DECISION

 

Warner Bros. Entertainment Inc. v. Sharon Jerome / Michaelis Events, LLC

Claim Number: FA2309002064214

PARTIES

Complainant is Warner Bros. Entertainment Inc. ("Complainant"), represented by Annie Allison of Haynes and Boone, LLP, New York, USA. Respondent is Sharon Jerome / Michaelis Events, LLC ("Respondent"), represented by Amy Sullivan Cahill of Vice Cox & Townsend PLLC, Kentucky, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <worldofwizarding.com>, registered with GoDaddy.com, LLC.

 

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.

 

Dennis A. Foster as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 29, 2023; Forum received payment on September 29, 2023.

 

On October 2, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <worldofwizarding.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On October 9, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@worldofwizarding.com. Also on October 9, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on October 25, 2023.

 

An Additional Submission from Complainant was received on October 26, 2023. This Additional Submission complied with Supplemental Rule 7, and will be considered by the Panel in its decision below. On October 31, 2023, an Additional Submission from Respondent was received. This Additional Submission complied with Supplemental Rule 7, and will also be considered by the Panel in its decision below.  On October 27, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dennis A. Foster as Panelist.

 

On November 10, 2023, the Panel issued Procedural Order No. 1 requesting the Respondent to re-submit its Additional Submission in pdf format and extending the Decision due date to November 17, 2023. On November 13, 2023, the Respondent complied.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

 

RELIEF SOUGHT

Complainant requests that the disputed domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

- Complainant is a fully integrated, broad-based entertainment company that produces feature film, television and home entertainment products for worldwide distribution. One of Complainant's most successful franchises involves movies based on the famous, best-selling Harry Potter novels authored by J. K. Rowling. As a result, Complainant offers a multitude of products under this franchise that are marketed under Complainant's WIZARDING WORLD marks that are registered with several authorities, including the United States Patent and Trademark Office ("USPTO"). Complainant also conducts a portion of this franchise business under its <wizardingworld.com> domain name.

 

- The disputed domain name, <worldofwizarding.com>, is confusingly similar to Complainant's WIZARDING WORLD service mark. The disputed domain name includes both words contained in Complainant's mark and merely inverts them, which does not mitigate confusion. Also, the insertions of the common word "of" and the ".com" generic Top Level Domain ("gTLD") fail to create a meaningful distinction.

 

- Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not affiliated with Complainant and has not received authorization from Complainant to use its mark in any manner. There is no suggestion that Respondent is commonly known as the disputed domain name. Complainant fails to use the disputed domain name for a bona fide offering of goods or services or for legitimate noncommercial or fair use, because the disputed domain name leads to a website that offers tickets to services and merchandise that suggest an association with Complainant's mark and thus infringe on and compete with Complainant's offerings. Respondent's disclaimer, posted on the bottom of Respondent's webpage attached to the disputed domain name, does not legitimize Respondent's use of the disputed domain name.

 

- Respondent registered and is using the disputed domain name in bad faith. Respondent clearly had knowledge of Complainant's WIZARDING WORLD service mark when registering the disputed domain name. Moreover, Respondent is using the disputed domain name purposely to disrupt Complainant's business by offering competitive products. Respondent is also attempting to gain commercially due to the likely confusion between the disputed domain name and Complainant's trademark as to the ownership of the website connected to the disputed domain name.

 

B. Respondent

- Respondent is an event-planning agency that for nine years has hosted a holiday event called "A Wizard's Christmas."  This event features a fictional place in the magical world called the Alabaster School of Witchcraft and Wizardry, which offers dinner, theater-style performance and a marketplace with magical shops, boutiques and food. It is marketed to audiences that include fans of books and films relating to Harry Potter, Lord of the Rings, Percy Jackson and The Hobbit.

 

- The disputed domain name is not confusingly similar to any of Complainant's marks. None of those marks and the disputed domain name are exactly the same and, in comparison, they create distinct commercial impressions with no likelihood of confusion.

 

- Respondent has rights or legitimate interests in the disputed domain name because it is used in connection with a bona fide offering of goods and services. Respondent uses the disputed domain name for entertainment goods and services involving its registered ALABASTER SCHOOL OF WITCHCRAFT & WIZARDRY service mark.

