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Archive for the ‘UDRP’ Category

Domain Dispute With 5 Complainants and 25 Domains DENIED on Procedural Grounds

Wednesday, January 5th, 2011

In the recent cybersquatting case of Grupo Bimbo S.A.B. de C.V., Bimbo Hungria ZRT., Arnold Products, Inc., Orograin Bakeries Products, Inc., Bimbo Bakeries USA, Inc. v. John Paulsen (WIPO Case No. D2010-1647, December 3, 2010) a single member Panel was faced with an interesting dispute brought by five (5) different Complainants seeking the transfer of 25 domains.

The domains at issues included <aboutgrupobimbo.com>, <arnoldfillems.com>, <bagelthin.com>, <bagelthins.com>, <bimbobrands.com>, <bimbobreads.com>, <bobolipizza.com>, <bobolipizzacrust.com>, <bobolisauce.com>, <brownberrybreads.com>, <brownberryjr.com>, <coronadocandy.com>, <entenmannscakes.com>, <entenmannscookies.com>, <entenmannsdonuts.com>, <fillems.com>, <franciscobreads.com>, <freihofersbread.com>, <laracookies.com>, <oldcountrybreads.com>, <oroweatbread.com>, <sandwichthin.com>, <stroehmannbread.com>, <tiarosatortilla.com> and <tiarosatortillas.com>.

The Panel explained that Grupo Bimbo is a large and internationally known baking company. and that the other Complainants appeared to be subsidiaries. Each of the Complainants individually owned trademark registrations and rights in one or more trademarks. The marks being claimed included GRUPO BIMBO, BIMBO, TIA ROSA, CORONADO, LARA, SANDWICH THINS, BROWNBERRY, FILL `EMS, BOBOLI, ENTENMANN’S, FREIHOFER’S, STROEHMANN, FRANCISCO, OLD COUNTRY, and OROWEAT.

Respondent filed a response which did not address the merits of the case, but the Panel explained that Respondent instead asserts that the process provided for under the UDRP is corrupt and inherently unfair in that “it favors the haves and unfairly penalizes and punishes the have nots”. The Respondent states that he does not recognize “the authority of WIPO or any other would be ‘World Policing Organization’”, and that he is certain his domain names “will be stolen” by the Complainants and their attorneys.

The remainder of the decision focused on the singular procedural issue of whether or not multiple complainants in this case was appropriate. The Panel explained:

The Policy and the Rules do not expressly contemplate the consolidation of multiple complainants (or respondents) in a unitary administrative proceeding, and generally speak in singular terms of a “complainant” when referring to proceedings under the Policy. This Panel, along with a number of WIPO Panels, nonetheless has concluded that the use of the singular “complainant” in the Policy and Rules was not meant to preclude multiple legal persons in appropriate circumstances from jointly seeking relief in a single administrative proceeding under the Policy.

The Panel recognized that prior Panels have allowed consolidation and that a “test” has been created for the determination of whether it is appropriate. The factors to be analyzed for consolidation are as follows:

(1) Number of complainants; (2) Number of domain names; (3) Voluminous filings; (4) Novel, difficult or largely untested issues; and (5) Potential for different outcomes for domain name disputes depending on nature of rights asserted.

The Panel reviewed these factors and found that there were too many overriding procedural issues to efficiently decide the case on its merits. For instance the Panel explained:

As a result, there appear to be different issues to be addressed under the first element of the Policy involving the disputed domain names <bagelthins.com> and <bagelthin.com> arising from the differing nature of the rights asserted by the Complainants in BAGEL THINS. In addition the descriptiveness question referred to above may also create the potential for different outcomes with respect to these disputed domain names under the second or third elements of the Policy. And, as noted earlier, <bagelthins.com> initially was used by the Respondent in a way that it appears the other disputed domain names have not been used. For all of the foregoing reasons, the Panel after careful consideration is not persuaded that the Complainants have made a sufficient showing to permit consolidation of the multiple complainants involved here. The Panel is concerned among other things that a multiplicity of issues could render the summary and expedited dispute resolution process envisioned by the Policy inefficient or ineffective, or even raise issues concerning fairness and equity.

