In a one member panel UDRP decision handed down by the National Arbitration Forum (NAF) Disney Enterprises, Inc. and Marvel Characters, Inc lost a UDRP seeking three domain names related to the coming Broadway Musical Aladdin but won 10 other domains related to Disney Broadway shows.
All the domain names were parked.
The UDRP was filed for a total of 13 domain names:
The panel found that some of the domain name were confusingly similar to trademarks in which the Complainant has rights:
disneymeetup.com, disneyonbroadway.net, disneythemusical.com, mickeymouseonbroadway.com, spider-manonbroadway.com, spider-manthemusical.com, spidermanonbroadway.net, tangledonbroadway.com, thedisneydream.com, thedisneyfantasy.com.
However the panel found aladdinonbroadway.com, aladdinthemusical.com, aladdinmusical.com were not confusingly similar to trademarks in which the Complainant has rights.
Here is what the panel had to say about the Aladdin domains:
“As for the three Aladdin domain names, the only trademark is ALADDIN’S MAGIC CARPET RIDE. The Panel has decided not to consider the French trademark for ALADDIN”.
“It must now be decided whether the disputed domain names are confusingly similar to the registered trademark ALADDIN’S MAGIC CARPET RIDE. The word “Aladdin” is a generic one in a sense in that it refers to the well-known children’s story of a Middle-Eastern boy, Aladdin, and his magic lamp. The Complainant’s evidence of a common-law trademark for the word comes nowhere near the standard required for proof of a common-law trademark and therefore cannot be taken into account. So the test is whether the words ‘MAGIC CARPET RIDE’ added to the word ‘ALADDIN’S’ is sufficient to show that the Alladin disputed domain names are confusingly similar to the sole trademark”.
“In the Panel’s view, they are not because of the generic quality of the word Aladdin and the added words of the registered mark which seem to be directed towards a production bearing the rather lengthy name, ALADDIN’S MAGIC CARPET RIDE. The fact that there are many other trademarks not owned by the Complainant incorporating the word “ALADDIN” emphasises the generic quality of the word”.
“Accordingly, the Panel concludes that the three Aladdin disputed domain names <aladdinonbroadway.com>, <aladdinthemusical.com>, <aladdinmusical.com> are not confusingly similar to a mark in which the Complainant has rights and that the Complaint must fail in respect of those disputed domain names”.
As far as bad faith is concerned, the fame of the DISNEY mark and the Disney Broadway productions indicate that anybody registering a name to reflect any of these concepts would know the Disney organisation would almost certainly have trademarks. Such a person should be put on some sort of notice because of the notoriety of the marks. Moreover, the Respondent claims familiarity with the theatre and musical shows. So it is simply unbelievable that he would have registered the disputed domain names in ignorance of the Complainant’s likely trademarks.
The fact that the domain names are passive and that a ‘click-through’ procedure is in place has the effect of seducing internet users into the belief that there is some sort of authorization or approval from the Disney organisation. That fact alone is sufficient to indicate continuing bad faith use.
The marks are so internationally distinctive that the Respondent must have had actual knowledge of them prior to registration. Using confusingly similar domain names in goods indicates that the Respondent is seeking to profit from their use.
The fact that the amounts received from the click-through sites are minimal is not a consideration. The Respondent bears the responsibility for what is on his website, even if it has been placed there without his express approval by a parking service.””
I did get a kick out of some of the domain holders arguments he made in the response to the UDRP:
“”The Complainants believed they could “bully” a lone individual to transfer the domain through a threatening letter from the Complainant’s outside counsel and then “slapping together” a complaint with many deficiencies to coerce a transfer and by calling him a ‘cybersquatter’ in a pejorative manner.
“When the Panel considers the Complainants’ Additional Submission, the evidence shows that the disputed domain names are not confusingly similar and that the Respondent has a legitimate interest in a number of the disputed domain names as registered or used in bad faith.
“As far as the Aladdin domain names are concerned, the Complainants have “desperately searched far and wide” and came up with a French design which is not confusingly similar.”
“There is no evidence that the French design mark is “alive”. No new information exists after February 12, 2003.
“Alladin” does not have a secondary meaning but is the subject of 219 United States trademarks, 19 of them consisting solely of the word “Alladin”. Therefore, the Complainants knew that they could not get a trademark in the United States for “Alladin”. The evidence alleged for a common-law mark is insufficient. The story of Alladin is hundreds of years old and is in the public domain and the Complainant does not have an absolute monopoly of works relating to Alladin merely based on a 1992 movie or a 1993 French design mark.
The Respondent produced a further affidavit deposing to his long interest in the theatre in New York City; that he conceived and developed websites to service and host different interests and other business ventures.
Contrary to the Complainant’s argument, he is not in direct competition with the Complainant’s own products and services, including musicals under the same name. He registered the “Alladin” domain names in 2007 and the Complainants have admitted they have only recently been working on a stage version of the motion picture Alladin.
As to the argument that the Respondent has not developed any of the disputed domain names, the Respondent has over 2,000 domain names and cannot be expected to develop all of them since he is a person with limited resources and has a full-time job.
The Respondent does not profit from the disputed domain names. He gets about 10 cents per month from the ‘click-through’ services. He did not registered the disputed domain names in bad faith. In particular, he could not have been expected to have known about the French design mark and could not reasonably be expected to search every trademark database in the world.
The Respondent has not used the disputed domain names in bad faith. They do not contain links to competitors’ products. The Alladin domain names resolve to social networking pages. The <disneymeetup.com> contains links to Disney Parks, Disneyland ticket deals, etc. which are official links to products related to Disney. They are not directing users to competitors. Passive use is not per se use in bad faith and bad faith must be proved.””