 

- Respondent registered and is using the disputed domain name in good faith. The disputed domain name was registered and is being used for Respondent's bona fide offering of entertainment goods and services in connection with its "A Wizard's Christmas" event and other related events.

C. Complainant's Additional Submission

- The disputed domain name and Complainant's marks do not create distinct commercial impressions because a mere inversion of terms fails to create such a distinction. Moreover, the confusion between the disputed domain name and the marks is increased due to Respondent's website that trades on the globally famous Wizarding World and Harry Potter franchises.

 

- Respondent uses the disputed domain name to promote an event, "A Wizard's Christmas," and other events that are designed to attract fans of the Harry Potter franchise, clearly infringing on Complainant's marks and competing with Complainant's offerings. That use of the disputed domain name, to market goods and services that compete with those of Complainant, is not "a bona fide offering of goods and services" consistent with the Policy.

 

- Respondent's argument that it registered the disputed domain name in good faith because registration occurred before notice from Complainant is invalid. Also, the claim that the events promoted under the disputed domain name have existed since 2016 is irrelevant, because Complainant's marks have been well-known since 2010.

 

- Respondent's reference to a disclaimer attached to the website connected to the disputed domain name is insufficient to establish good faith registration and use of the disputed domain name.

 

D. Respondent's Additional Submission

 

The Respondent has submitted proof of its USPTO registration of the service mark A WIZARD'S CHRISTMAS, Reg. No. 7,206,552 dated October 31, 2023; and proof of its USPTO registration of the service mark ALABASTER SCHOOL OF WITCHCRAFT & WIZARDRY and Design, Reg. No. 6610507 dated January 11, 2023.

 

FINDINGS

Complainant is an established film and television production company based in the USA that has existed for many years. One of its successful productions involves a motion picture with sequels based on the well-known Harry Potter novels. In conjunction with marketing many products related to this franchise, Complainant has registered the WIZARDING WORLD service mark with several authorities, including the USPTO (e.g., Registration No. 6096860; registered July 7, 2020).

 

Respondent is the owner of the disputed domain name <worldofwizarding.com>, which was registered on April 15, 2021. The disputed domain name is attached to a website that promotes various goods and services pertaining to imaginative fictional places and characters.  The Respondent also is the owner of the service mark A WIZARD's CHRISTMAS and the service mark ALABASTER SCHOOL OF WITCHCRAFT & WIZARDRY and Design whose details are supra. 

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 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

 

Having presented the Panel with appropriate evidence of a valid USPTO registration for the WIZARDING WORLD service mark, Complainant has established sufficient rights in that mark to satisfy Policy ¶ 4(a)(i). See Time Warner Inc. v. Above.com Domain Privacy, FA 1585358 (Forum Dec. 10, 2014) ("Complainant's USPTO registrations satisfactorily evidence the required Policy ¶4(a)(i) rights in the marks."); see also Innomed Technologies, Inc. v. DRP Services, FA 221171 (Forum Feb. 18, 2004) ("Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.").

 

In examining the disputed domain name, <worldofwizarding.com>, the Panel can see plainly that it is not identical to the WIZARDING WORLD mark. However, the differences between the two are not significant because the disputed domain name contains both terms of that mark. Those two terms, "wizarding" and "world," are inverted in the disputed domain name as compared with the service mark, and the generic term "of" is added along with the ".com" gTLD. The Panel finds that these differences do not prevent confusing similarity between the disputed domain name and the mark. Moreover, the website connected with the disputed domain name contains fanciful materials and goods that are consistent with the materials and goods offered by Complainant under its service mark, thereby increasing the degree of confusion that internet users might encounter. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant's service mark per Policy ¶ 4(a)(i). See University of Richmond v. Lunsford, FA 1989143 (Forum Apr. 20, 2022) (finding <richmonduniversity.com> to be confusingly similar to the UNIVERSITY OF RICHMOND mark, while stating "...the inversion of the terms 'university' and 'richmond' and the omission of the word 'of' are insufficient to distinguish the domain name from the mark."); see also PFIP, LLC v. Planet Fitness, FA 1491578 (Forum May 10, 2013) (finding <fitnessplanetonline.com>, among other disputed domain names, to be confusingly similar to the PLANET FITNESS mark).

