Warner Bros. Entertainment Inc. v. Vivek
Rana
Claim Number: FA0407000304696
PARTIES
Complainant
is Warner Bros. Entertainment Inc. (“Complainant”),
represented by J. Andrew Coombs, of J. Andrew Coombs, A Professional Corporation, 450 North Brand Boulevard, Suite 600, Glendale, CA, 91203. Respondent is Vivek Rana (“Respondent”),
7700 Willow Chase Blvd., #724, Houston, TX 77070.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <harrypottercollection.com>,
registered with Direct Information Pvt.
Ltd., d/b/a Directi.com.
PANEL
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.
Judge
Karl V. Fink (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 26, 2004; the Forum received a hard copy of the
Complaint on July 27, 2004.
On
July 28, 2004, Direct Information Pvt. Ltd., d/b/a Directi.com confirmed by
e-mail to the Forum that the domain name <harrypottercollection.com>
is registered with Direct Information Pvt. Ltd., d/b/a Directi.com and that
Respondent is the current registrant of the name. Direct Information Pvt. Ltd., d/b/a Directi.com has verified that
Respondent is bound by the Direct Information Pvt. Ltd., d/b/a Directi.com
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
August 2, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 23,
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@harrypottercollection.com by e-mail.
The
hard copy of the Response, pursuant to ICANN Rule 5(a), was not timely
submitted.
Complainant’s
additional submission was timely submitted and received on August 27,
2004. Respondent’s additional
submission was timely received on August 28, 2004.
On September 7, 2004, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Judge Karl V.
Fink (Ret.) as Panelist. All submissions were considered by the
Panel.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Warner
Bros. is the owner of all copyrights and trademarks in and to all of the Harry
Potter books and movies. Among the
distinctive trademarked elements that have come to be associated with the Harry
Potter series of books and Warner Bros. are HARRY POTTER, QUIDDITCH, and HOGWARTS.
Panels convened pursuant
to the Policy
have previously upheld Warner Bros.’ rights in the HARRY POTTER trademark. See, e.g., Warner Bros. Entm’t, Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004).
Complainant’s registration of the Harry Potter trademark before Respondent’s registration of the domain
name is sufficient to
prove that Complainant has rights in the trademark.
The
domain name at issue fully incorporates the HARRY POTTER trademark.
The test
of confusing similarity under the Policy is confined to a consideration of the
disputed domain name and the trademark, without reference to other issues. The disputed domain name is confusingly
similar to Complainant’s mark, as it incorporates the trademark in its
entirety.
Several
distinct grounds support the conclusion that Respondent has no legitimate
interest in the domain name. Respondent
is not authorized by Complainant to use the domain name.
Respondent
registered and uses the domain name to infringe Complainant’s rights in its
mark, and to trade off Complainant’s goodwill.
Respondent
is not and has not been commonly known by the disputed domain name. Respondent does not use the trademark to
identify Respondent on the website or for any other legitimate purpose.
Respondent’s
registration and use of the domain name meets the bad faith elements set forth
in Section 4(b) of the Policy because Respondent registered the domain name
primarily to sell, rent or otherwise transfer it for valuable consideration in
excess of Respondent’s out-of-pocket expenses.
To
establish bad faith use, a Respondent need not use a disputed domain name
openly in any business; it is sufficient that Respondent sought to sell the
domain name to Complainant. Respondent
has offered the domain name for sale, and has responded to Complainant’s
demands for transfer of the domain name by exaggerated requests for compensation
exceeding out-of-pocket registration costs.
The
fact that domain name registrants may legitimately and in good faith sell
domain names does not imply a right in such registrants to sell domain names
that are identical or confusingly similar to trademarks or service marks of
others without their consent.
Respondent
is intentionally using the domain name to attract, for commercial gain,
Internet users to a website by creating a likelihood of confusion with
Complainant’s mark as to the source, sponsorship, affiliation or endorsement of
the website, or of a product or service offered through the website.