Ultimately the Panel DENIED the request for transfer, but did so without prejudice, permitting the Complainants to re-file individually.

A Fight Over Wood Means Lots Of Splinters

Thursday, December 16th, 2010

In the recent cybersquatting dispute of Greenply Industries Limited v. Matthew Poston WIPO Case No. D2010-1748, November 29, 2010, single member panel was face with a dispute over the domain www.greenply.net. Complainant is a supplier of plywood and laminate to the Indian market and has multiple Indian trademark registrations.  Complainant also maintains a website at www.greenply.com. Respondent registered the disputed domain in October 2008 and filed a Response to the dispute. Respondent filed for a U.S. trademark registration for the mark GREENPLY in February 2008, and it was published for opposition in July 2008. Respondent argued that since the USPTO had moved the application to publication, he believed that the registration of the domain was not in bad faith.

According to paragraph 4(a) of the ICANN UDRP Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that: (i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and (ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) The Domain Name was registered and is being used in bad faith.

The Panel quickly addressed the first element, noting that the domain was identical to Complainant’s mark. The case turned on the second prong. The Panel noted that Complainant failed to present evidence demonstrating business in the U.S. prior to the Respondent’s registration of the domain. Additionally the Panel notes there was nothing in the record to indicate that Respondent’s intention to target Complainant’s brand. The Panel further rejected any contention that there has been confusion based upon a lack of evidence presented.

The Panel did not address the third prong in light of finding that Respondent established rights or legitimate interests in the domain. Ultimately the Panel DENIED the request for transfer.

3D Glasses Not Needed In UDRP Loss

Monday, December 6th, 2010

In the recent UDRP case of X6D Limited v. Telepathy, Inc. (WIPO Case No. D2010-1519, November 16, 2010) a three member Panel was faced with a dispute over the domain www.xpand.com. Complainant is a supplier of 3D solutions for movie theaters and home use and maintains a website at www.xpandcinema.com. Complainant owns a trademark registration for the mark XPAND BEYOND CINEMA and has pending applications for the single word mark XPAND. The disputed domain was registered on June 25, 2003, which was 3 years prior to the alleged date of first use of the marks by Complainant.

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present: (i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.

The Panel found that Complainant established the first prong, since the essence of the registred mark was incorporated into the domain. In addressing the second prong the Panel noted that Respondent alleged the domain was generic or at least descriptive. The Panel found that the word “xpand” was descriptive as a short hand for the word “expand.” The Panel recognized the commercial value of descriptive words, which when such domains are offered for sale can be considered a bona fide offering of goods or services.

The case ultimately seemed to weigh heavily on the third prong, wherein the Panel explained:

The Respondent acquired the disputed domain name in 2003. The Complainant did not use the XpanD Mark until September 2006, more than three years after the Respondent registered the disputed domain name. The Complainant did not provide any explanation as to how the Respondent could possibly have been aware of the Complainant and the Complainant’s mark when registering the disputed domain name.

After making a finding that Complainant failed to prove all three elements, the Panel moved its attention to Respondent’s request for a finding of Reverse Domain Name Hijacking. The Panel explained:

In the present case, the Complainant did not provide any explanation as to how the Respondent could possibly have been aware of the Complainant and the Complainant’s mark when registering the disputed domain name, which occurred more than three years before the Complainant started using its XpanD Mark. The Panel therefore accepts the Respondent’s allegation that the Complainant is using the UDRP as an alternative purchase strategy after the acquisition of the disputed domain name failed. Therefore, the Panel finds that the Complaint was brought in bad faith, in an attempt of reverse domain name hijacking: The Complainant knew or should have known at the time it filed the Complaint that it could not prove that the domain name was registered in bad faith.

Ultimately the Panel DENIED the request for Transfer.

