to the company’s visitors in Disney World, Florida.

Final decision: Transfer the domain DisneyLimousineService.com to the Complainant.

Disney Enterprises, Inc. v. Yasser Ali

Claim Number: FA2004001892666

PARTIES

Complainant is Disney Enterprises, Inc. (“Complainant”), represented by Annie S. Wang of Wang Law Corporation, California, USA. Respondent is Yasser Ali (“Respondent”), Florida, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <disneylimousineservice.com> (‘the Domain Name’), registered with GoDaddy.com, LLC.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

Dawn Osborne as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on April 17, 2020; the Forum received payment on April 17, 2020.

On April 21, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <disneylimousineservice.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On April 21, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 11, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@disneylimousineservice.com. Also on April 21, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

On May 15, 2020 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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

The Complainant’s contentions can be summarised as follows:

The Complainant and/or its affiliates is the owner of the mark DISNEY, registered, inter alia, in the USA for entertainment related goods and services since at least 1974.

The Domain Name registered in 2006 is confusingly similar to the Complainant’s mark incorporating it in its entirety and adding the generic term ‘limousine service’ and the gTLD .com which does not prevent said confusing similarity.

The Respondent does not have rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorised by the Complainant.

Respondent uses the Domain Name to resolve to a website which prominently features Complainant’s DISNEY mark along with the famous Disney World castle silhouette graphic, to promote Respondent’s unauthorized “chauffeured limo service”… “[F]or couples or families taking a Disney Cruise or luxury vacation with the Royal Caribbean” and “Visiting Disney World” and other transportation services not authorized by Complainant, including “Prom Limo in Orlando”, “Transportation to Port Canaveral”, “Orlando Limo Service”, “Corporate Limo Service” and others. Although the homepage to which the Domain Name resolves appears to be down currently, the secondary pages continue to be active and are used for promotion of Respondent’s services. Respondent’s use of the Domain Name does not and cannot constitute a bona fide offering of goods or services. It is registration and use in opportunistic bad faith diverting Internet users for commercial gain with actual knowledge of the Complainant and its rights.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

The Complainant and/or its affiliates is the owner of the mark, DISNEY, registered, inter alia, in the USA for entertainment related goods and services since at least 1974.

The Domain Name registered in 2006 has been used to offer limousine services not connected with the Complainant under its DISNEY mark and Disney World castle logo.

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.”

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.

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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

Identical or Confusingly Similar

The Domain Name consists of the Complainant’s DISNEY mark (which is registered, inter alia in USA for products and services relating to entertainment and has been used since at least 1974), the generic term ‘limousine service’ and the gTLD .com.

Previous panels have found confusing similarity when a respondent merely adds a generic term to a Complainant’s mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underling mark held by the Complainant). The Panel agrees that the addition of the generic term ‘limousine service’ to the Complainant’s mark does not prevent confusing similarity between the Domain Name and the Complainant’s trade mark pursuant to the Policy.

The gTLD .com does not serve to distinguish the Domain Name from the Complainant’s mark, which is the distinctive component of the Domain Name. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant’s red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).

Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose of the Policy to a mark in which the Complainant has rights.

As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.

Rights or Legitimate Interests

The Complainant has not authorised the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The use is commercial so cannot be legitimate noncommercial fair use.

The website to which the Domain Name redirects offers limousine services using the Complainant’s name and logo. It does not make it clear that there is no commercial connection with the Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. See Am. Intl Group Inc v Benjamin FA 944242 (Forum May 11, 2007) (finding that the Respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the Complainant’s business did not constitute a bona fide use of goods and services.)

As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.

Registration and Use in Bad Faith

In the opinion of the panelist the use made of the Domain Name in relation to the site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it offers limousine services under a Domain Name containing the Complainant’s DISNEY mark and the Complainant’s logo. The use of the Complainant’s word mark and logo shows that the Respondent was aware of the Complainant and its business, rights and services at the time of registration. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the web site and services offered on it likely to disrupt the business of the Complainant. See Asbury Auto Group Inc v Tex. Int’l Prop Assocs FA 958542 (Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith and use).

As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iv) and 4(b)(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 <disneylimousineservice.com> domain name be TRANSFERRED from Respondent to Complainant.

May 15, 2020, Panelist

Dated: Dawn Osborne


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