## Facts

- Disney Enterprises, Inc. owned long-established trademark rights in DISNEY and DISNEY WORLD and operated well-known official websites using related domain names.
- John Zuccarini and associated entities registered multiple domain names incorporating “Disney” and typographical variants designed to capture mistyped searches, including: disneychanel.com, disneywallpaper.com, disneywold.com, disneywolrd.com, disneyword.com, disneyworl.com, and walddisney.com.
- The disputed domain names resolved to sites used to generate advertising and click-through revenue from diverted Internet traffic.
- Zuccarini admitted he intentionally registered domain names confusingly similar to famous marks to divert Internet users to his sites for commercial gain.
- Disney filed a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP); registrars confirmed the registrations were held by Zuccarini or his entities and were subject to the UDRP.
- A three-member administrative panel was appointed to decide whether the domain names should be transferred.

## Issues

1. Whether the disputed domain names were identical or confusingly similar to trademarks in which Disney had rights under UDRP ¶ 4(a)(i).
2. Whether the respondents had rights or legitimate interests in the disputed domain names under UDRP ¶ 4(a)(ii).
3. Whether the domain names were registered and used in bad faith, including intentional diversion for commercial gain, under UDRP ¶ 4(a)(iii) and ¶ 4(b)(iv).

## Decision

- The panel found each disputed domain name confusingly similar to Disney’s DISNEY and DISNEY WORLD marks, including deliberate misspellings intended to capture typing errors.
- The panel found the respondents lacked rights or legitimate interests because Disney did not authorize use of its marks, the respondents were not commonly known by the disputed names, and the use was not a bona fide offering.
- The panel found bad-faith registration and use because the respondents intentionally diverted users by creating confusion to generate advertising revenue, fitting UDRP ¶ 4(b)(iv).
- The panel ordered transfer of all disputed domain names to Disney.

## Legal Principles

- A domain name that incorporates a complainant’s mark, including a deliberate typographical variant, is confusingly similar where users are likely to assume an association with the mark owner.
- Using a confusingly similar domain name for click-through or advertising revenue based on diverted traffic is not a bona fide offering and typically defeats any claim of rights or legitimate interests.
- Bad faith is shown where a registrant intentionally attracts Internet users for commercial gain by creating a likelihood of confusion as to source, sponsorship, affiliation, or endorsement (UDRP ¶ 4(b)(iv)).
- “Initial interest confusion” can support bad faith when the domain name’s misleading similarity is used to capture traffic, even if some users later realize the site is unaffiliated.

## Conclusion

The panel ordered transfer of the disputed Disney typo-variant domain names after finding confusing similarity, no respondent rights or legitimate interests, and bad-faith registration and use based on intentional diversion of Internet users for commercial advertising revenue under the UDRP.


Disney Enters., Inc. v. Zuccarini, No. D2001-0489 (WIPO Arb. & Mediation Ctr. July 3, 2001)