DECISION

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.

Identical and/or Confusingly Similar

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.

Rights or Legitimate Interests

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.

Registration and Use in Bad Faith

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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