DisneyMetaverse.com: Cybersquatter lost #UDRP of infringing #domain

The Metaverse is all the rage but don’t go around registering domains that contain famous company names or their trademarks.

The Chinese registrant of the domain DisneyMetaverse.com was on the receiving end of a UDRP, after Disney Enterprises, Inc. filed it to usurp the domain.

DISNEY is a world famous trademark and Disney does intend to offer online experiences on the Disney Metaverse. The panelist pointed that out:

Complainant contends that Respondent must have had actual knowledge of Complainant’s mark prior to the disputed domain name’s registration because Complainant’s mark is so internationally distinctive and famous; and the disputed domain name is confusingly similar to the disputed domain name. The Panel infers that Respondent registered the disputed domain name with actual knowledge of rights in Complainant’s mark at the time of registering the disputed domain name due to the notoriety of Complainant’s mark and the fact that Respondent registered the disputed domain name comprising of ‘DISNEY’ and ‘METAVERSE’ after the announcement of Complainant’s well-publicized and new “metaverse” experience. Therefore, the Panel finds Respondent’s bad faith registration of the disputed domain name.

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

Disney Enterprises, Inc. v. chenghao chen

Claim Number: FA2111001973581

PARTIES

Complainant is Disney Enterprises, Inc. (“Complainant”), represented by Annie S. Wang of Wang Law Corporation, California, USA. Respondent is chenghao chen (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <disneymetaverse.com>, registered with NameSilo, LLC.

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.

Ho-Hyun Nahm, Esq. as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on November 16, 2021; the Forum received payment on November 16, 2021.

On November 16, 2021, NameSilo, LLC confirmed by e-mail to the Forum that the <disneymetaverse.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 November 18, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 8, 2021 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@disneymetaverse.com. Also on November 18, 2021, 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 December 14, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Ho-Hyun Nahm, Esq. 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

i) Complainant is a worldwide leading producer of children’s entertainment goods and services. Complainant has rights in the DISNEY mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,162,727, registered July 28, 1981). The disputed domain name is confusingly similar to Complainant’s DISNEY mark. Respondent incorporates the mark in its entirety and adds the generic term “metaverse” along with the “.com” generic top-level domain (“gTLD”).

ii) Respondent lacks rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name, nor did Complainant authorize Respondent to use the DISNEY mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent attempts to sell the disputed domain name.

iii) Respondent registered and used the disputed domain name in bad faith as Respondent attempts to sell the domain name and only registered the domain name after Complainant’s announcement of its new “metaverse” experience. Respondent had actual knowledge of Complainant’s rights in the DISNEY mark due to the longstanding use and fame of the mark in commerce.

B. Respondent

Respondent did not submit a Response in this proceeding.

FINDINGS

1. The disputed domain name was registered on April 9, 2021.

2. Complainant has established rights in the DISNEY mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,162,727, registered July 28, 1981).

3. Respondent registered the disputed domain name after the announcement of Complainant’s well-publicized and new “metaverse” experience.

4. The disputed domain name’s resolving webpage shows Respondent advertising that the disputed domain name is for sale.

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 and/or Confusingly Similar

Complainant claims to have rights in the DISNEY mark through its registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to show rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant has provided the Panel with a copy of its USPTO registration for the DISNEY mark (e.g. Reg. No. 1,162,727, registered July 28, 1981). Therefore, the Panel finds that Complainant has shown rights in the DISNEY mark per Policy ¶ 4(a)(i).

Complainant argues that the disputed domain name <disneymetaverse.com> is confusingly similar to Complainant’s DISNEY mark. Registration of a domain name that contains a mark in its entirety and adds a generic term and a gTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). Complainant argues that Respondent incorporates the mark in its entirety and adds the generic term “metaverse” along with the “.com” gTLD. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

Complainant argues Respondent lacks rights or legitimate interest in the disputed domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the DISNEY mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “chenghao chen” and there is no other evidence to suggest that Respondent was authorized to use the DISNEY mark or was commonly known by the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

Complainant further argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent attempts to sell the disputed domain name. Use of a disputed domain name to offer a domain name for sale is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Complainant has provided the Panel with a screenshot of the disputed domain name’s resolving webpage that shows Respondent advertising that the domain name is for sale. Therefore, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).

The Panel finds that the Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against the Respondent. As the Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name under Policy paragraph 4(a)(ii).

Registration and Use in Bad Faith

Complainant contends that Respondent must have had actual knowledge of Complainant’s mark prior to the disputed domain name’s registration because Complainant’s mark is so internationally distinctive and famous; and the disputed domain name is confusingly similar to the disputed domain name. The Panel infers that Respondent registered the disputed domain name with actual knowledge of rights in Complainant’s mark at the time of registering the disputed domain name due to the notoriety of Complainant’s mark and the fact that Respondent registered the disputed domain name comprising of ‘DISNEY’ and ‘METAVERSE’ after the announcement of Complainant’s well-publicized and new “metaverse” experience. Therefore, the Panel finds Respondent’s bad faith registration of the disputed domain name.

Next, Complainant contends that Respondent evidences bad faith in the fact that it registered the disputed domain name after the announcement of Complainant’s well-publicized and new “metaverse” experience. Registration of a domain name after an announcement by a complainant in order to preemptively register a domain name may be evidence of bad faith per Policy ¶ 4(a)(iii). See Atlantic Automotive Corp. v. michelle popp, FA 1787763 (Forum June 26, 2018) (finding bad faith where the respondent registered the <heritagehondabelair.com> and <heritagehondaofbelair.com> domain names in anticipation of the pending acquisition and rebranding of a car dealership, holding: “The Panel is of the view that the registration of a domain name in temporal proximity to a merger or acquisition involving Complainant and its associated marks supports a finding of bad faith.”). Complainant has provided the Panel with information pertaining to its announcement of its “metaverse” experience. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(i) and ¶ 4(a)(iii).

Finally, Complainant contends that bad faith is evidenced by Respondent’s attempt to sell the disputed domain name. Use of a domain name to offer a domain name for sale may be evidence of bad faith per Policy ¶ 4(b)(i). See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826(Forum July 5, 2018) (“The <directvgo.com> domain name redirects users to a third party website, it first states, via a link, that the <directvgo.com> domain name may be for sale. If the link is clicked, users are redirected to a page that states, “The owner of Directvgo.com has chosen to receive offer inquiries regarding this domain name.”). Complainant has provided the Panel with a screenshot of the disputed domain name’s resolving webpage that shows Respondent advertising that the disputed domain name is for sale. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(i).

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

Ho-Hyun Nahm, Esq., Panelist

Dated: December 16, 2021

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