Warner Bros. Entertainment Inc. v. Karl Allberg
Claim Number: FA2002001881913
Complainant is Warner Bros. Entertainment Inc. (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, United States. Respondent is Karl Allberg (“Respondent”), Sweden.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dumbledore.com>, registered with Porkbun 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.
Gerald M. Levine, as Panelist
Complainant submitted a Complaint to the Forum electronically on February 4, 2020; the Forum received payment on February 4, 2020.
On February 5, 2020, Porkbun LLC confirmed by e-mail to the Forum that the <dumbledore.com> domain name is registered with Porkbun LLC and that Respondent is the current registrant of the name. Porkbun LLC has verified that Respondent is bound by the Porkbun 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 February 6, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 26, 2020 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 @dumbledore.com. Also on February 6, 2020, 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 February 10, 2020.
On February 11, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Gerald M. Levine as Panelist.
Complainant filed an Additional Submission to the Forum on February 11, 2020, alleging that “Respondent appears to be in the business of purchasing multiple domains--some of which are offered for sale to the public, some of which are pay-per-click sites, some of which are parked, and some of which are brand-based--with the intent to resell the domains and make a profit.”
Respondent filed an Additional Submission on February 12, 2020 countering the assertions made in Complainant’s Additional Submission.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under ¶ 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 domain name be transferred from Respondent to Complainant.
A. Complainant
Warner Bros. Inc.’s (“Complainant”) is the rights-holder of several trademarks containing the word “Dumbledore.” It asserts that <dumbledore.com> is confusingly similar to its registered marks, the earliest of which ALBUS DUMBLEDORE, dates from 2003. Complainant does not claim to have a trademark for “Dumbledore” standing alone. Other marks include DUMBLEDORE’S ARMY and PROFESSOR DUMBLEDORE. Complainant asserts that it is the sole and exclusive owner of DUMBLEDORE (the “Dumbledore Marks”).
Complainant’s Dumbledore Marks are derived from the Harry Potter fantasy novel series, authored by J.K. Rowling. These novels are among the best-selling books in history. The first Harry Potter book, which prominently features the Albus Dumbledore character, was released in 1997. The first Harry Potter film was released in 2001. As of June 2017, more than 400 million copies of Harry Potter titles have been sold worldwide and the books have been translated into 68 languages. Collectively, the Harry Potter film franchise has grossed over $9.18 billion. Furthermore, due to the massive success of the Harry Potter series, a series of theme parks based on the wizarding world were unveiled at the Universal Orlando and Universal Hollywood parks in 2010 and 2016, respectively.
Throughout the Harry Potter series, the character Albus Dumbledore is featured prominently as a mentor of the titular character. The Albus Dumbledore character is often referred to by his surname “Dumbledore” and alternately as “Professor Dumbledore.” The phrase “Dumbledore Army” is also attributed to the Albus Dumbledore character, as referring to an “army” of students that support Dumbledore’s teachings at their magical school. Complainant states that a search for the term “Dumbledore” on the Internet search engine Google, reveals 20.4 million hits. A review of the first 5 pages of results indicates that every result refers to the “Dumbledore” character from the Harry Potter series.
Complainant goes on to contend that “because of the massive success of the Harry Potter books, films, theme parks, and other commercial ventures, beginning with the first book that was released in 1997, the Albus Dumbledore character and the Dumbledore Marks are well-known across the globe.” Complainant concludes from this recitation that Respondent must have registered <dumbledore.com> with the intention of taking advantage of the reputation of the Dumbledore Marks. Complainant finds confirmation that Respondent had actual knowledge of the Dumbledore Marks when Respondent replied to a request from Complainant’s representative by putting a price on <dumbledore.com> of $12,000.
B. Respondent
Respondent denies the material allegations of the Amended Complaint. He particularly denies that he offered to sell the disputed domain name. He states that his acquisition of “Dumbledore.com … is for a web community, currently in development, hosted on WordPress…. It is not under ‘domain parking.’ This is because Dumbledore is currently being developed into becoming a website.” He points out that ‘dumbledore’ is a dictionary word with a long history in the English language. He further contends that “the domain name has not been used for any commercial purpose, has not mislead any consumers and has not, and can not, be confused with the long-tail trademarks of the Complainant.”
Finally, Respondent contends that J.K. Rowling acknowledged her debt to the dictionary and the meaning of dumbledore in naming her fictional character. In an interview with Christopher Lydon on “The Connection,” WBRU Radio, 12 Oct. 1999 she explained that “Dumbledore” is an old English word meaning bumblebee. Respondent then goes on to list some historical usages of the word “dumbledore” in its literal sense, which is not material to the determination of this matter, and is not necessary to recite. The implication of Respondent’s brief listing is that he too will be drawing on the dictionary definition of dumbledores for the entirely different purpose of creating a factual review of bumblebees in the wild.
