Warner Bros. Entertainment Inc. and Scholastic Inc. v. Geiser Enterprises
Claim Number: FA0809001223022
Complainants are Warner Bros. Entertainment Inc. and Scholastic
Inc. (“Complainant”), represented by J. Andrew Coombs, of J. Andrew Coombs, A
Professional Corporation,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <potterscholastic.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainants submitted a Complaint to the National Arbitration Forum electronically on September 4, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 5, 2008.
On September 4, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <potterscholastic.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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 September 11, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 1, 2008 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@potterscholastic.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 13, 2008, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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.
Complainants request that the domain name be transferred from Respondent to Complainants.
A. Complainants make the following assertions:
Complainant Warner Bros. Entertainment Inc. produced the popular HARRY POTTER motion pictures, and holds a registered trademark with the United States Patent and Trademark Office (“USPTO”) for the HARRY POTTER mark (Reg. No. 2,450,787, issued May 15, 2001).
Complainant Scholastic Inc. publishes children’s books and other educational materials worldwide, and first registered the SCHOLASTIC trademark with the USPTO on August 5, 1930 (Reg. No. 273,405).
Respondent registered the <potterscholastic.com> domain name on February 14, 2008, and uses it, without Complainants’ authorization, to display a list of hyperlinks that advertise merchandise related to Complainants’ marks.
Respondent is not and has not been commonly known by the <potterscholastic.com> domain name.
Respondent has also been ordered by previous UDRP panels to transfer infringing domain names to the respective complainants in those cases, including Seiko Epson Corp. v. Geiser Enterprises, FA 1213581 (Nat. Arb. Forum Aug. 6, 2008), and Societe AIR FRANCE v. Geiser Enterprises, D2008-0024 (WIPO Feb. 29, 2008).
Respondent’s <potterscholastic.com> domain name is confusingly similar to Complainants’ POTTER and SCHOLASTIC marks.
Respondent does not have any rights or legitimate interests in the domain name <potterscholastic.com>.
Respondent registered and uses the <potterscholastic.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainants have rights; and
(2) Respondent has no rights or to legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 Complainants’ 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 a 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 Complainants must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Under the Policy, registration of a mark with an appropriate governmental authority such as the USPTO confers rights in that mark on a complainant for the purposes of Policy ¶ 4(a)(i). In this case, Complainant Warner Bros. Entertainment Inc. has submitted evidence of its USPTO trademark registration for the HARRY POTTER mark. Therefore, Complainant has established rights in the mark pursuant to Policy ¶ 4(a)(i). By the same token, Complainant Sholastic Inc. has established rights in the SCHOLASTIC mark pursuant to Policy ¶ 4(a)(i) based on its USPTO trademark registration. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (holding that complainants established rights in marks because the marks were registered with a trademark authority); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007):
The
Panel finds that Complainant has established trademark rights in the CLEAR BLUE
marks through introduction of the certificates for its
Respondents <potterscholastic.com> domain name combines portions of each Complainant’s mark. Specifically, the disputed domain name removes “harry” but contains the “potter” portion of the first mark, and adds the second SCHOLASTIC mark in its entirety. Confusing similarity may be found when a respondent combines two different trademarks in the same domain name. See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where a respondent combined a complainant’s POKEMON and PIKACHU marks to form the domain name <pokemonpikachu.com>). We find such confusing similarity here. See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to a complainant’s ASPREY & GARRARD and MISS ASPREY marks). Moreover, the addition of the generic top-level domain (“gTLD”) “.com” is without relevance to this proceeding. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003):
It
has been established that the addition of a generic top-level domain is
irrelevant when considering whether a domain name is identical or confusingly
similar under the Policy.
We conclude, therefore, that Respondent’s <potterscholastic.com> domain name is confusingly similar to Complainants’ HARRY POTTER and SCHOLASTIC marks pursuant to Policy ¶ 4(a)(i).
