The Complainants are Disney Enterprises, Inc. of Burbank, California, United States of America (“US”) and The Walt Disney Company Limited of London, United Kingdom of Great Britain and Northern Ireland (“UK”) (hereinafter referred to as the “Complainant”), represented by Boehmert & Boehmert, Germany.
The Respondent is Stephan Huber of Regnitzlosau, Germany. 2. The Domain Name, Registry and Registrar
The Registry of the disputed domain name is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the disputed domain name is R. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2018. On July 23, 2018, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On July 24, 2018, and July 26, 2018, 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 30, 2018. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was September 11, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 12, 2018.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on September 27, 2018. 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 one of the world’s largest and best-known media companies. The Complainant Disney Enterprises, Inc. is the owner of trademarks and other intellectual property of the Disney group while The Walt Disney Company Limited administers the European business of the Walt Disney Company.
The Complainant is the owner of the trademark DISNEY, registered inter alia as a European Union trademark No. 186569 on January 19, 1999.
The disputed domain name was registered on March 27, 2018, and resolves to an online shop offering products unrelated to those of the Complainant. 5. Parties’ Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant’s trademark because the mere inclusion of the generic term “shop” is not sufficient to avoid the finding of likelihood of confusion. Due to the renown of the Complainant’s trademark DISNEY, there is a significant risk that customers looking for the Complainant’s website will likely expect that the Complainant is behind the Respondent’s website.
The Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name. The Respondent has no rights or legitimate interest in the disputed domain name and the disputed domain name is used for fraudulent purposes.
The Respondent registered and uses the disputed domain name for the purpose of attracting, for commercial gain, Internet users to the Respondent’s website. The disputed domain name is used for fraudulent purposes. The disputed domain name and the corresponding website markets unsolicited email messages, making potential visitors believe that the website is operated by the Complainant.
The website is used to cache personal data of Internet users. Several tests reveal that shopping orders cannot be completed. After customers have entered their personal data, which is sent to the operators of the website, the shopping order cannot be completed. Instead, customers are asked again and again to enter their credit card information. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under Article 21(1) of Regulation (EC) No. 874/2004 and Paragraph B(11)(d)(1) of the ADR Rules, in order for the Complaint to succeed, it is for the Complainant to establish:
(i) that the disputed 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 Community law and; either
(ii) that the disputed domain name has been registered by the Respondent without rights or legitimate interest in the name; or
(iii) that the disputed domain name has been registered or is being used in bad faith.
Furthermore Article 22(10) of Regulation (EC) No. 874/2004 provides that “[f]ailure of any of the parties involved in an ADR procedure to respond within the given deadlines or appear to a panel hearing may be considered as grounds to accept the claims of the counterparty.” 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 Community law
The Complainant has showed that it is the owner of the registered trademark DISNEY recognized in the EU. The disputed domain name includes the Complainant’s trademark in its entirety preceded by the generic term “shop”.
Firstly, it is widely accepted among panels under the ADR Rules that the applicable Top-Level Domain (“TLD”) “.eu” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.
Secondly, the addition of the generic term “shop” does not prevent a finding of confusing similarity under the first element.
Therefore the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark and thus, the Complainant has satisfied the requirement of paragraph B(11)(d)(1)(i) of the ADR Rules. B. Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s contentions. The Panel considers that the Complainant has made a prima facie argument that has not been contested by the Respondent and that there are no other facts on the record which the Panel might consider as providing the Respondent any such rights or legitimate interests.
In accordance with Article 22(10) of Regulation (EC) No. 874/2004, the Panel finds that the second element of Paragraph B(11)(d)(1) of the ADR Rules has been satisfied. C. Registered or Used in Bad Faith
When the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and the Respondent lacks rights or legitimate interests to the disputed domain name, it is not necessary to examine whether the disputed domain name was registered or is used in bad faith.
However, for the sake of completeness, the Panel considers also this aspect of the case. The Complainant has submitted that the disputed domain name is used for attracting Internet users to the Respondent’s website by creating likelihood of confusion with the Complainant’s trademark. The addition of the generic term “shop” gives the impression that the Respondent’s website is run or at least approved by the Complainant as an online store where Internet users can purchase goods from the Complainant. In addition, the Complainant argues that the Respondent’s website is used for fraudulent purposes, i.e., to gather personal data of Internet users that mistakenly believe to be shopping for the Complainant’s goods. The Respondent has not contested the Complainant’s allegation.
Consequently, the Panel finds that the disputed domain name has been registered and is being used in bad faith, so that the third requirement under paragraph B(11)(d)(1) of the ADR Rules is met. 7. Decision
For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name, be transferred to The Walt Disney Company Limited, which, being located in the UK, satisfies the general eligibility criteria for registration of the disputed domain name set out in Paragraph 4(2)(b) of Regulation (EC) No. 733/2002.
Tuukka Airaksinen
Sole Panelist
Date: October 11, 2018
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