Due
to the similarity of the domain name with the trademark, along with its
long-established and widespread use and registration, Respondent clearly knew
of Complainant’s mark prior to registering the domain name. By registering the domain name with actual
knowledge of Complainant’s mark, Respondent acted in bad faith by breaching his
registration contract with the registrar because he falsely represented that
his registration of the domain name did not infringe the legal rights of any
third party. Thus, the registration
constituted bad faith under the Policy.
B.
Respondent
Respondent’s
domain name <harrypottercollection.com> is not confusing anyone
with Complainant’s registered trademarks.
Respondent
is using the newest affiliate marketing principle to help the internet users
find the right product on Harry Potter quickly and without hassle. Respondent has a full fledged website
running and is using the affiliate marketing technology to help the internet
community and not to trade off Complainant’s goodwill.
Respondent
has a full-fledge website running under the domain name. Respondent’s domain name does not offer any
goods or services. It merely links other internet websites, including a link to
Complainant’s web site.
Respondent
has clearly identified itself as a separate entity with no affiliation with
Complainant. The Internet community will read the following message first
before even browsing Respondent’s domain name.
“<www.harrypottercollection.com> is not an official website of
Harry Potter or Warner Bros. To visit the official website of Harry Potter, go
to <www.harrypotter.com>.”
Respondent
never offered to sell the domain name to Complainant. The correspondence never says
that Respondent was offering to sell. Hence, the claim made by Complainant is
wrong, misdirected and misleading. Upon
Complainant’s request, Respondent only stated the numbers for transfer of the
domain name to stop the continuous threats of Complainant.
C.
Additional Submissions
Complainant
Respondent
notes a disclaimer, but does not even attempt to argue that the disclaimer
(which only links from the home page) is sufficient to avoid a finding of
confusing similarity.
Unlike
the word “sucks” or “other language clearly indicating that the domain name is
not affiliated with the trademark owner,” the word “collection” is clearly
intended to reinforce a connection with the underlying trademark.
Respondent
concedes his commercial purpose and the critical or parodic purpose (that might
otherwise argue against confusing similarity) is absent here.
Respondent
asserts that it makes a legitimate use of the website. In so doing, Respondent does not argue (and,
by implication, concedes) that he has no relationship or affiliation with
Complainant, that he derives no right to use the trademark from Complainant and
that he is not otherwise known by the domain name or Trademark. Respondent expressly acknowledges that the site
to which the domain name resolves “is not an official website.”
Respondent
asserts that the “newest affiliate marketing principle” constitutes a
legitimate use. In making this
argument, he admits facts which evidence the absence of a legitimate use. In particular, he acknowledges that his
entire purpose is to link Internet users to websites which sell Harry Potter
product, websites with which Respondent is affiliated and from which he derives
income.
The
business model described by Respondent has been addressed and squarely rejected
as a legitimate use. Respondent directs
Internet users to pages unaffiliated with, unrelated to and unsponsored by
Complainant. In particular, Respondent
“parks” his domain and lists links to sites admittedly unrelated to
Complainant, from which he can be presumed to derive a commercial reward.
Respondent
does not dispute and, to the contrary, concedes that he seeks to divert
Internet traffic through use of a domain name fully incorporating Complainant’s
Trademark. Bad faith is, accordingly
present pursuant to Section 4(b)(iv) of the Policy regardless of any finding on
the offer to sale.
Respondent
There
is no way a user will confuse Complainant’s trademark with <www.harrypottercollection.com>
which cannot be visited as a result of a consumer’s initial interest in
Complainant’s trademark.
The
word collection means an accumulation of objects gathered for study,
comparison, or exhibition or as a hobby.
A citizen has legal right to gather any object for study, or comparison
or exhibition or as a hobby without taking permission. Anyone can do a study on Wal-Mart without
actually taking any permission from Wal-Mart.
Complainant
accuses Respondent of no legitimate interest in the domain name, while
Complainant also states that Respondent has commercial intent for the website.
Complainant’s two statements are contradictory and negate each other.
It
is legitimate to link other websites when one has permission to use the link
from the individual websites.
Complainant
asserts “Respondent directs Internet users to pages,” which implicitly means
that Complainant acknowledges that there is underlying value in helping users
to be directed to relevant links, per their wish as to where they would like to
go.
