Nominet UK Dispute Resolution Service

DRS 05890

DISNEY ENTERPRISES, INC.

v.

DEAN CALLAWAY

Decision of Independent Expert

1.	Parties: 

Complainant:		Disney Enterprises, Inc.
Country:		US
Represented by: 	Safenames Limited

Respondent:		Dean Callaway
Country:		GB

2.	Domain Names:

(1) waltdisney.co.uk; (2) disneyland-resort.co.uk (“the Domain Names”)

3.	Procedural Background:

The Complaint was received by Nominet electronically on 18 July, 2008 and in hardcopy on 21 July, 2008.  Nominet checked the complaint and, following completion of an outstanding validation formality, duly informed the Respondent, by both letter and by e-mail on 21 July, 2008, noting that the Dispute Resolution Service had been invoked and that the Respondent had 15 days (until 12 August, 2008) to submit a Response.  No Response was received.  On 14 August, 2008, Nominet informed the Complainant accordingly, noting that mediation was not available in these circumstances, and inviting the Complainant to pay the fee to obtain an Expert Decision pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy (“the Policy”). The fee was duly received by Nominet on 20 August, 2008.

Nominet then invited the undersigned, Keith Gymer (“the Expert”), to provide a decision on this case and, following confirmation to Nominet that the Expert knew of no reason why he could not properly accept the invitation to act in this case and of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality, Nominet duly appointed the undersigned as Expert with effect from 29 August, 2008.

As this Complaint was filed on 18 July, 2008, it is to be considered under Version 2 of the DRS Policy and Procedure, rather than Version 3 (which applies to new Complaints filed on or after 29 July, 2008. References to the DRS Policy and Procedure in this Decision are therefore to Version 2.

4.	Outstanding Formal/Procedural Issues (if any):

None.

5.	The Facts:

The Complainant, Disney Enterprises, Inc., is part of the Walt Disney group of companies and holds various trade mark and domain registrations for the Disney businesses.  Walt Disney was the world-famous animator who originally developed the Disney entertainment businesses, which include the Disneyland and Disney World resorts and theme parks well-known around the world. 

The Respondent, Dean Callaway, is a UK-based private individual.

From the Nominet WHOIS records, the Domain Names were both registered in the name of Dean Calloway as registrant; disneyland-resort.co.uk as of 16 June, 2004, and waltdisney.co.uk as of 31 July, 2005.

6.	The Parties’ Contentions:

Complainant:

The Complainant has asserted that:

1.	The Complainant has Rights in respect of a name or mark which is identical or similar to each of the Domain Names (Policy Paragraph 2a(i)); and 
2.	Each of the Domain Names, in the hands of the Respondent, is an Abusive Registration (Policy Paragraph 2a(ii)).

In support of its case, the Complainant says:

The Complainant is the proprietor of numerous registered Trade Marks for “WALT DISNEY” and “Disneyland” respectively. These include UK Trade Mark No. 902719 for “WALT DISNEY”. This mark is in Nice Classes 9 and 16. This was filed on 08 December 1966. The Complainant is also the proprietor of UK Trade Mark No. 1412205 which was filed on 25 January 1990 and subsequently registered on 31 May 1991. This mark is within Nice Class 9. [Details at Exhibit 1 to the Complaint] 

The Complainant also possesses registered Trade Marks that consist of “DISNEY LAND”. UK Trade Mark No. 638207 was filed on 26 June 1945 and is within Nice Class 28. In addition to the above mark the Complainant is also the proprietor of UK registered Trade Mark No. 915255. This Trade Mark is within Nice Classes 9 and 28, was filed on 02 October 1967. [Details at Exhibit 2 to the Complaint]

The Complainant its affiliates, subsidiary or related organisations own domain registrations which incorporate “WALT DISNEY” and including; waltdisney.com, waltdisney.net, waltdisney.org, waltdisney.at, waltdisney.com.au, waltdisney.ch, waltdisney.cn, waltdisney.de, waltdisney.dk and waltdisney.fr. [WHOIS records at Exhibit 3 to the Complaint] 

The Complainant its affiliates, subsidiary or related organisations also owns numerous domain names that incorporate “DISNEYLAND” including; Disneyland.com, Disneyland.mobi, Disneyland.de, Disneyland.fr and Disneyland.com.au. [WHOIS records at Exhibit 4 to the Complaint]. 

The vast majority of these domain names are active and resolving to either national Disney Content or the Walt Disney Museum, in respect of the gTLD domains. Screen Captures of the content of these websites [we]re provided alongside the relevant Whois information. 

