Warner Bros. Entertainment Inc. v. Datadesk Technologies Inc.
Claim Number: FA1009001345726
Complainant is Warner Bros. Entertainment Inc. ("Complainant"), represented by J. Andrew Coombs of J. Andrew Coombs, A Professional Corporation, California, USA. Respondent is Datadesk Technologies Inc. ("Respondent"), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hogwarts.com>, registered with GoDaddy.com, Inc.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 10, 2010; the National Arbitration Forum received payment on September 10, 2010.
On September 13, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <hogwarts.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 15, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 5, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@hogwarts.com. Also on September 15, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 20, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <hogwarts.com> domain name is identical to Complainant’s HOGWARTS mark.
2. Respondent does not have any rights or legitimate interests in the <hogwarts.com> domain name.
3. Respondent registered and used the <hogwarts.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Warner Bros. Entertainment Inc., has produced and distributed the Harry Potter series of films that are based on the books written by J.K.Rowling. Complainant owns the intellectual property rights in the films as well as elements relating to the books and motion pictures. Complainant has exercised an option agreement dated June 1, 1998 in which J.K. Rowling granted and assigned to Complainant all rights in all four books in the Harry Potter series as of that date. Complainant owns a registered trademark with the United States Patent and Trademark Office ("USPTO") for the HOGWARTS mark (e.g., Reg. No. 2,491,427 filed December 22, 1999; registered September 18, 2001).
Respondent, Datadesk Technologies Inc., registered the <hogwarts.com> domain name on April 20, 1999. Respondent’s disputed domain name resolves to a website that displays various third-party links to Harry Potter game websites.
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 name registered by Respondent is 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 name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has presented the Panel with evidence indicating that it owns a trademark registration for the HOGWARTS mark with the USPTO (e.g., Reg. No. 2,491,427 filed December 22, 1999; filed September 18, 2001). The Panel finds that Complainant has established rights in its HOGWARTS mark under Policy ¶ 4(a)(i) dating back to December 22, 1999. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant contends that it received an assignment of rights in all four of the Harry Potter books through an agreement dated June 1, 1998 with the author of the books, J.K. Rowling. Complainant contends that through this agreement it received all rights in the books including audio-visual, copyright, trademark, and allied and ancillary rights. Complainant argues that the rights assigned to it include the trademarked elements of the books and motion pictures, including HOGWARTS. Further, Complainant submits evidence to show that it subsequently filed for and received a trademark registration for the HOGWARTS mark with the USPTO. The Panel finds that Complainant has produced sufficient evidence indicating that it possesses common law rights in the HOGWARTS mark under Policy ¶ 4(a)(i) that date back to June 1, 1998. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)).
Complainant argues that the <hogwarts.com> domain name is identical to Complainant’s HOGWARTS mark because the domain name contains the entire mark while adding the generic top-level domain (“gTLD”) “.com.” The Panel agrees and finds that the disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant maintains that Respondent does not have rights and legitimate interests in the <hogwarts.com> domain name. Complainant is required to make a prima facie case in support of these allegations under Policy ¶ 4(a)(ii). Once Complainant has produced a prima facie case the burden of proof shifts to Respondent to show why it has rights or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). The Panel finds that the Complainant has produced a prima facie case. Due to the Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the disputed domain name. 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 Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the <hogwarts.com> domain name pursuant to Policy ¶ 4(c).
Complainant asserts that it has not granted Respondent permission to use its HOGWARTS mark, and that Respondent is not commonly known as the <hogwarts.com> domain name. The WHOIS information for the domain name lists the registrant as “Datadesk Technologies Inc.,” which does not indicate that Respondent is commonly known as the disputed domain name. Respondent has not produced any evidence to show that it is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain 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 IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant argues that Respondent is using the disputed domain name to display various third party links to “Harry Potter Games,” and “Hogwarts Professor” that borrow off of the goodwill developed in Complainant’s marks. Complainant argues that such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel agrees and finds that Respondent’s use of the disputed domain name as a links directory, presumably for financial gain, 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 Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent is using the disputed domain name to provide third-party links to websites dealing in games and products under the HOGWARTS mark. The Panel finds that such use is evidence of bad faith under Policy ¶ 4(b)(iii) because Respondent is using Complainant’s mark to market products or to provide links to websites that may be of interest to Complainant’s customers. See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant further argues that Respondent is using the <hogwarts.com> domain name to intentionally attract Internet users to its directory website that contains third-party hyperlinks that may be of interest to Complainant’s customers. The Panel finds that Respondent’s use of the disputed domain name to intentionally attract Internet users to its website for financial gain is further evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
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 <hogwarts.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: October 28, 2010
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