WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Disney Enterprises, Inc. and The Walt Disney Company Limited v. James West, Travel West

Case No. DEU2020-0011

1. The Parties

The Complainants are Disney Enterprises, Inc., United States of America (“United States”) and The Walt Disney Company Limited, United Kingdom, represented by Wang Law Corporation, United States.

The Respondent is James West, Travel West, Ireland.

2. The Domain Name, Registry and Registrar

The Registry of the disputed domain name <disneyholidays.eu> is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the disputed domain name is GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2020. On July 10, 2020, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On July 13, 2020, the Registry transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).

In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 24, 2020. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was September 4, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 7, 2020.

The Center appointed Jonas Gulliksson as the sole panelist in this matter on September 22, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the ADR Rules, Paragraph B(5).

4. Factual Background

The Complainant is a leading producer of children’s entertainment good and services such as movies, television programs, books, and merchandise, and also owns and operates theme parks, hotels, resorts and cruise lines throughout the world. The Complainant Disney Enterprises, Inc. is the proprietor of numerous trademark registrations around the world for the word mark DISNEY, inter alia, United States trademark reg. No. 1162727, registered July 28, 1981 for goods in class 16; Irish trademark reg. No. 70380, registered January 11, 1965 for goods in class 9; and European Union trademark reg. No. 000186569 registered January 19, 1999 for goods and services in classes 3, 6, 8, 9, 11, 12, 14, 15, 16, 18, 20, 21, 24, 25, 26, 27, 28, 29, 30, 32, 35, 38, 41, and 42.

The disputed domain name was registered on April 25, 2013 and does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant mainly alleges the following.

The Complainant Disney Enterprises, Inc. owns rights in a variety of trademarks registered in the United States and various jurisdictions around the world, including the registrations mentioned above under section 4.

As a result of the Complainant’s extensive use and promotion of the trademark DISNEY, the trademark has acquired extensive goodwill, considerable value, and is well known to the consuming public as identifying and distinguishing the Complainant, its affiliates and/or licensees as the source of the high quality merchandise and services to which it is applied.

The disputed domain name was registered 48 years after the above-mentioned Irish trademark registration and 13 years after the above-mentioned European Union trademark registration.

The disputed domain name uses the Complainant’s mark in its entirety and merely adds the dictionary word “holidays”. The disputed domain name is virtually identical to the Complainant’s own domain names <disneyholidays.co.uk> and <disneyholidays.com>.

When the “.eu” suffix and dictionary word is excluded, the disputed domain name includes the Complainant’s registered and famous trademark. The disputed domain name is therefore confusingly similar to the Complainant’s trademark.

The Respondent has no legitimate interest in the disputed domain name. There is no relationship between the Complainant and the Respondent giving rise to any license, permission, or other right by which the Respondent could own or use any domain name incorporating the Complainant’s trademark and the Complainant has not given authorization or consent of any form to the Respondent to use the Complainant’s trademark within the disputed domain name. The disputed domain name incorporates the Complainant’s DISNEY trademark, and specifically targets the Complainant and its well-known businesses despite the Respondent having no connection with the Complainant.

The Respondent has not used the disputed domain name in good faith in association with any goods, services or business. The disputed domain name resolves to an inactive page not licensed or approved by Complainant. In fact, Wayback Machine indicates that in the span of more than six years since registration, the disputed domain name was never used and/or resolved to a page stating “Sorry! This site is not currently available.” The Respondent’s passive holding of the domain name for over six years evidences a lack of legitimate rights.

The disputed domain name was not used in good faith by the Respondent, nor did the Respondent have rights in the trademark. The Respondent did not act in good faith in using the trademark when registering the disputed domain name. Where, as here, the Complainant’s trademark is so well known and recognized, there simply can be no legitimate use of the trademark by the Respondent.

The disputed domain name is further not a name, legal name, surname or other reference by which the Respondent is commonly identified.

The disputed domain name was registered, and is being used, in bad faith. The Complainant’s trademark is so internationally distinctive and famous that the Respondent must have had actual knowledge of the trademark prior to the registration of the disputed domain name. It is the Complainant’s contention that the Respondent knowingly, willfully and in bad faith adopted the Complainant’s trademark as the disputed domain name with the intention of relying on the goodwill and excellent reputation enjoyed by the Complainant’s trademark for the purpose of disrupting the business of the Complainant.

