NATIONAL ARBITRATION FORUM

DECISION

Disney Enterprises, Inc. v. Dayanand Kamble

Claim Number: FA0702000918556

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, USA. Respondent
is Dayanand Kamble (“Respondent”), Kranti Chawl, Pragati Society, Near Telgu
Church, Link Road, Goregoan (W), Mumbai 400 053, IN.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <disneycomics.com>, registered with Lead
Networks Domains Pvt. Ltd.

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.

Richard Hill as Panelist.

PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 15, 2007; the National Arbitration Forum received a
hard copy of the Complaint on February 16, 2007.

On February 20, 2007, Lead Networks Domains Pvt. Ltd. confirmed by e-mail to
the National Arbitration Forum that the <disneycomics.com> domain name is
registered with Lead Networks Domains Pvt. Ltd. and that the Respondent is the
current registrant of the name. Lead Networks Domains Pvt. Ltd. has verified that
Respondent is bound by the Lead Networks Domains Pvt. Ltd. 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 February 22, 2007, a Notification of Complaint and Commencement of

Administrative Proceeding (the “Commencement Notification”), setting a
 deadline of March 14, 2007 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@disneycomics.com by e-mail.

A Response was received electronically before the deadline for Response, but the
National Arbitration Forum did not receive a hard copy of the Response until after
the deadline. As a result, the Response has been deemed deficient pursuant to
Supplemental Rule 5(a).

An Additional Submission was received from Complainant on March 19, 2007.

The Additional Submission was compliant with Supplemental Rule 7.

On March 19, 2007, pursuant to Complainant’s request to have the dispute

decided by a single-member Panel, the National Arbitration Forum appointed
Richard Hill as Panelist.

RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to
Complainant.

PARTIES’ CONTENTIONS
A. Complainant

Complainant Disney Enterprises, Inc. (“Disney” or “Complainant”) has been for

many years the owner of hundreds of registrations for the DISNEY trademark (the
“Trademark”) and other trademarks in countries all over the world (collectively
the “Trademarks”). For decades, Complainant, or its predecessor in interest, has
continuously used and applied the Trademarks for a variety of goods and services.

The Trademark is so widely accepted in the mind of the general public that the
Trademark has become unquestionably famous and distinctive and has acquired
secondary meaning and distinctiveness throughout the United States and around
the world.

The disputed domain name is confusingly similar to the Trademark, as it

incorporates the Trademark in its entirety with only the addition of a generic word
“comics.”

Several distinct grounds support the conclusion that Respondent has no legitimate
interest in the Domain Name. First, Respondent is not authorized by Complainant
to use the Domain Name.

Further, Respondent’s use of the domain name does not constitute a bona fide
offering of goods or services. See 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 names incorporating the
Trademark, Trademarks, or any of them. Respondent must have known when it
selected the Domain Name that the public would incorrectly associate it with
Complainant’s marks. In fact, given the distinctiveness and fame of the
Trademark, specifically, there is no plausible explanation for Respondent’s
registration of the Domain Name other than to trade upon the goodwill
Complainant has developed in its marks. Madonna Ciccione a/k/a Madonna,
supra. Respondent had no legitimate interest in registering the Domain Name.

Lastly, Respondent is not and has not been commonly known by the Domain
Name. Respondent does not use the Trademark to identify itself on its website or
for any other legitimate purpose.

Respondent’s registration and use of the Domain Name meets the bad faith
elements set forth in Section 4(b)(i) of the UDRP. First, the fame of the
Trademark combined with widespread marketing of Complainant’s goods and
services and the registration of the Trademark put Respondent on notice of
Complainant’s Trademark. The Trademark is so internationally distinctive and
famous Respondent must have had actual knowledge of the Trademark prior to
the Domain Name’s registration. Also, use of the trademarks DISNEY and
UNCLE SCROOGE on the website to which the Domain Name directs Internet
users demonstrates actual knowledge of Complainant’s Trademarks.

Respondent’s registration and use of the Domain Name also 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, while
offering non-Disney branded merchandise through the website. Warner Bros.
Entertainment Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding
that the respondent’s reliance on confusion for commercial gain constitutes bad
faith). By using the disputed Domain Name and diverting Internet traffic to
websites other than those owned or otherwise approved by Complainant,
Respondent is trading on the value of the Trademarks established by
Complainant.

B. Respondent

Respondent denies each and every allegation, submission and contention in the
Complaint.
Respondent alleges that the Complaint suffers from gross delay and laches and
therefore on this ground alone the same is liable to be and should be dismissed.

