Warner Bros. Entertainment Inc. v. Chris
Sadler
Claim
Number: FA0404000250236
Complainant is Warner Bros. Entertainment Inc. (“Complainant”),
represented by J. Andrew Coombs, 450 North Brand Boulevard, Suite
600, Glendale, CA 91203-2349.
Respondent is Chris Sadler (“Respondent”),
R.R. #1, Box #109, Haliburton, Ontario, KOM 1SO, Canada.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <shop4harrypotter.com> and <shopforharrypotter.com>,
registered with Go Daddy Software, 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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on March 31, 2004; the Forum received a hard copy of the
Complaint on April 1, 2004.
On
April 1, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that
the domain names <shop4harrypotter.com> and <shopforharrypotter.com>
are registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the names. Go Daddy Software, Inc. has verified that Respondent
is bound by the Go Daddy Software, 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
April 5, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 26, 2004 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@shop4harrypotter.com and
postmaster@shopforharrypotter.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
May 6, 2004, pursuant to Complainant's request to have the dispute decided by a
single-member Panel, the Forum appointed Hon. Ralph Yachnin as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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 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 <shop4harrypotter.com>
and <shopforharrypotter.com> domain names are confusingly
similar to Complainant’s HARRY POTTER mark.
2. Respondent does not have any rights or
legitimate interests in the <shop4harrypotter.com> and <shopforharrypotter.com>
domain names.
3. Respondent registered and used the <shop4harrypotter.com>
and <shopforharrypotter.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
J.K. Rowling is
the author of the highly popular Harry Potter series of books that are
distributed and sold throughout the world.
Pursuant to the exercise of an option in an agreement dated June 1,
1998, Rowling granted and assigned to Warner Bros. all rights in all four books
of the Harry Potter series. The
first of such books, Harry Potter and the Philosopher’s Stone, was first
published in June of 1997.
Complainant owns
numerous registrations with the United States Patent and Trademark Office
(“USPTO”) for the HARRY POTTER mark, including registration numbers 2,450,787
(issued May 15, 2001), 2,450,788 (issued May 15, 2001), 2,479,341 (issued Aug.
21, 2001), 2,493,484 (issued Sept. 21, 2001), 2,497,083 (issued Oct. 9, 1981),
2,568,097 (issued May 7, 2002), and 2,568,098 (issued May 7, 2002). The HARRY POTTER mark is used in connection
with a variety of goods associated with the Harry Potter books.
Respondent
registered the disputed domain names <shop4harrypotter.com> and <shopforharrypotter.com>
on November 11, 2001 and November 16, 2001, respectively. Respondent uses the disputed domain names to
host websites that sell goods associated with the Harry Potter books and
to provide links to the same.
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.
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
established rights in the HARRY POTTER mark as a result of its numerous
registrations with the USPTO. See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption); see also Wal-Mart
Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the
failure of Complainant to register all possible domain names that surround its
substantive mark does not hinder Complainant’s rights in the mark. “Trademark
owners are not required to create ‘libraries’ of domain names in order to
protect themselves.”).
Domain names
that incorporate generic or descriptive terms with a third-party’s trademark
have been consistently held to be confusingly similar to the third-party mark
under the Policy. In the instant case,
both disputed domain names include Complainant’s registrered HARRY POTTER mark
in its entirety. The domain names have
merely included the terms “shop4” and “shopfor” to the HARRY POTTER mark. Such additions to the mark fail to alleviate
the confusing similarity between the domain names, <shop4harrypotter.com>
and <shopforharrypotter.com>, and Complainant’s HARRY POTTER
mark. See Am. Online, Inc. v.