In The Danish Dairy Board v Chao Investments case, DRS 05125 the expert determined that the actual use of two separate domain registrations which were similar to the domain name in dispute was sufficient to satisfy the threshold. 

Walt Disney is the iconic founder and creator of the Walt Disney Company and Disney Brand, who sadly passed away in 1966. He was responsible for the creation of popular fictional children’s animated characters such as Mickey Mouse. The fame and notoriety of Walt Disney has resulted in the creation of an online Encyclopaedia Britannica entry. The Disneyland resort (known as Disneyland) is a family resort located in Anaheim, California which first opened in 1955. This was a creation of Walt and Roy Disney and was the first of the successful chain of Disney themed and branded holiday destinations available to the public. Disneyland’s widespread reputation and fame also warranted an entry on Encyclopaedia Britannica. [Encyclopaedia Britannica entries for both Walt Disney and Disneyland Resort were provided within Exhibit 5 to the Complaint]. 

It is long established that when determining whether domain names are identical to a mark the suffix “.co.uk” can be disregarded, see Sante de Suisse (Australia) Pty Limited v. Bauhinia International DRS 02997. 

The domain name waltdisney.co.uk is identical to the Complainant’s registered Trade Marks for “WALT DISNEY” and their domain registrations, within the scope of paragraph 2(a)(i) of the Policy. 

The domain name Disneyland-resort.co.uk is identical to the Complainant’s Trade Mark Disney bar the addition of the generic dictionary term “resort” and the use of a hyphen. 

The Expert in the HQUK Ltd. -v- Headquarters DRS Number 01405 determined that the addition of any punctuation marks to a domain name is not sufficient in itself to render the domain distinctive. In the Nokia Corporation v Andrew Stone [2001] DRS 68 case the Expert stated that the addition of a three letter abbreviation which describes features closely associated with the products you can determine a finding of similarity for the purposes of paragraph 2(a)(i) of the Policy. The dictionary term “Resort” is descriptive of what “Disney Land” actually is and is a term that is generally associated with the Complainant’s resort and does not distinguish the domain name from the Complainant’s mark. It has previously been established that for comparison purposes the incorporation of a third party’s Trade Mark in full in a domain name can be sufficient to satisfy the requisite element of “similarity”. The Expert in the EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc. WIPO Case No. D2000-0047 case stated, “When a domain name incorporates, in its entirety, a distinctive mark, that creates sufficient similarity between the mark and the domain name to render it confusingly similar.” 

The Complainant submits that the domain name Disneyland-resort.co.uk is confusingly similar to the Complainant’s mark “DISNEYLAND” in which the Complainant has rights. 

The registrant of both domain names is Dean Callaway. [Copies of the relevant Whois database results provided by Nominet were reproduced as Exhibit 6 to the Complaint]. 

Dean Callaway is not licensed or permitted to use the Complainant’s trade marks for the registration of the domain name nor did either party share a relationship that would give rise to such permission. The Respondent was not permitted to utilise the Complainant’s rights in on the content of the website. In addition to this it is further submitted that the Respondent is not known as “WALT DISNEY” or “DISNEYLAND RESORT.” UK Google search results provide no results that correspond to the Respondent. [The first page of results was provided as Exhibit 7 to the Complaint]. 

In addition to this UK and CTM Trade Mark database searches yield no results for either mark that relate to the Respondent. [The UK and CTM database results were provided within Exhibit 8 to the Complaint]. The Respondent was never authorised or permitted to utilise the Complainant’s registered marks. 

Currently the domain name waltdisney.co.uk resolves to an active website that consists of the Complainant’s home page for the Twilight Zone Tower of Terror ride, herein referred to as the Tower of Terror. [A screen capture of thewaltdisney.co.uk homepage was provided within Exhibit 9 to the Complaint]. The Tower of Terror is a theme park ride provided within the Complainant’s Disney themed parks. The ride has gained a Wikipedia entry, although the factual accuracy of the contents of said entry is disputable and not verified by the Complainant. [A copy of the Wikipedia entry was provided as Exhibit 10 to the Complaint]. 

The Respondent was at no point permitted to reproduce the Complainant’s authentic website on their webpage. The authentic Tower of Terror website is locatable here www.disneytowerofterror.com. [A screen capture of the Complainant’s Tower of Terror webpage was reproduced as Exhibit 11 to the Complaint]. 

