Warner Bros. Entertainment Inc. v. SCS Collectibles
Claim Number: FA0603000661419
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 91203-2349. Respondent is SCS Collectibles (“Respondent”), 322 Westport Avenue, Norwalk, CT 06851.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <harrypotterville.com>, registered with Bulkregister, LLC.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 16, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 17, 2006.
On March 20, 2006, Bulkregister, LLC confirmed by e-mail to the National Arbitration Forum that the <harrypotterville.com> domain name is registered with Bulkregister, LLC and that Respondent is the current registrant of the name. Bulkregister, LLC has verified that Respondent is bound by the Bulkregister, LLC 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 March 21, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 10, 2006 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@harrypotterville.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 14, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <harrypotterville.com> domain name is confusingly similar to Complainant’s HARRY POTTER mark.
2. Respondent does not have any rights or legitimate interests in the <harrypotterville.com> domain name.
3. Respondent registered and used the <harrypotterville.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Warner Bros. Entertainment Inc., is the owner of all copyrights and trademarks for the HARRY POTTER mark. Complainant sells, markets, and promotes various media content under the HARRY POTTER mark, including popular children’s books, feature films and miscellaneous merchandise. Complainant has continuously and extensively used the HARRY POTTER mark in connection with entertainment services since at least 1998, when it published the first book under the mark.
Complainant has registered the HARRY POTTER mark with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 2,450,787 issued May 15, 2001, filed December 22, 1999; Reg. No. 2,450,788 issued May 15, 2001, filed December 22, 1999; Reg. No. 2,479,341 issued August 21, 2001, filed December 22, 1999; Reg. No. 2,493,484 issued September 25, 2001, filed December 22, 1999).
Respondent registered the <harrypotterville.com> domain name on July 9, 2000. Respondent is using the disputed domain name to operate a competing website that prominently displays Complainant’s HARRY POTTER mark and features links to various content associated with the mark, including websites that sell Complainant’s products. Respondent’s website contains a small disclaimer on the top of the page stating that it is an independent website to promote the HARRY POTTER community and Respondent’s store, SCS Collectibles, and is not affiliated in any way with Complainant.
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 established rights to the HARRY POTTER mark by filing for a trademark registration of the mark with the USPTO on December 22, 1999, before Respondent registered the <harrypotterville.com> domain name on July 9, 2000. 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 Complainant’s trademark rights date back to the application’s filing date).
Respondent’s <harrypotterville.com>
domain name is confusingly similar to Complainant’s HARRY POTTER mark pursuant
to Policy ¶ 4(a)(i), because it wholly incorporates the mark and merely adds
the generic term “ville” and the generic top-level domain “.com.” Panels have held that the mere addition of
generic terms to a complainant’s mark does not negate a finding of confusing
similarity pursuant to Policy ¶ 4(a)(i).
See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409
(WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary
descriptive word . . . nor the suffix ‘.com’ detract from
the overall impression of the dominant part of the name in each case, namely
the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Arthur
Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar.
23, 2001) (finding confusing similarity where the domain name in dispute
contains the identical mark of the complainant combined with a generic word or
term). Furthermore,
Complainant provides evidence of previous panels that have found domain names
incorporating Complainant’s HARRY POTTER mark to be confusingly similar to the
mark. See Warner Bros. Entm’t Inc.
v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition
of generic terms to Complainant’s HARRY POTTER mark in the respondent’s
<shop4harrypotter.com> and <shopforharrypotter.com> domain names
failed to alleviate the confusing similarity between the mark and the domain
names); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb.
Forum Sept. 21, 2004) (finding that the addition of the generic term
“collection” to Complainant’s HARRY POTTER mark failed to distinguish the
domain name from the mark). Therefore,
Respondent’s <harrypotterville.com> domain name is confusingly
similar to Complainant’s HARRY POTTER mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and
legitimate interests in the <harrypotterville.com> domain
name. Complainant must first make a prima
facie case in support of its allegations, and then the burden shifts to
Respondent to show it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). See 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); see also G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission
constitutes a prima facie case under the Policy, the burden effectively
shifts to Respondent. Respondent’s failure to respond means that Respondent has
not presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <harrypotterville.com>
domain name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure
to respond can be construed as an admission that they have no legitimate
interest in the domain names); see also Geocities v. Geocities.com, D2000-0326 (WIPO June 19, 2000)
(finding that the respondent has no rights or legitimate interests in the
domain name because the respondent never submitted a response or provided the
panel with evidence to suggest otherwise).
However, the Panel will now examine the record
to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent has registered the domain name under the name “SCS
Collectibles,” and there is no other evidence in the record suggesting that
Respondent is commonly known by the <harrypotterville.com> domain
name. Thus, Respondent has not
established rights or legitimate interests in the <harrypotterville.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See 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); see also 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).
Moreover, Respondent’s <harrypotterville.com>
domain name, which includes Complainant’s HARRY POTTER mark, resolves to a
website prominently displaying Complainant’s mark and featuring links to various
third-party websites that sell Complainant’s products under the HARRY POTTER
mark. Respondent is redirecting
Internet users seeking Complainant’s products under the HARRY POTTER mark to
other websites, and it presumably profits from this diversion scheme. Therefore, Respondent is not using the <harrypotterville.com>
domain name 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). See Glaxo Group
Ltd. v. WWW Zban, FA 203164 (Nat. Arb.
Forum Dec. 1, 2003) (finding that the respondent was not using the domain name
within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used
the domain name to take advantage of the complainant's mark by diverting
Internet users to a competing commercial site); see also Bank of Am. Corp.
v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003)
(“Respondent's demonstrated intent to divert Internet users seeking
Complainant's website to a website of Respondent and for Respondent's benefit
is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it
is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <harrypotterville.com>
domain name, which includes Complainant’s HARRY POTTER mark, to redirect
Internet users seeking Complainant’s products under the mark to its own website
that displays Complainant’s mark and contains links to other websites selling
Complainant’s products under the HARRY POTTER mark. Respondent likely receives
click-through fees for each consumer it diverts to other websites and is,
therefore, taking advantage of the confusing similarity between the disputed
domain name and Complainant’s mark.
Such use of the disputed domain name to profit from the goodwill
associated with Complainant’s mark is indicative of bad faith registration and
use under Policy ¶ 4(b)(iv). See
Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if
the respondent profits from its diversionary use of the complainant's mark when
the domain name resolves to commercial websites and the respondent fails to
contest the complaint, it may be concluded that the respondent is using the
domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Am.
Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21,
2000) (finding bad faith where the respondent registered and used a domain name
confusingly similar to the complainant’s mark to attract users to a website
sponsored by the respondent).
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 <harrypotterville.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 28, 2006
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