Anytime Online Traffic School, FA 146930 (Nat. Arb. Forum April 11, 2003)
(finding that Respondent’s domain names, which incorporated Complainant’s entire mark and merely added the terms
“traffic school,” “defensive driving,” and “driver improvement,” did not add
any distinctive features capable of overcoming a claim of confusing
similarity); see also Pfizer, Inc. v. Suger, D2002-0187
(WIPO Apr. 24, 2002) (finding that because the subject domain name incorporated
the VIAGRA mark in its entirety, and deviated only by the addition of the word
“bomb,” the domain name was rendered confusingly similar to Complainant’s
mark); see also Westfield Corp.,
Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the
<westfieldshopping.com> domain name confusingly similar because the
WESTFIELD mark was the dominant element).
Complainant has
established Policy ¶ 4(a)(i).
Respondent has
failed to respond to the Complaint. As
such, the Panel presumes Respondent lacks rights to or legitimate interests in
the disputed domain names. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interest
in the domain names); see also Am.
Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no
rights or legitimate interests where Respondent fails to respond).
The WHOIS registration
information for the disputed domain names does not evidence Respondent is
commonly known by the disputed domain names.
The record fails to indicate in all other respects that Respondent is
commonly known by the names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its
failure to imply that Respondent is commonly known by the disputed domain name,
is a 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 Respondent does not have rights in a domain name when
Respondent is not known by the mark).
Respondent is
using the disputed domain names to sell merchandise that includes Complainant’s
HARRY POTTER trademarked goods. There is no evidence of an agreement between
Complainant and Respondent that grants Respondent the right to use
Complainant’s HARRY POTTER trademark in the disputed domain names. Respondent’s
unauthorized use of the domain names to sell Complainant’s goods does not
demonstrate 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 Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat.
Arb. Forum Feb. 27, 2001) (finding that Respondent, a reseller of Complainant’s
products, did not have rights or legitimate interests in a domain name that was
confusingly similar to Complainant’s mark); see also Toyota Motor Corp. v.
Double Time Jazz, FA 113316 (Nat. Arb. Forum July 10, 2002) (stating that
“Respondent cannot use Complainant’s trademark in a domain name when the
Respondent, even though selling Complainant’s goods, has no permission to use
the trademark as the domain name”).
Complainant has
established Policy ¶ 4(a)(ii).
Respondent uses
the disputed domain names, which are confusingly similar to Complainant’s HARRY
POTTER mark, to profit from the sale of merchandise containing Complainant’s
mark. As a result, the Panel finds that
Respondent uses the disputed domain names intentionally to attract, for
commercial gain, Internet users to its website by creating a likelihood of
confusion with Complainant’s mark, which evidences bad faith registration and
use pursuant to Policy ¶ 4(b)(iv). See Hewlett-Packard Co. v. OfficeOnWeb
Ltd., FA 151537 (Nat. Arb. Forum May 21, 2003) (holding that Respondent’s
unauthorized use of the LASERJET mark to operate as a reseller of Complainant’s
products constituted bad faith use and registration pursuant to Policy ¶
4(b)(iv)); see also Am. Online,
Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000)
(finding bad faith where Respondent registered and used an infringing domain
name to attract users to a website sponsored by Respondent); see also Perot Sys. Corp. v. Perot.net, FA 95312
(Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the disputed domain
name was obviously connected with Complainant’s well-known marks, thus creating
a likelihood of confusion strictly for commercial gain).
Respondent
included Complainant’s HARRY POTTER mark within the disputed domain names and
then used the names to sell HARRY POTTER merchandise. These two facts evidence Respondent’s actual knowledge of
Complainant’s rights in the HARRY POTTER mark.
Knowingly registering a domain name that is confusingly similar to a
third-party’s mark is evidence of bad faith registration and use under the
Policy.
See Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000)
(finding that the fame of the YAHOO! mark negated any plausible explanation for
Respondent’s registration of the <yahooventures.com> domain name); see
also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002)
(“there is a legal presumption of bad faith, when Respondent reasonably should
have been aware of Complainant’s trademarks, actually or constructively”); see
also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir.
2002) ("Where an alleged infringer chooses a mark he knows to be similar
to another, one can infer an intent to confuse").
Complainant has
established Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <shop4harrypotter.com> and <shopforharrypotter.com>
domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: May 19, 2004