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Joanne Rowling v. Alvaro Collazo [2004] GENDND 1473 (22 November 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Joanne Rowling v. Alvaro Collazo

Case No. D2004-0787

1. The Parties

The Complainant is Joanne Rowling, London, United Kingdom of Great Britain and Northern Ireland, represented by Addleshaw Goddard, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Alvaro Collazo, Tarariras, Colonia, Uruguay.

2. The Domain Names and Registrar

The disputed domain names <kjkrowling.com> and <www-jkrowling.com> are registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

3. Procedural History

3.1. Issuing of the Complaint

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2004.

3.2. Confirmation on registration detail

On September 30, 2004, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain names at issue. On September 30, 2004, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

3.3. Formal requirements compliance check

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

The Panel independently determined and agreed with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Rules and the Supplemental Rules.

3.4. Notification of the Respondent

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 5, 2004.

In accordance with the Rules, paragraph 5(a), the Notification specified October 25, 2004 as the due date for the submission of the Response.

Paragraph 2(a) of the Rules provides that it is the provider’s responsibility to employ reasonably available means to achieve actual notice of the Complaint to the Respondent. The Panel accepts that, in the light of the information available to it, the Center has fulfilled this obligation.

3.5. Filing a Response

The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2004.

3.6. Constitution of the Administrative Panel

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on November 9, 2004. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The projected decision date is November 23, 2004.

The Panel finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.

3.7 Language of the Proceedings

The Panel considers that, according to paragraph 11 of the Rules, the language of the proceedings is English.

4. Factual Background

The Complainant is the author of the following books, well known throughout the world: Harry Potter and the Philosopher Stone (first published in 1997), Harry Potter and the Chamber of Secrets (1998), Harry Potter and the Prisoner of Azkaban (1999), Harry Potter and the Goblet of Fire (2000), and Harry Potter and the Order of Phoenix (2003), collectively called herein the “Harry Potter Books”. All of the books were published under the name J K ROWLING. The Harry Potter Books have been translated into 61 languages and sold in over 200 countries.

The Complainant has since 1997 used and continues to use the mark J K ROWLING for classes of goods and services 9, 16, 25 and 28 and registered the mark for all or some of the classes mentioned in a large number of territories including, inter alia, the United Kingdom on December 22, 1999, with number 22218081, the European Union on March 2, 2000, with number E154493, Argentina on October 23, 2001, with number 1.840.747, Australia on March 21, 2000, with number 828604, and New Zealand on September 21, 2000, with number 610812, with effect as of December 22, 1999.

The first three Harry Potter books have been made into films (the Harry Potter films) by Warner Bros, which have been seen by millions of cinema goers worldwide. They have been distributed in video cassette and DVD format. The Harry Potter films are made with the approval of the Complainant and have been extensively marketed worldwide referring to the mark J K ROWLING.

The Complainant’s name is well known in connection with the Harry Potter books and films and has appeared in a series of television shows and discovery documentaries. Use of the mark J K ROWLING has come to be recognized by the general public as indicating an association with the Complainant and her literary works and the film adaptations thereof.

The Respondent registered both the disputed domain names on May 28, 2004. On the Respondent’s websites “www.www-jkrowling.com” and “www.”kjkrowling.com”, the following information appears: “This domain is registered at Dot.Registrar.com by a customer and parked temporarily. To contact the owner of the domain name …please email: [e-mail address].”

By accessing the two domain names, the Internet users are directed to the domain parking facility provided by the concerned registrar Dot.Registrar.com and are then bombarded with unsolicited pop-up advertisements for a variety of goods and services totally unrelated to the registrar’s business.

The facts above are drawn from the appendixes to the Complaint but also from the research performed by the Panel on the Internet.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the domain names registered by the Respondent <www-jkrowling.com> and <kjkrowling.com> are confusingly similar to the mark J K ROWLING in which the Complainant has rights. In the case of <www-jkrowling.com>, the Respondent has deliberately added to the mark the prefix ‘www-’, which, in the opinion of the Complainant, is a commonly used typosquatting method considered in several cases under the Policy. In the case of <kjkrowling.com>, an extraneous letter K has been added to the beginning of the mark, K being the letter immediately to the right of J on a standard keyboard, which again, has been considered by several Panels under the Policy as being a misspelling which takes advantage of the proximity of two letters on keyboard and creates confusing similarity with the Complainant’s mark.

