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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Time Warner Entertainment Company, L.P. v. HarperStephens
Case No. D2000-1254
1. The Parties
1.1 The Complainant is Time Warner Entertainment Company, L.P., a corporation organized under the laws of the State of Delaware, United States of America, having its principal place of business in New York, New York, United States of America.
1.2 The Respondent is HarperStephens, an entity giving a post office box address in Agoura Hills, California, United States of America.
2. The Domain Names and Registrar
The domain names at issue are <findharrypotter.com>, <findharrypotter.org>, <findharrypotter.net>, <freeharrypotter.com>, <freeharrypotter.org>, <freeharrypotter.net>, <potterharrypotter.com>, <potterharrypotter.org>, <potterharrypotter.net>, <theharrypottermovie.com>, <theharrypottermovie.org>, <theharrypottermovie.net>, <harrypotterproductions.org>, <harrypottershoppe.com>, <harrypottershoppe.net>, <harrypottershoppe.org>, <harrypotterbooks.org>, <harrypotter1.net>, <harrypotter1.org>, <harrypotter2.net>, <harrypotter2.org>, <harrypotter3.net>, <harrypotter3.org>, <harrypottercd.com>, <harrypottercd.net>, <harrypottercd.org>, <harrypotterdvd.com>, <harrypotterdvd.net>, <harrypotterdvd.org>, <harrypotterdvds.com>, <harrypotterdvds.net>, <harrypotterdvds.org>, <harrypotterfilm.org>, <harrypotterfilms.net>, <harrypotterfilms.org>, <harrypotterfour.com>, <harrypotterfour.net>, <harrypotterfour.org>, <harrypotterhollywood.com>, <harrypotterhollywood.net>, <harrypotterhollywood.org>, <harrypotterinhollywood.com>, <harrypotterinhollywood.net>, <harrypotterinhollywood.org>, <harrypottermedia.com>, <harrypottermedia.net>, <harrypottermedia.org>, <harrypottermovies.org>, <harrypottermp3.com>, <harrypottermp3.net>, <harrypottermp3.org>, <harrypottermusic.com>, <harrypottermusic.net>, <harrypottermusic.org>, <harrypotterone.com>, <harrypotterone.net>, <harrypotterone.org>, <harrypotterpicture.com>, <harrypotterpicture.net>, <harrypotterpicture.org>, <harrypotterpictures.com>, <harrypotterpictures.org>, <harrypotterpictures.net>, <harrypotterposter.com>, <harrypotterposter.net>, <harrypotterposter.org>, <harrypotterposters.com>, <harrypotterposters.net>, <harrypotterposters.org>, <harrypotters.net>, <harrypotters.org>, <harrypottershops.com>, <harrypottershops.net>, <harrypottershops.org>, <harrypottersmovie.com>, <harrypottersmovie.net>, <harrypottersmovie.org>, <harrypottersstore.com>, <harrypottersstore.net>, <harrypottersstore.org>, <harrypotterstore.net>, <harrypotterstore.org>, <harrypotterstudios.com>, <harrypotterstudios.net>, <harrypotterstudios.org>, <harrypotterthree.com>, <harrypotterthree.net>, <harrypotterthree.org>, <harrypottertwo.com>, <harrypottertwo.net>, <harrypottertwo.org>, <harrypottervideos.net>, <harrypottervideos.org>, <harrypottervideos.net>, <clickharrypotter.com>, <clickharrypotter.net>, <clickharrypotter.org>, <firstharrypotter.com>, <firstharrypotter.net>, <firstharrypotter.org;>, <hollywoodharrypotter.com>, <hollywooodharrrypotter.net>,<hollywoodharrypotter.org>mp3harrypotter.com>, <mp3harrypotter.com>, <mp3harrypotter.net>, and <mp3harrypotter.org> which domain names are registered with Network Solutions, Inc., based in Herndon, Virginia, United States of America.
3. Procedural History
3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on September 22, 2000, and the signed original together with four copies was received on September 25, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated September 25, 2000.
3.2 On September 25, 2000, a Request for Registrar Verification was transmitted to the registrar, Network Solutions, Inc. ("NSI") requesting it to: (1) confirm that the domain names identified are registered with NSI; (2) confirm that the entity identified as the Respondent is the current registrant of the domain names; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar’s Whois database for the registrant of the disputed domain names, the technical contact, the administrative contact, and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain names.
3.3 On October 5, 2000, NSI confirmed by reply e-mail that the domain names identified are registered with NSI, that some of the names are currently in active status while others are in hold status, and that, with one exception, the Respondent is the current registrant of those names. NSI advised that one of the names identified was registered by someone other than the Respondent. The registrar also forwarded the requested Whois details and confirmed that the Policy is in effect.
3.4 By letter dated October 6, 2000, the WIPO Center advised the Complainant of this and other deficiencies and requested that the Complaint be amended to cure these deficiencies. On October 9, 2000, the WIPO Center received an amendment to the Complaint by e-mail and in hardcopy.