 

As a consequence, the Panel finds that Complainant has demonstrated that the disputed domain name is identical or confusingly similar to a service mark in which Complainant has rights.

 

Rights or Legitimate Interests

 

As a respondent in a UDRP proceeding is in the best position to present evidence of rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case that those rights or legitimate interests do not exist, the burden of proof shifts to that respondent to demonstrate its rights or legitimate interests in the disputed domain name. See Neal & Massey Holdings Limited v. Ricks, FA 1549327 (Forum Apr. 12, 2014); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006).  In this case, Complainant has sustained a prima facie case by establishing that the disputed domain name is confusingly similar to its service mark and that Respondent is not authorized by Complainant to use that mark.

 

In rebuttal to Complainant's prima facie case, Respondent contends that it is using the disputed domain name in connection with "a bona fide offering of goods and services" per Policy ¶ 4(c)(i). However, the Panel finds that the goods offered for sale on Respondent's website attached to the disputed domain name are quite similar to those offered by Complainant under its service mark. This becomes very clear when Respondent references Harry Potter fans as a target internet user audience, the same audience that Complainant targets. Many prior Policy panels have decided that offering competing products via a domain name that is confusingly similar to a complainant's mark fails to constitute "a bona fide offering of goods and services" under Policy ¶ 4(c)(i), and the Panel is in agreement with those decisions. See Pink Jeep Tours, Inc. v. Conaway, FA 1564779 (Forum July 23, 2014) ("Respondent's use of the <pinkjeeptours.us> domain name to promote a business that is directly competing with Complainant's business is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.") see also Florists' Transworld Delivery v. Malek, FA 676433 (Forum June 6, 2006).

 

Given that Respondent has failed to successfully rebut Complainant's prima facie case, the Panel finds that the prima facie case is conclusive.

 

Accordingly, the Panel finds that Complainant has established that Respondent has no rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

 

Policy ¶ 4(b) lays out four specific circumstances that can lead to a finding of bad faith registration and use of a disputed domain name, including:

 

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

 

The Panel has found above that the disputed domain name is confusingly similar to Complainant's mark and that the website connected to the disputed domain name offers competing goods and services for sale. Therefore, the Panel concludes that Respondent is intentionally attempting to attract, for commercial gain, internet users based on the likelihood of confusion with Complainant's WIZARDING WORLD mark as to the source, sponsorship, affiliation or endorsement of that website in bad faith pursuant to Policy ¶ 4(b)(iv). See Home Box Office, Inc. v. porter, FA 2038411 (Forum May 17, 2023); see also Xylem Inc. v. YinSi BaoHu Yi KaiQi, FA 1612750 (Forum May 13, 2015) ("The Panel agrees that Respondent's use of the website to display products similar to Complainant's, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).").

 

Respondent has contended that a disclaimer, disavowing connection with Complainant and placed at the bottom of one page of the website attached to the disputed domain name, is sufficient to mitigate a finding of bad faith registration and use of the disputed domain name by Respondent. However, the Panel notes that the disclaimer is barely noticeable and that Respondent admits creating that disclaimer only after having been recently contacted by Complainant. Thus, in accordance with prior Policy decisions, the Panel decides that the disclaimer does not affect the Panel's finding of bad faith in this case. See Google LLC v. Adrian Ionescu, FA 1761717 (Forum Jan. 8, 2018) ("The mere existence of a disclaimer does not mitigate a respondent's bad faith actions, particularly if it is inconspicuous, per Policy ¶ 4(a)(iii)."); see also Thirty & Co. v. Jake Marcum, D2016-1212 (Wipo Aug. 16, 2016) ("Rather than curtail consumer confusion, the nearly undetectable disclaimer at the bottom of Respondent's webpage merely confirms Respondent's knowledge and bad faith disregard of Complainant's rights.").

 

Therefore, the Panel finds that Complainant has proved that the disputed domain name was registered and is being used in bad faith.

 

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 <worldofwizarding.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Dennis A. Foster, Panelist

Dated: November 17, 2023