According to the Complainant, the Respondent should be considered as having no rights or legitimate interests in respect of the domain names <www-jkrowling.com> and <kjkrowling.com>. The Respondent is neither the owner nor the licensee of any rights in the mark J K ROWLING. The Respondent has not been commonly known by either of the domain names. The Complainant also contends that there is no evidence, whether before or after notice to the Respondent of the dispute, of the Respondent’s use of, or demonstrable preparations to use the domain names, or a name corresponding to the domain names in connection with a bona fide offering of goods or services, and that the Respondent is not making a legitimate non-commercial fair use of the domain names.

Finally, the Complainant contends that the domain names were registered and are being used in bad faith, taking into consideration:

• the redirection of the Respondent’s domain names to a parking site were the Internet user is bombarded with unsolicited pop-up advertisements for a variety of goods and services, from which the Respondent may benefit financially. If this is not the case, the mere information “This domain is registered at Dot.Registrar.com by a customer and parked temporarily. To contact the owner of the domain name …please email: [e-mail address]”, posted on the domain names’ parking sites represents use in bad faith of the disputed domain names,

• the typosquatting which characterizes the two disputed domain names,

• the previous history of the Respondent as a typosquatter,

• the passive holding of the disputed domain names,

• the declared intent of the Respondent, revealed in other cases of typosquatting where the Respondent was involved in the same capacity, to earn money from registering domain names similar to trademarks,

• the Respondent’s failure to reply to Complainant’s correspondence.

B. Respondent

The Respondent failed to reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

A.1. The Complainant’s trademark or service mark rights

The Complainant is the author of the “Harry Potter Books”, all of them published under the name “J K Rowling”. The fact that the Harry Potter Books have been translated into 61 languages and sold in over 200 countries, and also the making and marketing of the Warner Bros Harry Potter films, made the J K ROWLING trademark well known world wide.

The Complainant has since 1997 used and continues to use the mark J K ROWLING for classes of goods and services 9, 16, 25 and 28 and registered the mark for all or some of the classes mentioned in a large number of countries.

A search on the Internet for the name of “J K Rowling” resolves to hundreds of sites where the Complainant’s literary works and the film adaptations are mentioned. BBC News World Edition online updated September 1, 2004, provides several online articles on what is called the “Harry Potter Phenomenon”, in which the name “J K Rowling” is mentioned.

Having said the above, the Panel concludes that the Complainant has both registered and common law trademark and service mark rights in the mark J K ROWLING.

A.2. The similarity of the mark J K ROWLING with the disputed domain name <www-jkrowling.com>

In the case of <www-jkrowling.com>, the Respondent has deliberately added to the Complainant’s mark the prefix “www-”, which is, as the Complainant contends, a commonly used typosquatting method, making the disputed domain name confusingly similar to the mark in which the Complainant has rights. This finding is supported by the fact that there is a phonetic similarity between the disputed domain name and the official website of the Complainant. The Panel notes the decisions in several cases under the Policy in which adding the prefix “www-” to a complainant’s mark was condemned as typosquatting (AT&T Corp. v. Byeong Deog Im, WIPO Case No. D2004-0026; CTV Television Inc. v. ICANADA CO., WIPO Case No. D2000-1407; Viacom International Inc. v. Erik Peterson, WIPO Case No. D2001-0346).

A.3. The similarity of the mark J K ROWLING with the disputed domain name <kjkrowling.com>

In the case of <kjkrowling.com>, an extraneous letter K has been added to the beginning of the mark, K being the letter immediately to the right of J on a standard keyboard. This kind of misspelling takes advantage of the proximity of two letters on the keyboard and creates, as the Complainant contends, confusing similarity with the mark. The Complainant’s mark is not descriptive but is highly distinctive. As other Panels have decided under the Policy (see Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441), a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the complainant’s mark. Therefore, the Panel concludes that there is a confusing similarity between the Complainant’s mark and the disputed domain name <kjkrowling.com>.