To Complainant this is all very well, but in its Additional Submission it challenges the premise of Respondent’s claim and points to Respondent’s less than definite description as to the website’s content. There is some weight to this because the website as it appeared when the Amended Complaint was filed resolved to a page that contained only two words: “Dumbledore” and “HOME.” It was undoubtedly for this reason that in his Additional Submission Respondent advised the Panel that “[b]ecause we are getting closer to launch, we have speeded up the process and launched a website today.” Thus, the website is currently active with a moderately researched write-up of dumbledores and bumblebees.
Panels look askance when Respondents modify their websites midstream.
It suggests a party is creating content purposely to bolster its argument for fair
use under ¶ 4(c) of the Policy. See WIPO Overview 3.0, section
3.2.1 (“Particular circumstances panels may take into account in assessing
whether the respondent’s registration of a domain name is in bad faith include:
... the content of any website to which the domain name directs, including any
changes in such content and the timing thereof ...”). The Panel has considered
the issue carefully and concludes that the issue of Respondent’s midstream
modification of his website or even whether the website is active or passive is
not material to the determination of this case. The Panel has not taken the modified
website into account.
The disputed domain name, which was created in July 2004, has a history of subsequent holders before Respondent acquired it in either August or September, 2019. Complainant claims its right to its trademark predates the registration of the disputed domain name. Since there is no dispute on this point there is no reason to look further into this part of Complainant’s argument. In any event, the determination in this case does not turn on priority of right.
The disputed domain name is a dictionary word that by happenstance corresponds to one of the words in Complainant’s trademark. Complainant does not have a trademark for the word “dumbledore” standing alone. It may be that aficionados steeped in Harry Potter lore will instantly associate “dumbledore” with the fictional character, and possibly with the trademark owner, but that is not enough to grant Complainant a monopoly on a word that has meanings beyond that conveyed by the mark. A dictionary word domain name that corresponds to a word in a trademark is not presumptively abusive of third-party rights. Use alone will determine the outcome of rights. If Respondent is found to be using the domain name in bad faith it will support registration in bad faith, but there can be no abusive registration without proof of use in bad faith.
The Panel finds:
1. The disputed domain name is confusingly similar to a trademark in which Complainant has rights;
2. Respondent has demonstrated that it has rights or legitimate interests in the domain name;
3. Complainant has failed to prove that Respondent registered and used the domain name in bad faith.
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."
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:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy will result in failure of the complaint in its entirety.
Complainant contends that the disputed domain name is identical or confusingly similar to its Dumbledore Marks. The burden of proof on the first requirement is relatively low. Here, Complainant’s trademarks are combinations of words one of which is identical to the single dictionary-word domain name, “dumbledore.” The domain name is not identical to any of Complainant’s trademarks. However, and only because of the notoriety, even fame, of J.K. Rowling’s Harry Potter books, and their motion picture transformation, Complainant’s trademarks have an unusually bright resonance in the marketplace. On this basis, the Panel accepts that the domain name is confusingly similar to Complainant’s trademarks and therefore finds that Complainant has standing to maintain this proceeding.
Under the Policy, Complainant has the burden of establishing that Respondent lacks rights or legitimate interests in the domain name. It is well settled that Complainant need only offer a prima facie case, after which the burden shifts to Respondent to demonstrate its rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case to satisfy the Policy requirements; see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014).
Complainant has offered evidence sufficient to establish a prima facie case that Respondent lacks rights or legitimate interests in <dumbledore.com>. It states that it did not authorize Respondent’s use of the term “dumbledore,” Respondent is not commonly known by that name, Respondent is not using the domain name in good faith, and Respondent has offered no proof of its intentions for a website on dumbledores. It also claims that “Respondent appears to be in the business of purchasing multiple domains--some of which are offered for sale to the public, some of which are pay-per-click sites, some of which are parked, and some of which are brand-based--with the intent to resell the domains and make a profit.” However, on this point even if these facts are true, they raise no credible issues of unlawful conduct. If Complainant intended to suggest otherwise it has offered no proof to establish its assertions. In any event, these activities are routine, legitimate, and permissible on the Internet and not open to censure.
