DECISION

Warner Bros. Entertainment Inc. v. Chris Sadler

Claim Number:  FA0404000250236

PARTIES

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.

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.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

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.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

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.

FINDINGS

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.

DISCUSSION

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.

Identical and/or Confusingly Similar

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).

Rights or Legitimate Interests

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).

Registration and Use in Bad Faith

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, [2002] USCA9 115; 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).

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 <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

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/581.html