ENERGYFIX Needs A Fix After Ruling of Reverse Domain Name Hijacking

Monday, October 25th, 2010

In the recent domain name dispute of Suzannah R. Noonan v. Kevin Sneed FA1343308 (Nat. Arb. Forum October 22, 2010) a single member panel was faced with a domain name dispute over the domain www.energyfix.com. Complainant claims ownership to the mark ENEGRYFIX, which was registered on July 24, 2001, filed on April 27, 2000 and bears an alleged first use date of April 1, 2000. The disputed domain was registered by Respondent on August 24, 1999, approximately seven month prior to Complainant’s first use of the mark. Respondent contended and provided supporting evidence that he began selling “superfood” products via the disputed domain name on November 28, 1999.

Paragraph 4(a) of the ICANN UDRP 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.

The Panel reviewed the elements and found that the domain was confusingly similar to Complainant’s mark. In addressing the second element the Panel made the following observations:

Under Policy ¶ 4(c)(i), use of a domain name in connection with a bona fide offering of goods is sufficient to establish rights or legitimate interests in the domain name for purposes of ¶ 4(a)(ii).  Respondent operated an online store using the disputed domain name for at least eight and a half years, beginning four months prior to Complainant’s first use of the ENERGYFIX mark and twenty-one months prior to the registration of that mark.  By doing so, Respondent established his rights and legitimate interest in the disputed domain name.

In addressing the third element, bad faith, the Panel continued its observations that no bad faith could have existed in light of the earlier registration of the domain compared with the first use of the mark.

The case became interesting with the Panel’s discussion regarding Reverse Domain Name Hijacking. The Panel noted:

The Panel is troubled by Complainant’s attempt to secure <energyfix.com>, a domain name that was registered and used to sell goods for months before Complainant’s first use of the ENERGYFIX mark.  A simple WHOIS search would have informed Complainant that the disputed domain name had been registered seven months before her first use of the ENERGYFIX mark and therefore could not have been registered in bad faith.  It is also evident from the Complaint that Complainant was aware that Respondent was selling goods using the disputed domain name, one of the activities that gives rise to rights and legitimate interests in a domain name….A long delay in filing a complaint can also give rise to an inference that a complainant with a flawed claim knew that it had a flawed claim, providing further support for a finding of bad faith.

Ultimately, the Panel found that Complainant failed to prove the elements and made a finding that Complainant engaged in Reverse Domain Name Hijacking.

FORD Has A FIESTA With Domain Names

Thursday, October 21st, 2010

  

In the recent cybersquatting case of Ford Motor Company v. Boomerang Enterprises Inc., FA1344311 (Nat. Arb. Forum October 20, 2010) a single member Panel was faced with a dispute over the domains www.fiesta-armrest.com, www.fiesta-armrest.net, www.fiestaarmrest.com, www.fiestaarmrest.net, and www.fordfiestaarmrest.com. Ford is the well known longstanding car company which needs no introduction. Ford maintains a website at www.ford.com. Ford owns numerous trademark registrations for its FIESTA vehicle. Respondent is an official Ford approved vendor. Respondent claims that it registered and developed the domain names with Ford’s approval and encouragement. As a result Respondent sought to have this dispute not handled under the UDRP, noting that it was contractual and fell outside the purview of the UDRP. The Panel reviewed the information and disagreed with Respondent position regarding the coverage of the UDRP on the facts at issue.

Complainant claims that it has established the elements outlined by the UDRP, and that Respondent’s arguments about Complainant and Respondent’s relationship do not provide sufficient reason for the Panel not to decide the case. Complainant and Respondent have provided sufficient evidence for the Panel to properly decide the dispute under the UDRP, the Panel may thus proceed with the case and consider the contentions of Complainant and Respondent.

Paragraph 4(a) of the ICANN UDRP 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.

The Panel reviewed and applied the elements finding that Complaint satisfied all three. Of interesting note, the Panel reviews the concept of disclaimers in avoiding bad faith.