Policy ¶ 4(c) of the Policy provides three nonexclusive circumstances that, if found by the Panel to be proven based on its evaluation of all of the evidence presented, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name. The first and third of these circumstances are relevant in assessing whether Respondent has satisfied this shifted burden:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
…
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As to whether Respondent satisfies Policy ¶ 4(c)(i) of the Policy, he contends he registered the disputed domain name “before notice” with the intention of using it to create a community website on dumbledores. Nevertheless, the website “is still under development” owing to the “time shortage” and has not launched. Alternatively, respondents can show “demonstrable preparations” to establish their rights or legitimate interests. Respondent admits he has not determined the contents of the proposed website, but asserts he has taken certain threshold steps to implement his intentions by purchasing a WordPress package for the website: “The website Dumbledore is currently hosted on WordPress, a website-creator tool that is made for creating websites. It is not under “domain parking”. This is because Dumbledore is currently being developed into becoming a website.”
Complainant counters in essence that the alleged intention has no basis in reality. In its view “demonstrable preparations” means evidence that demonstrates the intention. It cites Volkswagen AG, Dr. Ing. H.c. F. Porsche AG and Automobili Lamborghini S.p.A. v. Kazim Uslu, D2015-0119 (WIPO April 16, 2015) (<lamborghini.help>, <porsche.help>, <volkswagen.help>) and Vodafone Group PLC v. Bora Karakol, D2014-0326 (WIPO April 27, 2014) (<vodafonearena.com>). The Panel agrees with the view expressed in these decisions, but notes that these cases are distinguishable from the present dispute in that the domain names are identical to the trademarks rather than being merely confusingly similar.
The concept of demonstrable preparations is not a “one size fits all” test. See DigiPoll Ltd. v. Raj Kumar, D2004-0939 (WIPO February 3, 2005) (“What evidence is sufficient to constitute proof of demonstrable circumstances will of course depend on the particular circumstances of each case and will vary from case to case.”). The demand for proof is necessarily lesser or greater depending on respondent’s choice of domain name. See Choice Courier Systems, Inc. v. William H. Kirkendale, D2002-0483 (WIPO July 23, 2002) (“[A] respondent need only show a plausible, non-infringing explanation for selecting the disputed domain name.”). When domain names are identical it follows that the reasons for choice must be more specific and convincing to pass the credibility test. The bar is lower with dictionary-word domain names. See Gullivers Travel Associates v. Gullivers Travel/Gulliver’s Travel Services, Gullivers Travel Agency and Metin Altun/GTA, D2004-0741 (WIPO December 16, 2004) (“Even perfunctory preparations have been held to suffice for this purpose.”). Minimal though Respondent’s proof is, it has succeeded.
The Panel finds Respondent’s explanation for acquiring the domain name for a specific purpose consistent with its meaning and his first steps to consummate the intention plausible. Where a disputed domain name is composed of a dictionary word a respondent is not constrained to “use it or lose it.” Here, Respondent states he intends to use <dumbledore.com> and outlines the content of the website in his Response, but even if he did not follow-through with this intention, the law does not decree forfeiture absent evidence of bad faith use.
This is particularly so where the content of the website bears no relation whatsoever to Complainant’s trademarks. If a registrant wants to educate the world about bumblebees there is no reason that it should not be allowed to do so unthreatened by forfeiture. It can be said in this case, as the Panel noted in Diners Club International Ltd. v. Mark Jenkins, FA0906001266752 (Forum July 27, 2009), that “[t]here are many benign uses of the word DINERS that do not conflict with Complainant’s trademark rights.” So it is with “dumbledore.”
Keeping
in mind that Complainant bears the burden of proving that Respondent has no
legitimate interest and considering the evidence provided by Respondent,
the Panel finds that Complainant must fail on this element.
For
these reasons, the Panel finds that Respondent has established by a
preponderance of the evidence that it has rights or legitimate interests in <dumbledore.com>.
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint.
In that Respondent has satisfied the requirements of ¶ 4(a)(ii) of the Policy, it is not strictly necessary to consider the issue of bad faith, but Complainant has raised several questions concerning bad faith use and it deserves answers to further explain the grounds for this decision. The first and most obvious is the global “fame” of the Harry Potter books and the fictional name Albus Dumbledore. Complainant implies that Respondent must have had knowledge of the Dumbledore Marks and Respondent does not deny it. However, where the dispute turns on a dictionary word that can plausibly be used lawfully, it would be of no consequence that the respondent had knowledge of the complainant. Prior knowledge becomes a critical factor only when the domain name can have no other reference than to the complainant’s mark. Such is not the case in this dispute. See DK Company Vejle A/S v. Cody Favre, C4 Squared, D2019-2676 (WIPO December 17, 2019) (<shopcasualfriday.com>). It is hardly likely, and would be unpersuasive that Respondent had no knowledge of Albus Dumbledore, but whether he did or did not is not material to determining the parties’ rights or Respondent’s bad faith registration.