He further submits that Complainant has filed the Complaint so that Respondent
succumb to the illegal and unreasonable demands of Complainant and therefore
Complainant has not approached this Forum with clean hands and therefore no
relief, much less, equitable be granted to the Complaint and on this ground alone
the same is liable to be and the case should be dismissed.

However, without prejudice to what is stated hereinabove and at the further

outset, and without prejudice to his rights in the disputed domain name,
Respondent offers to transfer the domain name to Complainant on payment of the
out of pocket expenses of US$ 296.95. Respondent states that he is well within
his rights as per the UDRP ¶ 4(b)(i) to ask for out of pocket expenses. If
Complainant is unwilling to pay this amount then on this ground alone the
Complaint is liable to be dismissed.

Further, Respondent denies that he is aware of the various trademarks of

Complainant and further denies that Complainant is entitled to the disputed
domain name. That domain name consists of 15 letters. Out of the 15 letters
Complainant is claiming a trademark to 6 letters. The balance of convenience is
in favour of Respondent that there are 9 letters which do not consists of the
trademark of Complainant, hence Complainant should not be entitled to the
domain name. The domain cannot be said to be similar or confusingly similar to
the trademark of Complainant. On this ground alone the same is liable to be and
should be dismissed.

Respondent states that he has legitimate interest in the disputed domain name as
he had paid for it and has renewed the domain from time to time. He is entitled to
the domain name and has rights in the domain and no one can claim them until he
assigns the rights to the domain to the any person.

Further, Respondent states that he has not registered the domain for selling it to
Complainant or for extracting money from Complainant for the said domain in
excess to the out of pocket expenses for the said domain name. Hence it cannot
be said that he is using the domain in bad faith.

C. Additional Submissions

According to Complainant, Respondent admits all elements of Disney’s claim in

his Response. His attempt to inject irrelevant and/or unsupported argument in
opposition to Disney’s claim should be rejected as i) the purported affirmative
defense of laches does not apply in law or in fact, and, ii) bad faith is not only
effectively admitted by failure to contradict facts adduced in support of Disney’s
petition, they are underscored by a further demand for payment exceeding any
documented out of pocket costs.
 According to Complainant, the doctrine of laches has been held to be improper for
complaints under the UDRP, and regardless, would not apply in this particular
instance. Many decisions state uncertainty as to whether the doctrine even applies
to these proceedings. See, e.g., Kevin Spacey v. Alberta Hot Rods, FA 114437
(Nat. Arb. Forum August 1, 2002); The State Bar of California v.
eWebNation.com, Inc., FA 097137 (Nat. Arb. Forum June 14, 2001). A few panel
decisions have flatly rejected the use of laches, and some have rejected it where
all three elements of the Policy are met. See United States Office of Personnel
Management v. MS Technology Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003)
(citing E.W. Scripps Co. v. Sinologic Indus., D2003-0447 (WIPO July 1, 2003);
Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7,
2002). Thus, Respondent’s argument is inapplicable in this context.

In addition to the above, Disney’s last letter to Respondent was dated December
15, 2006. This proceeding was initiated in February of 2007. As the doctrine of
laches requires knowledge, and Respondent cannot show Disney’s knowledge of
the infringement prior to the December 15, 2006 letter, a mere two months should
not be considered an unreasonable delay despite Respondent’s unfounded
contentions.

According to evidence submitted by Complainant, Respondent had previously

sought an amount above out of pockets costs for transfer of the disputed domain
name. As stated in the Response, Respondent now seeks more than double that
amount for the said transfer, without justification, and without supporting
documentation, further evidencing bad faith.

Further, despite being on notice of the infringing nature of the website to which
the Domain Name directs, Respondent continues to park unauthorized advertising
links utilizing some of Disney’s most famous trademarks, including DISNEY,
MICKEY MOUSE, DONALD DUCK, and UNCLE SCROOGE. Respondent’s
behavior evidences not only Respondent’s knowledge of Disney’s Trademarks,
contrary to his assertions, but also further highlights Respondent’s bad faith in
this matter.

FINDINGS
Complaint owns the famous mark DISNEY.

Respondent registered and is using the disputed domain name to point to a web
site that offers advertising links and products, some related to Complainant’s
mark and some unrelated.

Respondent does not have any license or other agreement to use Complainant’s
famous mark.

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.

However, before discussing the merits, the Panel will deal with two procedural
issues:

a. The formal deficiency in the Response

b. Respondent’s allegation that the Complaint should be dismissed because it
is tardy or under the theory of laches.