Complainant argues that a disclaimer posted on a website is too late to avoid confusion among Internet users. Complainant claims that Internet users are misdirected to Respondent’s website before seeing the disclaimer.  Therefore, Complainant contends that Respondent’s disclaimer does not mitigate Respondent’s bad faith registration and use of the disputed domain names. In view of the circumstances of the present case, the Panel finds accordingly that the disclaimer posted on Respondent’s website by Respondent is insufficient to prevent a finding of bad faith under Policy ¶ 4(a)(iii) since it does not prevent initial confusion and may be disregarded by Internet users. See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does note mitigate a finding of bad faith under Policy ¶ 4(a)(iii) “); see also Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith.  First, the disclaimer may be ignored or misunderstood by Internet users.  Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions.  Such confusion is a basis for finding a violation of Complainant’s rights.”).

Ultimately, the Panel was not swayed by arguments presented by Respondent. Respondent did seek a finding of Reverse Domain Name Hijacking, which the Panel also rejected. The domains were ordered to be TRANSFERRED.

RED BULL’s Wings Failed Them This Time

Friday, October 15th, 2010

 

In the recent domain name dispute of Red Bull GmbH v. Roy Kenneth Nabben (WIPO Case No. D2010-1358, September 30, 2010) a single member Panel was faced with a dispute over the domain www.redbullnorge.com. RED BULL is the well known energy drink which does not need much of in introduction. RED BULL maintains a website at www.redbull.com. Respondent filed a response noting that the domain was registered in order for Respondent to sell Red Bull to residents of Norway. “Norge” means Normway, thus the domain name was aptly chosen in light of the proposed usage. The decision explained that the sale of the drink in Norway was not legal, and the parties would work toward getting the product legalized for sale in Norway. The decision notes that the relationship between the parties was done by agreement, and that RED BULL knew and approved of Respondents registration and use of the domain.

In accordance with paragraph 4(a) of the ICANN UDRP Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.

The Panel quickly found that the first prong of confusingly similar was met. Then the Panel also quickly dispensed of the second prong, noting that under 4(a)(ii) of the UDRP the registrant can satisfy this prong by showing that it once had such rights but no longer retains a right to use the disputed domain name.

The crux of the case came down to the third element, bad faith registration and use. The Panel explained:

[T]he Panel considers that, to satisfy the third requirement of the UDRP, a complainant must show that the domain name was both registered in bad faith and is being used in bad faith, and that a registration originally made in good faith cannot turn into a registration in bad faith because the registrant subsequently uses it in bad faith. Bad faith use can be evidence of bad faith registration but cannot convert a registration which was in fact made in good faith into a registration made in bad faith…But where a company consents to the registration by a trading partner of a domain name incorporating its mark, the company can readily protect itself by securing a clear written agreement specifying that it will own the domain name after the trading relationship comes to an end; and the agreement can further specify a cost effective means of dispute resolution. At all events this situation is a long way from the mischief which the UDRP was devised and adopted to address, namely the abusive registration of domain names which are identical or confusingly similar to the marks of other parties without their consent. In any case, the Panel is obliged to apply the UDRP as it is, rather than as it could or should be.

Ultimately the Panel found that RED BULL failed to satisfy all three elements and DENIED the request for transfer.

PAM ANDERSON Gets Her Name

Friday, October 1st, 2010

        

In the recent cybersquatting case of Pamela Anderson v. Alberta Hot Rods Case No. D2010-1144 (WIPO September 8, 2010) a three member panel was faced with a dispute over the domain www.pamanderson.com. Pamela Anderson is well known for her acting and modeling. She has multiple trademark registration for the mark PAMELA ANDERSON. She maintains a website at www.pamelaanderson.com. Respondent registered the disputed domain on March 1, 1997 and filed a Response to the Complaint. The parties have been involved in an earlier UDRP proceeding concerning the domain names <pamelaanderson.com>, <pamelaanderson.net> and <pamelalee.com>, which resulted in the transfer of those domain names (see Pamela Anderson v. Alberta Hot Rods, WIPO Case No. D2002-1104).

