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Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Disney Enterprises Inc v Robinson [2006] DRS 3296 (13 March 2006)
URL: http://www.bailii.org/uk/cases/DRS/2006/3296.html
Cite as: [2006] DRS 3296

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    Nominet UK Dispute Resolution Service
    DRS 03296
    Disney Enterprises, Inc.
    - v -
    James Robinson
    Decision of Independent Expert
  1. Parties

    2. Complainant: Disney Enterprises, Inc.
    Country: USA
    Respondent: James Robinson
    Country: UK
  2. Domain Name ("the disputed Domain Name") which was registered on March 9, 2004.

  3. Procedural Background

    4. The Complaint was lodged with Nominet UK ("Nominet") on January 19, 2006, with hard copies being received in full on January 26, 2006. Nominet validated the Complaint and notified the Respondent of the Complaint on January 26, 2006, giving him 15 working days within which to lodge a Response. No Response was filed and so Nominet did not initiate its Informal Mediation procedure. On February 28, 2006 the Complainant paid to Nominet the appropriate fee for a Decision by an Expert pursuant to paragraph 6 of Nominet's Dispute Resolution Service Policy ("the Policy").
    On March 6, 2006 the undersigned, Mr. David H Tatham ("the Expert"), confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as an Expert in this case and further confirmed that he knew 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 and he was selected by Nominet as the Expert for this case on the same day.
  4. Outstanding Formal/Procedural Issues

    5. It will be seen from the Facts as set out below that the Respondent has supplied a false address. Nominet sent the papers to the Respondent by e-mail and by post, but there is no indication from the papers supplied to the Expert as to their fate. The Complainant quite correctly identified the Respondent in the Complaint by the name and address it gave when registering the disputed Domain name, and Nominet used the same details. Indeed the only ones available. It would therefore appear to be the fault of the Respondent if he remains unaware of these proceedings.
  5. The Facts

    6. The Complainant identified two of its trade marks as the basis for the Complaint –
    EURO DISNEY registered in the UK in classes 25, 39 and 41 on August 11, 1992 under No. 1509363, and as a CTM in classes 9, 14, 16, 24, 25, 28, 39 and 41 on July 10, 1998 under No. 878721
    DISNEY registered in the UK in classes 9, 14, 16, 21, 24, 25, 28, 29, 30, 41 and 42 on October 9, 1992 under No. 1515367, and as a CTM 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 on April 1, 1996 under No. 186569. The UK registration is a Series Mark, with the word DISNEY depicted both in block capital letters and in a stylised script form. The CTM registration is only in block capital letters.
    Copies of all four of these registrations were attached to the Complaint.
    The Complainant has, since at least 1990, used the trade mark EURO DISNEY in its business of the provision of Disney-themed leisure facilities. In particular, it is used in relation to the Complainant's resort based outside Paris, France which until 1994 was widely marketed and advertised in the UK under the EURO DISNEY name. Indeed, the company which still operates the resort, and which currently trades in the United Kingdom as well as France, is the Complainant's affiliated company Euro Disney Vacances S.A.S.
    The Complainant and its predecessors have for many years used the trade mark DISNEY in their business of the production and distribution of films, sound and video recordings, television programmes and associated publications and merchandise; broadcasting; the provision of Disney-themed holidays (including the Walt Disney World Resort, the Disneyland Resorts and Disney cruise lines); the operation of retail outlets under the name of The Disney Store; online retailing through the domain names disneystore.com and disneystore.co.uk; and the provision of a wide variety of goods and services including those marketed and/or sold online through its various websites including those at and .
  6. The Parties' Contentions