B. Rights or Legitimate Interests

As the Complainant contends, the Respondent has no rights or legitimate interests in respect of the domain names <www-jkrowling.com> and <kjkrowling.com>. The Respondent has not been commonly known by either of the domain names. The Respondent is neither the owner nor the licensee of any rights in the mark J K ROWLING. The Complainant also contends that there is no evidence, whether before or after notice to the Respondent of the dispute, of the Respondent’s use of, or demonstrable preparations to use, the disputed domain names, or a name corresponding to disputed domain names in connection with a bona fide offering of goods or services and that the Respondent is not making a legitimate non-commercial fair use of the disputed domain names.

The findings of the Panel are based on the Complainant’s supported contentions. The Respondent failed to provide any evidence of rights and legitimate interests.

C. Registered and Used in Bad Faith

The Complainant contends that several aspects related to the disputed domain names are to be considered as evidence of bad faith registration and use of the domain names. These include the redirection of the Respondent’s domain names to a parking site where the Internet user is then bombarded with unsolicited pop-up advertisements for a variety of goods and services, from which the Respondent may benefit financially; the typosquatting history of the Respondent; the passive holding of the disputed domain names; the declared intent of the Respondent, revealed in other cases of typosquatting where the Respondent was involved, to earn money from registering domain names; and the Respondent’s failure to reply to correspondence.

A number of these aspects taken together represent evidence of bad faith registration and use of the disputed domain names:

The redirection of the Respondent’s domain names to a parking site where the Internet user is then bombarded with unsolicited pop-up advertisements for a variety of goods and services, from which the Respondent may benefit financially can represent bad faith.

The parking of a domain name by itself does not necessarily represent evidence of bad faith registration and use of the domain name. However, the display of the unsolicited pop-up advertisements for a variety of goods and services on the disputed domain names sites may represent evidence of bad faith in the sense of paragraph 4(b)(iv) of the Policy if the Respondent benefits financially from it.

The typosquatting which characterizes the two disputed domain names.

Typosquatting is a practice condemned by many Panels under the Policy, but it has to be interpreted and applied to the circumstances of each case within the general framework of paragraph 4 of the Policy.

The previous history of the Respondent as a typosquatter.

The Respondent has a long history as a typosquatter and has already had several decisions made against him, including: Expedia, Inc v. Alvaro Collazo, WIPO Case No. D2003-0716, TV Globo Ltda v. Alvaro Collazo, WIPO Case No. D2003-1013, Bank of America v. Alvaro Collazo, NAF Case No. FA0403000248681, The Neiman Marcus Group, Inc. v. Alvaro Collazo, NAF Case No. FA0403000248954, Société Air France v. Alvaro Collazo, WIPO Case No. D2003-0417. The Respondent’s history as a strong typosquatter creates a strong presumption in this case that the Respondent registered and used the disputed domain names in bad faith.

The declared intent of the Respondent, revealed in other cases of typosquatting where the Respondent was involved, to earn money from registering special domain names.

Such an intent found in other UDRP cases, together with the Respondent’s use of typosquatting methods, is a further indication of the registration and use in bad faith of the disputed domain names.

The Respondent’s failure to reply to correspondence.

The Respondent’s failure to reply to the correspondence initiated by the Complainant’s representative does not alone amount to registration and use in bad faith of the disputed domain names. Nevertheless, taken together with the other aspects contended by the Complainant, this can be considered a further indication of bad faith.

Taking into account the fame of the Complainant’s mark, the use of the disputed domain names and the Respondent’s pattern of conduct, the Panel finds, on the balance of probabilities, that the disputed domain names were registered and used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <www-jkrowling.com> and <kjkrowling.com> be transferred to the Complainant.

Beatrice Onica Jarka
Sole Panelist

Date: November 22, 2004