Under paragraph 4(a) of the ICANN UDRP Policy, the Complainant must prove that each of the following three elements is present: (i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.

In addressing the first element, the Panel explained that it must view Anderson’s rights in the mark based on common law, since the Federal trademark rights do not predate the registration of the domain. A discussion of common law rights extending to an abbreviation of Anderson’s first name from PAMELA to PAM, concluded in a finding that it could be found to be confusingly similar. The Panel was satisfied that the domain was confusingly similar to the mark.

Moving on to the second element, the Panel noted that Anderson claims the Respondent is not commonly known by the disputed domain and does not have authorization to use the domain or mark. The Panel noted the following arguments presented by Respondent:

The Respondent claims to have, as a respected publisher of a wealth of information, including biographical data, used the disputed domain name in connection with various websites in the past, all featuring biographical information about various famous personalities, dead or alive. However, the Respondent did not provide any evidence of any contemplated good faith use and therefore failed to prove rights or legitimate interests in the disputed domain name under the Policy.

The Panel found this element also favored Complainant. Moving onto the final element, bad faith registration and use, the Panel made the following observations regarding Respondent knowledge and actions.

Given the Complainant’s broad media coverage and the fact that the Respondent registered the disputed domain name in a chronological sequence with the domain names disputed in Pamela Anderson v. Alberta Hot Rods, supra, (<pamelaanderson.com> registered on November 6, 1996; <pamanderson.com> registered on March 1, 1997; <pamelalee.com> registered on March 27, 1997; <pamelaanderson.net> registered on February 25, 1998), it is inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant’s rights. This finding is further supported by the fact that the Complainant seems drawn towards registering well-known people’s names as domain names and therefore seems to be familiar with or at least interested in celebrities. The Panel is therefore satisfied that the Respondent registered the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy.

The Panel also applied the consensus view regarding lack of active use of a domain, and explained “In the view of the Panel, the facts of this case do not allow for any plausible actual or contemplated active use of the disputed domain name by the Respondent in good faith. The Panel is therefore convinced that, even though the disputed domain name has not yet been actively used, the Respondent’s non-use of the disputed domain name amounts to use in bad faith.”

Ultimately, the Panel found that all elements were satisfied and ordered the domain be Transferred. This decision was not unanimous though as one of the Panelists provided a dissenting opinion. Additionally, The Panel dismissed the request for Reverse Domain Name Highjacking presented by Respondent.

3 Strikes for RAPIDSHARE

Wednesday, September 15th, 2010

In another domain name dispute filed by RAPIDSHARE, the concept of owning the word RAPID was denied for the third time. In RapidShare AG and Christian Schmid v. Protected Domain Services Customer ID: NCR-785723/ n/a Sergey Vlasov (WIPO Case No. D2010-1106, August 27, 2010) a single member Panel was faced with a dispute over the domain www.rapid4me.com. We have previously blogged about the two prior failures of RAPIDSHARE’s attempts to own the word “rapid.” However, each time the Panel has found this was too much and that RAPIDSHARE did not use RAPID as a mark and was not commonly known by the name RAPID.

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.

In this case the Panel cited to some of the prior decisions, both for and against RAPIDSHARE, and noted that in the prior denial cases, such as RapidShare AG, Christian Schmid v. N/A Maxim Tvortsov, WIPO Case No. D2010-0696, that Panel found that www.rapidbay.net was not able to be transferred under the policy. This Panel adopted many of the same arguments, however did not get past the first element of whether or not the domain was identical or confusingly similar to the RAPIDSHARE mark. The Panel chose not to review the remaining elements.