    7. Complainant
    The Complainant contends that, as a result of the commercial exploitation of its trade marks DISNEY and EURO DISNEY, it has acquired substantial trading goodwill in them. For example, the trade mark EURO DISNEY is very well known to the general public by reason of its association with the Disney resort in Paris, France. This European version of the resort was built in 1988 following the success of the Walt Disney World Resort in Florida and Disneyland in California. Plans for the European Disney resort started in 1975 with an official opening on April 12, 1992. The name EURO DISNEY has been used by the Complainant from 1990 to market and advertise the European Disney resort. Accordingly, it is synonymous in the minds of the public with the Complainant's resort, notwithstanding the fact that since 1994 it has officially been called "Disneyland Resort Paris".
    The trade mark DISNEY is extremely well known to the general public by reason of its association with film, sound and video recordings and television programmes. The Complainant and its predecessors have been trading internationally by reference to the Disney name for over 80 years. Accordingly, the DISNEY trade mark and name is synonymous with the Complainant in the minds of internet users worldwide.
    The Complainant further contends as follows:
    •    The disputed Domain Name is self-evidently identical to the trade mark EURO DISNEY and/or in the alternative confusingly similar to the trade mark DISNEY, in both of which the Complainant has rights as defined in paragraph 1 of the Policy.
    •    The Respondent has no rights in the disputed Domain Name. He does not own any trade mark in respect of, nor is he the owner or the licensee of the goodwill in, either of the Complainant's trade marks.
    •    The Respondent has provided false contact details. The address provided by the Respondent on the Whois database, a copy of which was annexed to the Complaint, is not the correct address of the Respondent. As proved by a copy of an extract from the BT Phone Book that was annexed to the Complaint, that address is occupied by Pizza Magic 2, a take away restaurant. The Complainant's solicitors have confirmed with Michael Sohpy of Pizza Magic 2 that there is no James Robinson who works or lives at that address. This is evidence of abusive registration pursuant to paragraph 3(a)(iv) of the Policy.
    •    The Respondent is using the disputed Domain Name to confuse and/or deceive internet users into believing that the disputed Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant (paragraph 3(a)(ii) of the Policy), for the reasons set out below:
    •    The Respondent has taken active steps to conceal his true identity by providing false contact details, in breach of his registration agreement with Nominet.
    •    There is not, and it is difficult to envisage how there could be, any evidence of any actual or contemplated good faith use by the Respondent of the disputed Domain Name. In any event, no explanation has been forthcoming from the Respondent as to the legitimate use of the disputed Domain Name. Accordingly it is likely that the disputed Domain Name was registered with an abusive intent, and in this context the Complainant referred to the Decision in DRS 00658 Chivas Brothers Ltd v DW Plenderleith, a copy of which was annexed to the Complaint.
    The Complainant has made a number of attempts to contact the Respondent. On March 11, 2005, the Complainant's solicitors wrote to the Respondent requesting the transfer of the disputed Domain Name. No response was received from the Respondent.
    The Complainant's solicitors have been unable to contact the Respondent by telephone because there is no telephone number listed on the Whois database. Further, there is no telephone number listed with Directory Enquiries for the Respondent at that address, and a copy of a further extract from the BT Phone Book was annexed to the Complaint as proof of this fact.
    Accordingly, the Complainant's solicitors wrote a second letter on October 26, 2005. Again, no response was received from the Respondent. As set out above, the address on the Whois database is that of Pizza Magic 2. The Complainant's solicitors have spoken with Pizza Magic 2, who have confirmed that James Robinson is not, nor has been to their knowledge, at that address.
    The Complainant concludes by submitting that, having regard to the above facts and contentions, the disputed Domain Name has been registered and/or used in a manner which takes unfair advantage of and/or is unfairly detrimental to the Complainant's Rights.
    Respondent
    As has already been pointed out, there was no Response.
  7. Discussion and Findings:

    8. General
    According to paragraph 2(a) of the Policy, in order to succeed in a Complaint, the Complainant has to prove to the Expert that, on the balance of probabilities –
    i the Complainant has Rights in respect of a name or mark which is identical or similar to the disputed domain name; and
    ii the disputed domain name, in the hands of the Respondent is an Abusive
    Registration.
    The absence of a response from a Respondent does not mean that he has no answer to the Complaint. A Complainant must still make out its case and, having done so, the burden is on a Respondent to prove otherwise.
    Complainant's Rights
    Ignoring the first and second level suffixes of the disputed Domain name – as is customary in comparisons between a domain name and a trade mark – there is no doubt that it is identical to the Complainant's trade mark EURO DISNEY (because spaces are not permitted in domain names) and that it is similar to the Complainant's trade mark DISNEY.
    Therefore, paragraph 2(a)(i) of the Policy is proved.
    Abusive Registration
    An 'abusive registration' is defined in paragraph 1 of the Policy as being "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."
    Paragraph 3 of the Policy sets out a number of factors that define what can be an Abusive Registration, and the following would appear to be relevant in this case:
    3(a)(i) Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:
    B. as a blocking registration against a name or mark in which the Complainant has rights; or
    C for the purpose of unfairly disrupting the business of the Complainant.
    (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;
    (iv) It is independently verified that the Respondent has given false contact details to us;
    Unlike many Complaints under the Policy, this Complaint has been impeccably presented on behalf of the Complainant and is well documented. In it, the Complainants have undoubtedly made out an extremely strong case and, once a bona fide case is made out, the onus shifts to a Respondent to refute it. In this case, the Respondent has failed to reply. Thus the Expert has accepted all of the Complainants' contentions as being true.
    There is little doubt in the mind of the Expert that the above requirements of paragraph 1 apply in this case.
    The disputed Domain Name is identical to a name (EURO DISNEY) in which the Complainant has well-established rights and it is similar to a name (DISNEY) that is not only long established but surely qualifies to be exceedingly well-known throughout the whole world by people of all ages. It is inconceivable that the Respondent could not have been aware of it, indeed it is crystal clear that he did for the website at the disputed Domain Name is transparently intended to be a copy of the Complainant's own website advertising the many delights at its French resort.
    In this case the Expert is happy to follow the reasoning of Tony Willoughby in the 'Chivas' case DRS 00658 referred to by the Complainant. He is Chairman of Nominet's Panel of Experts and highly experienced in domain name disputes with scores of Decisions to his name. In that Decision he states –
    "Where a Respondent registers a domain name:-
    1. Which is identical to a name in respect of which the Complainant has rights; and
    2. where that name is exclusively referable to the Complainant; and
    3. where there is no obvious justification for the Respondent having adopted that name for the Domain Name; and
    4. where the Respondent has come forward with no explanation for having selected the Domain name,
    it will ordinarily be reasonable for an expert to infer first that the Respondent registered the Domain name for a purpose and secondly that that purpose was abusive."
    In this case, the Expert is prepared to infer, as did Tony Willoughby in the above quoted case, that the Respondent's purpose in registering the disputed Domain name was abusive, for it is impossible to imagine any legitimate reason for setting up the Website at the disputed domain name.
    However in this case, another inference cane also be drawn, namely that the Respondent registered the disputed Domain name with a view to making money out of it. The site at the disputed Domain name is a Chinese copy of the Complainant's own site and it carries a number of 'click-through' advertisements and, as the Complainant points out, this indicates that the Respondent has subscribed to Google's AdSense programme so that every time a visitor clicks on one of these advertisements the Respondent earns a fee. It is therefore reasonable to assume that this was Respondent's prime purpose in registering the disputed Domain Name.
    Finally, as if to pile Scylla on Charybdis, the Respondent has also provided false contact details, as has been independently verified and, as noted above, to do so is in breach of paragraph 3(a)(iv) of the Policy.
  8. Decision

    9. The Expert finds that the Complainant has Rights in the names EURO DISNEY and DISNEY and that they are Identical or similar to the disputed Domain Name.
    The Expert further finds that the disputed Domain Name is an Abusive Registration in the hands of the Respondent.
    The Expert therefore directs that the disputed Domain Name be transferred to the Complainant.
    David H Tatham
    March 13, 2006

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URL: http://www.bailii.org/uk/cases/DRS/2006/3296.html