The Respondent’s website is almost identical to the Complainant’s website bar a red band horizontally across the top of the page which contains sponsored links, which also directly refer to the Complainant. The Complainant submits that the Respondent is generating click through revenue through the use of the webpage and the domain name itself is a more sophisticated version of a Pay per click website with a limited number of sponsored link urls which an internet user may mistakenly believe are associate with the complainant. 

The Respondent’s use of the Complainant’s mark to promote his sponsored link listings and other organisations not endorsed or affiliated with the Complainant in any way, is disrupting the business of the Complainant within the scope of paragraph 3(a)(i)(C) of the Policy. The Respondent’s website is providing url listings for booking.com; floridatix.com, bookit.com, trv-prestige.com, discountorlandovacation.info, cash4later.com, which all appear to be endorsed, sponsored, affiliated or promoted by the Complainant which they are not. 

The domain name Disneyland-resort.co.uk is currently inactive and doesn’t resolve to any actual content. [A screen capture of the home page of the domain name was provided as Exhibit 12 to the Complaint]. 

This domain name bears no similarity to the Respondent’s name, Dean Callaway. The Respondent is an individual resident in the UK and is not known as “Disneyland Resort” and has no legitimate interest in the domain name and no bone fide reason why he would register the domain name. 

The Respondent registered both domain names as “blocking registrations” within the ambit of paragraph 3(a) (i) (B)of the Policy. The inactivity of the Disneyland-resort.co.uk domain name is supportive of the Complainant’s contentions that the domain name is a passive holding registration in the hands of the Respondent. The Respondent has no intention of providing any legitimate service from this website. Case law supports that inactivity can be indicative of bad faith (see Sybase, Inc. v. Analytical Systems, WIPO Case No. D2004-0360; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090.) 

The Respondent is using the domain name waltdisney.co.uk in a way which will have confused people or businesses into believing that the domain names are registered to, operated or authorised by or otherwise connected with the Complainant within the ambit of paragraph 3(a)(ii) of the Policy. Upon entering the site an internet-user will be confronted with what appears to be the authentic Twilight Zone Tower of Terror Disney website. The reproduction of the contents of the Complainant’s Tower of Terror website is without the Complainant’s consent. The Respondent has used the webpage to allow the user to believe that the website is authentic or legitimate. An internet user will believe that the website is legitimate and may consequentially click on the sponsored links displayed on the top of the webpage. There is no reference to the Complainant’s authentic website on either of the webpages provided by the Respondent or any notice that this website is not authentic or affiliated to Disney. 

There is no direct correlation or relationship between Dean Callaway and the Complainant; the Respondent has registered the domain names to take advantage of the fame and goodwill associated with the marks for his personal financial gain. This cannot constitute good faith use. 

The Respondent has engaged in a pattern of registrations which correspond to well known names or trade marks in which the respondent has no apparent rights and the domain names in question are part of this pattern. A PRSS search for all of the UK domain names owned by the Respondent reveals a further eight domain names which either wholly contain, contain in part or misspell well known brands and trademarks; crowneplazaed.co.uk, discountipods.co.uk, eurostar-tickets.co.uk, hanleyporsche.co.uk, kouni.co.uk, pspguide.co.uk, sonydvdplayer.co.uk, xboxreviews.co.uk. [Relevant Whois database results, screen capture and relevant registered trademark information was provided within Exhibit 13 to the Complaint]. 

The Respondent is a UK resident individual with no apparent connection or overt interest in the brands “ipod”, “eurostar” “Sony” “Xbox” “psp” or “crowne plaza”. These domain names were registered by the Respondent because of their notoriety and goodwill associated with their respective marks and to assist the Respondent in generating revenue. A number of these domain names are being warehoused and passively held by the Respondent. 

The Respondent is utilising the domain names in such a manner that is taking unfair advantage of the Complainant's rights. The Respondent registered the domain names in the knowledge of the brand and existence of the Complainant. The Respondent has purposefully placed sponsored links on the waltdisney.co.uk domain name utilising the Complainant’s mark to utilise the confusion caused to internet users to generate revenue for him. In the PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov, WIPO Case No. D2002 0562 case the Expert determined; “blatant appropriation of a universally recognized (sic) trade mark is of itself sufficient to constitute bad faith”. 

The Complainant respectfully submits that the registrations in the hands of the Respondent are abusive registrations within the scope of Para 2(a)(ii) of the Policy and they should be transferred to the Complainant.

Respondent:

The Respondent made no Response to the Complaint.