RAPIDSHARE, Tries But Fails Again To Own The Word “RAPID”

Wednesday, September 8th, 2010

   

In the recent domain name dispute decision of RapidShare AG and Christian Schmid v. Ilya, Ilya Efimov WIPO Case No. D2010-1105 (August 17, 2010) a single member Panel was faced with a dispute over the domain www.rapid.org. As we previously posted on July 13, 2010, RAPID SHARE tried to claim rights to the word RAPID when seeking to get the “rapidbay.net” domain. (See post here) Complaint, Rapid Share is the well known file-hosting website which maintains a website at www.rapidshare.com. The Respondent did file a reply to the Complaint, and cited to the previous decision regarding RAPIDSHARE’s lack of rights to the word RAPID. Complainant owns a Community Trademark for RAPIDSHARE with a priority date of 2005.

Under Paragraph 4(a) of the ICANN UDRP Policy, a complainant has the burden of proving the following: (i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) That the disputed domain name has been registered and is being used in bad faith.

The Panel in this case made similar findings to the previous rapidbay.net decision. The Panel noted that no evidence was put forth by RAPIDSHARE to show that it was frequently referred to as “RAPID.” The Panel found this to be fatal to Complainant’s case. Ultimately, the Panel found that Complainant failed to establish identical or confusingly similar elements as required under the policy. The Panel DENIED the request for transfer.

DISNEY Does Not Like This Cybersquatter’s ‘Offer’

Wednesday, September 1st, 2010

 

In the recent cybersquatting case of Disney Enterprises, Inc. v. ll aka Joe Comeau FA1336979 (Nat. Arb. Forum, August 31, 2010) a single member Panel was faced with a dispute over the domain www.DisneyOffer.com. Disney needs no introduction in this case. You should know who they are, unless you have been living in the one or two places where they haven’t been able to advertise or sell products and services. Either way, go to www.disney.com for anything your heart desires. Respondent filed a response to this dispute and presented some interesting arguments.

Paragraph 4(a) of the ICANN UDRP 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.

The Panel quickly dispensed with the first prong, noting that the DISNEY mark is well established and that the disputed domain contained all of the mark including the additional word “offers.”

Moving to the second prong, the Panel noted that DISNEY had met its small initial burden of proving a prima facie case that Respondent lacked any rights or interests. This included claims that Respondent was not commonly known by the disputed domain. The Panel shifted the burden to Respondent and explained:

Respondent offers no evidence which might tend to show that he has rights in respect of  the domain name pursuant to Policy ¶4(c), or otherwise. Respondent offers no explanation as to why he registered a domain name which overtly references Complainant’s DISNEY trademark and he admits he has not built a website associated with the disputed domain name. Respondent states that the webpage referenced by the at-issue domain name is merely a holding page provided by the registrar, Go-Daddy. Respondent makes no claims regarding any intended use for the domain name.  Furthermore, Respondent makes no claims that he is somehow making a legitimate non-commercial or fair use of the domain name.

The Panel thus found that this second prong was proven. Moving to the third prong, bad faith, the Panel made some relevant findings. First the Paenl explained Respondent failed to present any justification that he did not register the domain name for any r3eason other then the value of the mark. Additionally, the Panel found that Respondent had registered well known domain names in the past using other marks such as EBAY and CHEVY.

The Panel found that Respondent offered to sell the disputed domain to DISNEY after recieving a cease and desist letter, which was is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(I). Respondent had argued that “If Respondent has to turn over the domain name to Complainant, it should at least in good faith have to give Respondent the renewal fees paid over the past few years.” Other interesting arguments presented by Respondent included:

Just because Complainant holds onto the name “disney” it does not have the right to squash and try to control every other holder of the word “disney” in the English speaking community or every domain name with the word “disney” in it. They own the market and brand name, but they do not own the word “disney” across the entire English language as long as those interests pose no threat or try to infringe upon their business.

Lastly, the Panel found that the disputed domain resolved to a parked site, featuring links to third parties offering competing goods and services. For all these reasons, the Panel found that DISNEY met its burden of proving all three prongs and ordered the domain be TRANSFERRED.

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