Complainant
asserts that linked sites are “unaffiliated, unsponsored and unrelated”. This assertion is false and all links are
related.
Respondent
agrees that the amount mentioned in the two submissions of Complainant is
correct. But the facts presented are
very twisted. On May 11, 2004,
Respondent spoke to Mr. J. Andrew Coombs who mentioned the out-of-pocket
expense. Respondent said that he has
invested about 1000 hours of personal time in building up the website. Mr.
Coombs then asked Respondent to put a value to it, for which Respondent said
$25,000. Respondent never demanded that amount.
Respondent
felt it necessary to write the numbers down so that Complainant would stop
e-mailing and pressurizing Respondent to transfer the domain name. Complainant used pressure tactics to force
Respondent to write the e-mail in order to malign and frame Respondent for bad
faith.
FINDINGS
For the reasons set forth below, the Panel finds
Complainant has proved that the domain name should be transferred.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform domain name
Dispute Resolution Policy (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.”
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;
(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 holds various registrations for the
HARRY POTTER mark. The Panel finds that
these registrations establish rights under the Policy. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S.
trademark law, registered marks hold a presumption that they are inherently
distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive, and Respondent has the burden of refuting this assumption).
The Panel finds that Respondent’s <harrypottercollection.com> domain name is
confusingly similar to Complainant’s HARRY POTTER mark because adding the
generic word “collection” does not significantly distinguish the domain name
from the mark. See Mattel, Inc. v. Culbertson, FA 208578 (Nat. Arb. Forum Dec. 19,
2003) (finding Respondent’s <hotwheelcollector.com> domain name to be
confusingly similar to Complainant’s HOT WHEELS mark); see also Mattel, Inc.
v. Rukes, FA 99678 (Nat. Arb. Forum Oct. 31, 2001) (finding Respondent’s
<barbiecollectible.com>, <barbiecollectors.com>, <barbiedollcollectors.com>,
<collectablebarbie.com>, and <collectiblebarbie.com> domain names
to be confusingly similar to Complainant’s BARBIE mark).
Complainant
has proven this element.
Respondent has
registered the domain name to link to other websites, joining the affiliate
programs of sites that sell HARRY POTTER products. The Panel infers that Respondent makes an income from joining
affiliate programs. The Panel finds
that registering a domain name that is confusingly similar to another’s mark to
generate revenues through affiliate programs is not a bona fide offering or
goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial
or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See
WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12,
2003) (finding that Respondent’s use of the disputed domain name to redirect
Internet users to websites unrelated to Complainant’s mark, websites where
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 Black
& Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June
24, 2002) (holding that Respondent’s use of the disputed domain name to
redirect Internet users to commercial websites, unrelated to Complainant and
presumably with the purpose of earning a commission or pay-per-click referral
fee did not evidence rights or legitimate interests in the domain name).
Respondent has
not submitted any evidence or averred that it is commonly known by the disputed
domain name. The Panel finds that
Respondent is not commonly known by the <harrypottercollection.com> domain name
pursuant to Policy 4(c)(ii). See Tercent Inc.
v. 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 Respondent does not have rights in a domain name when
Respondent is not known by the mark).
Complainant has proven this element.
The Panel finds that Respondent’s use of
Complainant’s mark exhibits bad faith registration and use pursuant to Policy ¶
4(b)(iv) because Respondent is relying on confusion to create commercial
gain. See State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept.
12, 2000) (finding bad faith where Respondent registered the domain name
<bigtex.net> to infringe on Complainant’s goodwill and attract Internet
users to Respondent’s website); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb.
Forum Oct. 11, 2000) (finding that Respondent registered the domain name
<statefarmnews.com> in bad faith because Respondent intended to use
Complainant’s marks to attract the public to the web site without permission
from Complainant).
Complainant has proven this element.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <harrypottercollection.com>
domain name be TRANSFERRED from Respondent to Complainant.
Judge Karl V. Fink (Ret.), Panelist
Dated: September 21, 2004
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