Complainant further contends that Respondent’s conduct specifically violates ¶ 4(b)(i) and 4(b)(iv) of the Policy:
(i)
circumstances indicating that the Respondent has registered or has acquired the
disputed domain name primarily for the purpose of selling, renting or otherwise
transferring the disputed domain name registration to the Complainant who is
the owner of the trademark or service mark or to a competitor of the
Complainant, for valuable consideration in excess of documented out-of-pocket
costs directly related to the disputed domain name; or
…
(iv)
by using the Disputed Domain Name, the Respondent has intentionally attempted
to attract, for commercial gain, Internet users to its website 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 the Respondent’s
website or location or of a product or service on the Respondent’s website or
location.
It cannot be denied that if a respondent, upon registering a domain name identical or confusingly similar to a trademark, offers it for sale to the owner of that trademark, the respondent will be in violation of the UDRP. See Bank of Scotland Plc v. Shelley Roberts, Diversity Network, D2015-2310 (WIPO February 15, 2016). The Respondent in that case acquired <halifax.com> and then proceeded to create content targeting Complainant’s Halifax mark before offering it to Complainant. It was not a persuasive defense that “Halifax” is a generic term. Here, Complainant offers evidence that Respondent in response to an inquiry from Complainant’s representative stated he was willing to sell <dumbledore.com> for $12,000. Respondent denies he ever offered the domain name for sale, but there is an email from him that states that “<dumbledore.com> can be for sale. Price tag is $12,000.” If the decision in this case were to be decided on this issue, Respondent’s credibility would have been severely tested.
Complainant cites two very recent decisions that address the issue of offering a domain name for sale to Complainant or its representative, National Hockey League v. zhao jing, DCC2019-0005 (WIPO August 12, 2019) and MTD Products Inc v. Hush Whois Protection Ltd., FA 1909001861556 (Forum October 5, 2019). However, the important point to note in these cases is that the domain names are identical to the trademarks, namely NHL and Cub Cadet Parts.
The Panel accepts for the purpose of framing the argument that Respondent was willing to sell <dumbledore.com> but this is not the end of the analysis because the proof shows that Respondent did not initiate the contact. The contact was admittedly initiated by Claimant’s representative. See Mark Overbye v. Maurice Blank, Gekko.com B.V., D2016-0362 (WIPO April 15, 2016) (<gekko.com>) in which the Panel found that "Respondent's offer to sell the disputed domain name to Complainant is not relevant as Respondent was first approached by Complainant to sell the disputed domain name."
Where the challenged domain name is a dictionary word the respondent has every right to respond to an inquiry to purchase without falling afoul of the UDRP, unless it is using the domain name in bad faith and there is proof to that effect.
Complainant’s argument also raises the specter of bad faith under the circumstances set forth in ¶4(b)(iv) of the Policy. Its argument suggests that merely holding a domain name composed of a dictionary word without more is a predicate for bad faith even if it is not identical to Complainant’s mark; suggesting further that a complainant’s statutory right extends to include a dictionary-word domain name that corresponds to one of the words in the mark. That view has long been rejected. See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002). Panel consensus is consistent with U.S. law on this issue. See, for example Halo Innovations, Inc. v. Name Administration Inc. (BVI), FA1009001344653 (Forum November 3, 2010) in which the Panel observes that the “domain name is comprised entirely of common terms that have many meanings and that the registration and use of a domain name comprising such common terms is not necessarily done in bad faith.” Here, the disputed domain name is intended for a use consistent with its meaning.
Complainant finally argues that passive holding of a domain name supports bad faith by deceiving Internet users “as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.” Complainant is alluding here to the fact that when Respondent filed the Amended Complaint the landing page for its website was essentially blank. In certain instances passive holding does support bad faith---Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000) (the passive holding doctrine), except that in those cases bad faith is inferred because it is inconceivable that the domain name could ever be used without infringing complainant’s statutory right. However, in this case it is not inconceivable for <dumbledore.com> to be active without infringing Complainant’s Dumbledore Marks. Passive holding in this context does not support bad faith.
The Panel accordingly finds that Complainant has failed to prove that Respondent registered and used the domain name in bad faith.
Having
not established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <dumbledore.com> domain name remain with Respondent.
Gerald M. Levine, Panelist
Dated: February 19, 2020
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