Warner Bros. Entertainment Inc. v. William C. Snyder
Claim Number: FA0710001094348
Complainant is Warner Bros. Entertainment Inc. (“Complainant”), represented by J.
Andrew Coombs, of J. Andrew Coombs, A Professional
Corporation,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <dumbledoresarmy.com>, <dumbledoresarmy.net>, <gryffindorhouse.net>, <thehogwartsschool.org>, and <thehogwartsschool.net> registered with Gandi Sas.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 15, 2007; the National Arbitration Forum received a hard copy of the Complaint on October 16, 2007.
On October 17, 2007, Gandi Sas confirmed by e-mail to the National Arbitration Forum that the <dumbledoresarmy.com>, <dumbledoresarmy.net>, <gryffindorhouse.net>, <thehogwartsschool.org>, and <thehogwartsschool.net> domain names are registered with Gandi Sas and that Respondent is the current registrant of the names. Gandi Sas has verified that Respondent is bound by the Gandi Sas registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 25, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 14, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@dumbledoresarmy.com, postmaster@dumbledoresarmy.net, postmaster@gryffindorhouse.net, postmaster@thehogwartsschool.org, and postmaster@thehogwartsschool.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 20, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <dumbledoresarmy.com>, <dumbledoresarmy.net>, <gryffindorhouse.net>, <thehogwartsschool.org>, and <thehogwartsschool.net> domain names are confusingly similar to Complainant’s ALBUS DUMBLEDORE, GRYFFINDOR, and HOGWARTS marks.
2. Respondent does not have any rights or legitimate interests in the <dumbledoresarmy.com>, <dumbledoresarmy.net>, <gryffindorhouse.net>, <thehogwartsschool.org>, and <thehogwartsschool.net> domain names.
3. Respondent registered and used the <dumbledoresarmy.com>, <dumbledoresarmy.net>, <gryffindorhouse.net>, <thehogwartsschool.org>, and <thehogwartsschool.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Warner Bros. Entertainment Inc., is a large media corporation that produced the widely successful “Harry Potter” series of films, based on the “Harry Potter” books by J.K. Rowling. The first book in the “Harry Potter” series was published in 1997, followed by six more books in subsequent years. The books were (and are) extremely popular, and Complainant released the first “Harry Potter” movie in 2001, followed by (to date) five more films based on the books. All of the “Harry Potter” films have been hugely successful at the box office. Complainant owns all trademarks related to the “Harry Potter” series of books and films, which were granted to Complainant by J.K. Rowling in 1998. With respect to the disputed domain names, “dumbledore” is the name of one of the characters in the books, “hogwarts” is the name of the fictional school that the characters attend, and “gryffindor” refers to one of the student groups within the school.
Complainant currently holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the following marks: ALBUS DUMBLEDORE (Reg. No. 2,595,064 filed on November 24, 1999, issued July 16, 2002); GRYFFINDOR (Reg. No. 2,480,839 filed on December 8, 1999, issued August 21, 2001); and HOGWARTS (Reg. No. 2,491,427 filed on December 22, 1999, issued September 18, 2001). Complainant also currently owns the <albusdumbledore.com>, <gryffindor.com>, and <thehogwartsschool.com> domain names.
Respondent registered the <gryffindorhouse.net>, <thehogwartsschool.org>, and <thehogwartsschool.net> domain names on July 9, 2000, and the <dumbledoresarmy.com> and <dumbledoresarmy.net> domain names on June 22, 2003. With the exception of the <dumbledoresarmy.com> domain name, which does not currently resolve to an active website, the disputed domain names all resolve to websites that link to an e-mail hosting site unrelated to Complainant or its marks.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the 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 names registered by Respondent are 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 names; and
(3) the domain names have been registered and are being used in bad faith.
Complainant registered the ALBUS DUMBLEDORE, GRYFFINDOR, and
HOGWARTS marks with the USPTO, and has therefore established rights to the mark
pursuant to Policy ¶ 4(a)(i). Complainant’s filing of the marks with the
USPTO before Respondent registered the disputed domain names secures
Complainant’s rights to the mark. See Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark
with the USPTO establishes Complainant's rights in the mark.”); see also Planetary Soc’y v.
Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date
of the complainant’s trademark rights date back to the application’s filing
date); see also Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27,
2003) (“As Complainant’s trademark application was subsequently approved by the
U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the
mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing
date.”).
Respondent’s <dumbledoresarmy.com>, <dumbledoresarmy.net>,
<gryffindorhouse.net>, <thehogwartsschool.org>, and <thehogwartsschool.net>
domain names are
confusingly similar to Complainant’s marks.
The addition of the generic terms “house”, “army”, and “school” do not
distinguish the disputed marks from Complainant’s registered ALBUS
DUMBLEDORE, GRYFFINDOR, and HOGWARTS marks.