The disputed domain name begins with and incorporates the trademark in its entirety. It is virtually identical to the Complainant’s <disneyholidays.co.uk> and <disneyholidays.com> domain names. The Respondent is confusing consumers to believe, reasonably so, that the disputed domain name is part of the Complainant’s portfolio of genuine websites, thereby disrupting business to the Complainant’s official websites. Moreover, the Respondent’s period of non-use of the disputed domain name of more than six years also evidences bad faith. Finally, bad faith can also be found by the Respondent’s readiness to sell the disputed domain name in excess of its out of pocket costs. Annex 7, Exhibit 1, to the Complaint contains copies of correspondence evidencing the Respondent’s willingness to sell the disputed domain name in excess of USD 8,500. Given the Respondent’s willingness to sell, along with the passive holding of the disputed domain name for over six years, it is reasonable to infer that the disputed domain name was registered or acquired primarily for the purpose of selling, renting or otherwise transferring the domain name to the holder of a name in respect of which a right is recognized or established by national and/or European Union law.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Article 21(1) of Commission Regulation (EC) No. 874/2004 and Paragraph B(11)(d)(1) of the ADR Rules requires that the Complainant proves that:

(i) The domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or European Union law and; either

(ii) The domain name has been registered by the Respondent without rights or legitimate interests in the name; or

(iii) The domain name has been registered or is being used in bad faith.

A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or European Union law

The Complainant Disney Enterprises, Inc. is the proprietor of trademark registrations for the word mark DISNEY, inter alia, the registrations mentioned above under section 4. The disputed domain name contains the trademark in its entirety together with the word “holidays”, which is a descriptive word for tourism-related services. In this context the Panel notes that the Complainant’s European Union trademark with reg. no. 000186569 is registered for, inter alia, temporary accommodation, services of hotels, restaurants and cafés, camping, services of holiday camps, and reservation (rental) of rooms in class 42.

It is well established among Uniform Domain Name Dispute Resolution Policy (“UDRP”¹ ) panels that the generic Top-Level Domain (“gTLD”) or country code top level domain (“ccTLD”) such “.eu” in this case are not distinguishing.

In addition, as stated at section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity. The assessment is not different under the ADR Rules. The Panel finds that the addition of the word “holidays” does not prevent a finding of confusing similar and that DISNEY is the distinctive element.

In the Panel’s opinion the disputed domain name is therefore confusingly similar to the Complainant’s trademark and the Panel consequently finds that the first element of Paragraph B(11)(d)(1) the ADR Rules is fulfilled.

B. Rights or Legitimate Interests

The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not proven otherwise.

The Panel therefore finds the requirements of the second element of the Paragraph B(11)(d)(1) the ADR Rules fulfilled.

C. Registered or Used in Bad Faith

The Complainant’s registered trademarks predate the disputed domain name. In this context it is also relevant that the disputed domain name is virtually identical to the Complainant’s own domain names <disneyholidays.co.uk> and <disneyholidays.com>. The Complainant asserts that its trademark DISNEY is well known and, considering the absence of a reply from the Respondent and in accordance with Article 22(10) of Commission Regulation (EC) No. 874/2004, the Panel accepts this claim. In the Panel’s opinion the disputed domain name has been registered with knowledge of the Complainant and its trademarks.

There are also circumstances indicating that the disputed domain name has not been used in a relevant way from the date of registration and that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant.

The Panel consequently finds that the disputed domain name was registered and is being used in bad faith and the third element of the Paragraph B(11)(d)(1) the ADR Rules is fulfilled.

7. Decision

For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name <disneyholidays.eu> be transferred to The Walt Disney Company Limited ² .

Jonas Gulliksson
Sole Panelist
Date: October 2, 2020

¹ Considering the substantive similarities between the ADR Rules and the UDRP, the Panel also refers to UDRP case law and analysis, where appropriate.
² The Second Complainant is a private limited company registered in the United Kingdom and satisfies (at least until December 31, 2020) the general eligibility criteria for registration set out in Paragraph set out in Paragraph 4(2)(b) of Regulation (EC) No 733/2002 as amended by articles 20 and 22 of the Regulation (EU) 2019/517