Formal deficiency in the Response

The Forum has determined that Respondent has submitted a deficient Response
according to Supplemental Rule 5(a), because the Forum did not receive a hard
copy of the Response until after the deadline for Response. The Panel may still
consider the late Response in addition to materials timely received but has no
obligation to consider it in light of its deficient nature. See Bd. of Governors of
the Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (finding that a
panel may consider a response which was one day late, and received before a
panelist was appointed and any consideration made); see also Clear!Blue
Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Feb. 28, 2007)
(deciding to consider the respondent’s response even though it was deficient
because it provided useful information to the panel in making its decision).

As in the case cited above, the Panel chooses to admit the Response.

Alleged tardiness and laches

As Complainant correctly points out, previous Panels have found that the doctrine
of laches does not apply to UDRP cases. Indeed, subtle or complex questions of
national law are best handled by the competent national courts, not by Panels
constituted under the Policy.
Therefore, the Panel decides to proceed with this decision despite Respondent’s
claims of delay. See Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat.
Arb. Forum Feb. 13, 2006) (finding that the laches defense was inappropriate
under the Policy and that the time frame within which the complainant brought
the proceeding was of no consequential value); see also Disney Enters. Inc. v.
Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (“Respondent’s efforts at
arguing related equitable defenses such as estoppel and acquiescence are equally
misplaced as these legal arguments are not contemplated by the Policy.
Moreover, recognition of these arguments in accordance with Respondent’s
desires requires the Panel to make a legal determination regarding the continuing
validity of Complainant’s DISNEY mark. Such action is beyond the scope of the
UDRP proceeding and if Respondent desires such an outcome it should avail
itself of the proper judicial proceedings by which such a result might be
accomplished.”).

Identical and/or Confusingly Similar

The disputed domain name is obviously confusingly similar to Complainant’s

famous mark DISNEY, in the sense of the Policy. Contrary to what Respondent
argues, the relative lengths of various character strings in the disputed domain
name are not a determining factor when assessing the issue of confusing
similarity. See Disney v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003)
(finding the <disneyvacationvillas.com> domain name to be confusingly similar
to Complainant’s DISNEY mark because it incorporated Complainant’s entire
famous mark and merely added two terms to it); see also Google Inc. v. Xtraplus
Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain
names were confusingly similar to Complainant’s GOOGLE mark where the
respondent merely added common terms such as “buy” or “gear” to the end).

Rights or Legitimate Interests

Complainant provides evidence that Respondent’s website at the disputed domain

name contains links such as “Comic Books,” “Disney Comic Books,” and
“Scrooge McDuck Comic Books” and appears to be a pay-per-click website
where Respondent earns click-through fees for each consumer it diverts to other
websites.

The Panel finds that Respondent is redirecting Internet users interested in

Complainant’s products and services to its own website for commercial gain and
that such use does not fall within the parameters of a bona fide offering of goods
or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See The Royal Bank of Scot. Group v. Demand
Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation
of a commercial web directory displaying various links to third-party websites
was not a use in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to
 Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for
each consumer it redirected to other websites); see also Persohn v. Lim, FA
874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not
using a disputed domain name in connection with a bona fide offering of goods or
services or a legitimate noncommercial or fair use by redirecting Internet users to
a commercial search engine website with links to multiple websites that may be of
interest to the complainant’s customers and presumably earning “click-through
fees” in the process).

Registration and Use in Bad Faith

Respondent’s assertion that he was unaware of Complainant’s famous marks is

contradicted by Respondent’s own website, which features those marks
prominently. Thus, Respondent’s actions show that his submissions to the panel
are false or misleading which is, in and of itself, an indication of bad faith in the
sense of the Policy.

Further, it is difficult to conceive of any possible bona fide use of Complainant’s

famous mark (unless of course there is a license to use such a mark). Therefore,
any use of Complainant’s mark is likely to be, prima facie, in bad faith.

And indeed Respondent’s actual use of the disputed domain name (as noted
above) is clearly not bona fide, because Respondent is operating what appears to
be a pay-per-click website at the disputed domain name. This indicates that
Respondent has registered and is using the disputed domain name to take
advantage of the confusing similarity between the disputed domain name and
Complainant’s famous DISNEY mark in order to profit from the goodwill
associated with the mark in bad faith under Policy ¶ 4(b)(iv). See Zee TV USA,
Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the
respondent engaged in bad faith registration and use by using a domain name that
was confusingly similar to the complainant’s mark to offer links to third-party
websites that offered services similar to those offered by the complainant); see
also The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale,
FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of
the disputed domain names to maintain pay-per-click sites displaying links
unrelated to the complainant and to generate click-through revenue suggested bad
faith registration and use under Policy ¶ 4(b)(iv)).

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 <disneycomics.com> domain name be

TRANSFERRED from Respondent to Complainant.
 Richard Hill, Panelist
Dated: 27 March 2007

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