Complainants allege that Respondent lacks rights to and legitimate interests in the <potterscholastic.com> domain name. From the allegations of the Complaint, we accept that Complainants have established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must make a prima facie showing that Respondent does not
have rights or legitimate interest in the subject domain names, which burden is
light. If Complainant satisfies its
burden, then the burden shifts to Respondent to show that it does have rights
or legitimate interest in the subject domain names.
See also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have rights to or legitimate interests in the domain).
Because Respondent has not responded to the allegations of the Complaint, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. Nonetheless we will examine the record to determine if there is any basis for concluding that Respondent has such rights or legitimate interests under the criteria set out in Policy ¶ 4(c).
We begin by observing that Complainant alleges, and Respondent does not deny, that Respondent is not and has not been commonly known by the <potterscholastic.com> domain name. Consistent with this, the pertinent WHOIS information identifies Respondent as “Geiser Enterprises.” This appears to be the only information in the record relevant to this point of our analysis. Therefore, we conclude that Respondent is not commonly known by the <potterscholastic.com> domain name, and lacks rights and legitimate interests in the contested domain name pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that a respondent was not commonly known by the domain names <shoredurometer.com> and <shoredurometers.com> because the pertinent WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t as the registrant of the disputed domain names and there was no other evidence in the record to suggest that that respondent was commonly known by the domain names in dispute); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent has no rights to or legitimate interests in a disputed domain name where there is no evidence in the record indicating that that respondent is commonly known by the disputed domain name).
We also note that there is no dispute as to Complainants’ assertion to the effect that Respondent is using the <potterscholastic.com> domain name to display a list of hyperlinks advertising Complainants’ products and merchandise, or as to the further allegation that Respondent did not have Complainants’ authority to register a domain name containing their marks, or to sell their products. Respondent presumably receives click-through fees for each Internet user that is redirected from one of these links to its corresponding website. In light of this, we conclude that Respondent’ use of the <potterscholastic.com> domain name does not constitute 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 Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell a complainant’s goods without that complainant’s authority is not bona fide use); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of a complainant’s mark to sell that complainant’s perfume, as well as other brands of perfume, is not bona fide use).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
There is no dispute that Respondent has been ordered by
previous UDRP panels to transfer infringing domain names to several complainants
in other cases under the Policy. See Seiko Epson Corp. v.
Geiser Enterprises, FA 1213581 (Nat. Arb. Forum Aug. 6, 2008); see
also Societe AIR FRANCE v. Geiser
Enterprises, D2008-0024 (WIPO Feb. 29, 2008). Considering the recency of these cases, we accept
that this evidences a pattern of Respondent’s bad faith registration and use of
infringing domain names, including the <potterscholastic.com>
domain name in this case, pursuant to Policy ¶ 4(b)(ii). See Westcoast Contempo
Fashions Ltd. v.
Respondent’s use of the <potterscholastic.com>
domain name is likely to cause confusion among Internet users as to the possibility
of Complainant’s identity as a source of or other affiliation with Respondent’s
website. In brief, it appears that Respondent
is attempting to profit from the goodwill associated with Complainants’ HARRY
POTTER and SCHOLASTIC marks from the receipt of click-through fees. This unauthorized use of Complainants’ marks
in the <potterscholastic.com>
domain name for Respondent’s commercial gain evidences bad faith registration
and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v.
Cook, FA 208629 (Nat. Arb. Forum Dec. 22,
2003):
Registration and use of a domain name that
incorporates another's mark with the intent to deceive Internet users in regard
to the source or affiliation of the domain name is evidence of bad faith.
See also Metro. Life Ins. Co. v. Bonds, FA 873143
(Nat. Arb. Forum Feb. 16, 2007): “The Panel finds such use to
constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because Respondent is taking advantage of the confusing
similarity between the <metropolitanlife.us> domain name and
Complainant’s METLIFE mark in order to profit from the goodwill associated with
the mark.”
For these reasons, the Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <potterscholastic.com> domain name be TRANSFERRED forthwith from Respondent to Complainants.
Terry F. Peppard, Panelist
Dated: October 20, 2008
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