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:
Aladdinonbroadway.com
Aladdinthemusical.com
Aladdinmusical.com
Disneymeetup.com
Disneyonbroadway.net
Disneythemusical.com
Mickeymouseonbroadway.com
Spider-manonbroadway.com
Spider-manthemusical.com
Spidermanonbroadway.net
Tangledonbroadway.com
Thedisneydream.com
Thedisneyfantasy.com
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 theater 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.…