7.	Discussion and Findings:

General

Paragraph 2 of the Policy requires that, for the Complainant to succeed, it must prove to the Expert, on the balance of probabilities, both that it has Rights in respect of a name or mark which is identical or similar to each of the Domain Names; and that each of the Domain Names, in the hands of the Respondent, is an Abusive Registration as defined in Paragraph 1 of the Policy.

Complainant’s Rights

The Complainant in this case has asserted that it has rights in the names (1) WALT DISNEY and (2) DISNEYLAND, and that these names are each identical or similar to the respective Domain Name. 

The Complainant has provided examples of relevant longstanding UK trade mark registrations of these names and of its own corresponding domain name registrations in various jurisdictions.  The Expert has no doubt that the Complainant would be entitled to claim many more such rights around the world as a consequence of the undoubted worldwide renown of the Disney name and entertainment businesses, including the various Disneyland and Disney World resorts.  

The Domain Name waltdisney.co.uk incorporates the WALT DISNEY name and mark entirely. The Domain Name disneyland-resort.co.uk incorporates the name and mark DISNEYLAND in its entirety and the addition of “-resort” makes no distinctive difference – the designation “resort” is used by the Complainant and the public to refer to the Disneyland park(s).

Accordingly, for the purposes of the Policy, the Expert concludes that the Complainant does have Rights in each case in respect of a name or mark, which is similar to each of the respective Domain Names at issue in these proceedings.

Abusive Registration

The Complainant also has to show that each of the Domain Names is an Abusive Registration. Paragraph 1 of the Policy defines “Abusive Registration” as a Domain Name which either:

i.	was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights; OR

ii.	has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.

A non-exhaustive list of factors, which may be evidence that a Domain Name is an Abusive Registration are set out in Paragraph 3a of the Policy. Potentially relevant factors in the present case are as set out in Paragraph 3a(i) B & C:

B.	as a blocking registration against a name or mark in which the Complainant has Rights; or
C.	primarily for the purpose of unfairly disrupting the business of the Complainant.

And in Paragraphs 3a(ii), and (iii):

ii	Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.”
iii	The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent  is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern;

The factors listed in Paragraph 3 of the Policy are only intended to be exemplary and indicative.  They are not definitive. It is Paragraph 1 of the Policy, which provides the applicable definition as indicated above. 

The Court of Appeal, in its leading judgment in the “One In A Million” case (British Telecommunications plc & Others v. One In A Million Limited & Others, [1999] FSR 1), condemned the practice of misappropriating trade marks and names in which other parties have rights and registering them as domain names. Such practices have consistently been confirmed as unacceptable in many, many subsequent cases, and in many DRS Decisions.  

In the case of distinctive household names, the Court of Appeal considered that making an unauthorised registration of a domain name corresponding to such distinctive names could amount to a misrepresentation in itself.  In such cases, the use of such domain names would inevitably mislead and amount to passing-off. 

The Expert has no doubt that the names WALT DISNEY and DISNEYLAND may be considered famously distinctive, household names.

The potential for deception, misrepresentation and confusion arising from the unauthorised registration and use of the Domain Names waltdisney.co.uk and disneyland-resort.co.uk is obvious.

The evidence shows that the Domain Name waltdisney.co.uk in the present case has indeed been used in a manifestly misleading fashion, such that typing www.waltdisney.co.uk into a browser took the user to a page where genuine content from one of the Complainant’s own websites was framed under a strip of googlesyndication.com adverts, which do not appear on the genuine site, and which were presumably placed there, as the Complainant has asserted, with a view to generating potential click-through income for the Respondent.

It is also quite possible that the Respondent could or would have received emails sent by potential customers of the Complainant to email addresses <name>@waltdisney.co.uk, or <name>@disneyland-resort.co.uk, and which would have been intended for the Complainant.

On the evidence, which the Respondent has not challenged, the Respondent has knowingly taken the Complainant’s names and marks and used them in the Domain Names for the actual or intended purpose of diverting business from the Complainant and taking unauthorised and unfair advantage of the Complainant’s reputation and goodwill.

The Expert therefore has no hesitation in concluding that the Domain Names were registered and have been used by the Respondent in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights and that both are Abusive Registrations for the purposes of the Policy.

8.	Decision:

Having concluded that the Complainant has Rights in respect of a name or mark which is similar to each of the Domain Names and that the Domain Names, in the hands of the Respondent, are both Abusive Registrations, the Expert determines that the Domain Names, waltdisney.co.uk, and disneyland-resort.co.uk should be transferred to the Complainant.

September 11, 2008 
         Keith Gymer          Date