In addition, because all domain names are required to have a top-level
domain, Respondent’s inclusion of the generic top-level domains (“gTLDs”)
“.net”, “.com”, and “.org” are insufficient to distinguish the disputed domain
name from Complainant’s marks. The Panel
finds that the disputed marks are confusingly similar to Complainant’s ALBUS
DUMBLEDORE, GRYFFINDOR, and HOGWARTS marks pursuant to Policy ¶ 4(a)(i). See Pomellato
S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to the complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Arthur Guinness Son & Co. (
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent has neither rights nor legitimate interests in the disputed domain names. Complainant has the initial burden of showing that Respondent lacks rights and legitimate interests in the disputed domain names. Once Complainant has made a prima facie case, the burden shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain names. The Panel finds that Complainant has made a prima facie case and shown that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Because Respondent failed to respond to the Complaint, the
Panel assumes that Respondent lacks all rights and legitimate interests in the <dumbledoresarmy.com>, <dumbledoresarmy.net>,
<gryffindorhouse.net>, <thehogwartsschool.org>, and <thehogwartsschool.net>
domain names. See Am. Express Co. v. Fang Suhendro,
FA 129120 (Nat. Arb. Forum Dec. 30,
2002) (“[B]ased on Respondent's failure to respond, it is presumed that
Respondent lacks all rights and legitimate interests in the disputed domain
name.”); see also Talk City, Inc. v. Robertson, D2000-0009
(WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall
draw such inferences’ from the Respondent’s failure to comply with the rules
‘as it considers appropriate.”). Despite Respondent’s failure to respond,
the Panel will examine all evidence in the record to determine if Respondent
has rights or legitimate interests in the disputed domain names under Policy ¶
4(c).
Complainant claims that Respondent has never been authorized to use the ALBUS DUMBLEDORE, GRYFFINDOR, and HOGWARTS marks. Further, the WHOIS information indicates that Respondent is “William C. Snyder”, and makes no indication that Respondent is commonly known by the disputed domain names. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Moreover, Respondent’s <dumbledoresarmy.com>, <gryffindorhouse.net>,
<thehogwartsschool.org>, and <thehogwartsschool.net> domain
names resolve
to websites that link to an e-mail hosting site unrelated to Complainant or its
marks, presumably for Respondent’s own financial gain. The Panel finds that such behavior is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶
4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb.
Forum June 12, 2003) (finding that the respondent’s use
of the disputed domain name to redirect Internet users to websites unrelated to
the complainant’s mark, websites where the respondent presumably receives a
referral fee for each misdirected Internet user, was not a bona fide
offering of goods or services as contemplated by the Policy); see also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb.
Forum Dec. 6, 2003) (“Diverting customers, who are looking for products
relating to the famous SEIKO mark, to a website unrelated to the mark is not a
bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it
represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Further, the <dumbledoresarmy.com> domain name does not
currently resolve to an active website.
Because there is no evidence on record that Respondent intends to use
the disputed domain name, the Panel finds that Respodnent has not made a bona fide offering of goods or services
under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶
4(c)(iii). See Pharmacia &
Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or
legitimate interests where the respondent failed to submit a response to the
complaint and had made no use of the domain name in question); see also Melbourne IT Ltd. v. Stafford,
D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in
the domain name where there is no proof that the respondent made preparations
to use the domain name or one like it in connection with a bona fide
offering of goods and services before notice of the domain name dispute, the
domain name did not resolve to a website, and the respondent is not commonly
known by the domain name).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has registered and is using the <dumbledoresarmy.com>, <gryffindorhouse.net>,
<thehogwartsschool.org>, and <thehogwartsschool.net>
domain names in bad faith pursuant to Policy ¶ 4(b)(iv), because the disputed
domain names resolve to websites that link to an e-mail hosting site unrelated to Complainant or
its marks. The Panel finds that
Respondent is benefiting from the likelihood of confusion between Respondent’s
domains names and Complainant’s marks, and that such use is capable of creating
confusion as to Complainant’s source, sponsorship, affiliation, or endorsement
of the websites that resolve from the disputed domain names. Therefore, the Panel finds that this
constitutes evidence of registration and use in bad faith under Policy ¶ 4(b)(iv).
In addition, the Panel finds that Respondent’s non-active
use of the <dumbledoresarmy.com> domain name constitutes bad
faith registration and use under Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use can constitute use in bad
faith); see also Caravan Club v. Mrgsale,
FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no
use of the domain name or website that connects with the domain name, and that
failure to made an active use of a domain name permits an inference of
registration and use in bad faith)
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dumbledoresarmy.com>, <dumbledoresarmy.net>, <gryffindorhouse.net>, <thehogwartsschool.org>, and <thehogwartsschool.net> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 4, 2007
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