3.5 The WIPO Center determined that the Complaint as amended satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Uniform Rules, and the Supplemental Rules. The required fees for a three-person Panel were paid on time and in the required amount by the Complainant.
3.6 No further deficiencies having been recorded, on October 11, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of October 30, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in NSI’s confirmation. In addition, the complaint was sent by express courier to the postal address given. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
3.7 On October 31, 2000, the proverbial and appropriate "witching eve," not having received any response, the WIPO Center sent the parties a formal Notification of Respondent Default.
3.8 On November 24, 2000, in view of the Complainant's designation of a three-member Panel, the WIPO Center appointed Carol Anne Been, Dennis Arthur Foster, and M. Scott Donahey to serve as Panelists, with M. Scott Donahey to act as Presiding Panelist.
4. Factual Background
4.1 Complainant is the assignee of the copyright, trademark and related rights of the four books in the Harry Potter series. The first book in the series was published in June 1997. The series has attained worldwide popularity, and has been translated into many languages. The books have been awarded numerous literary prizes, as well. On March 15, 2000, CNN.com announced the forthcoming release of a motion picture based on the first book in the series.
4.2 Complainant has filed applications for registration of various marks connected with and including Harry Potter, including at least 14 applications with the USPTO. Complainant currently owns registered trademarks in the State of California, the State of New York, and the State of Florida, in the United States of America.
4.3 Complainant and its assignor have promoted and advertised the books and related merchandise and created significant goodwill in connection with the marks.
4.4 In December 1999, Complainant became aware that Respondent had registered 21 domain names which Complainant believed infringed Complainant's marks. On December 29, 1999, Complainant sent Respondent a letter demanding that Respondent transfer the 21 domain names to Complainant.
4.5 Respondent did not respond to the letter. Thereafter, Respondent registered two additional allegedly infringing domain names.
4.6 On January 26, 2000, counsel for Complainant sent an additional cease and desist letter to Respondent, demanding that Respondent cease its use of the domain names. Thereafter Respondent deleted nine of the allegedly infringing names.
4.7 Complainant then tried contacting Respondent by telephone. All efforts at contacting Respondent by telephone were unsuccessful.
4.8 On June 29, 2000, counsel for Complainant sent Respondent a third letter, reiterating Complainant's demands. By letter dated July 10, 2000 Respondent replied that the allegedly infringing domain names had either been deleted or would be deleted. To date the names have not been deleted.
4.9 The earliest registration date for any of the domain names at issue is November 15, 1999. The vast majority of the domain names at issue were registered by Respondent on the day or the day after the news broke on CNN.com of the upcoming release of the Harry Potter movie.
5. Parties’ Contentions
5.1 Complainant contends that Respondent has registered the domain names which are confusingly similar to the marks for which Complainant has applied or which Complainant has registered and is using, that Respondent has no rights or legitimate interests in respect to the domain names at issue, and that Respondent has registered and is using the domain names at issue in bad faith.
5.2 Respondent has not contested the allegations of the Complaint.
6. Discussion and Findings
This case is an interesting one from the perspective of the history of the Internet and the rumors associated with its creation. Stories have circulated that the inspiration for the Internet was the Owl Post system employed by wizards and students of wizardry in the Wizarding World. The system is often referred to as "The Way of the Wizarding World" (sometimes abbreviated in treatises of magic as "the three w's or "www"), and it is indeed the warp and woof of all wizard-to-wizard communication. In this system, a network of owls is employed to transmit information reliably and quickly. Indeed, some have claimed that the surname of the late, revered Father of ICANN, Jonathan B. Postel, is a Slavic derivation of the Romanian word for Owl Post. Thus, we approach our work in this case with especial seriousness.
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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." Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2) that the Respondent has no rights or legitimate interests in respect of the domain name; and
3) that the domain name has been registered and is being used in bad faith.
Prior Panel decisions have made it clear that the addition of geographical designations, generic or descriptive terms, or words designating the goods or services with which the mark is used do not alter the fact that the domain names are confusingly similar to the marks. Wal-Mart Stores, Inc. v. Walmarket Canada, ICANN Case No. D2000-0150 (<walmartcanada.com>); Eauto, L.L.C. v. Triple S Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., ICANN Case No. D2000-0047 (<eautolamps.com>); United States Olympic Committee v. MIC, ICANN Case No. D2000-0189 (<usolympicstore.com>).
Complainant has alleged and Respondent has failed to deny that Respondent has no legitimate interests in respect of the domain name at issue. Alcoholics Anonymous World Services, Inc. v. Raymond, ICANN Case No. D2000-0007; Ronson plc v. Unimetal Sanayai ve Tic.A.S., ICANN Case No. D2000-0011; Document Technologies, Inc. v. International Electronic Communications, Inc., ICANN Case No. D2000-0270. In addition, the Panel has been unable to independently discern any legitimate interest in respect of the domain names at issue.
Paragraph 4(b)(ii) of the Policy provides in pertinent part: "[T]he following circumstances . . . shall be evidence of the registration and use of a domain name in bad faith. [Respondent] has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct . . . ." It is this provision which the Panel believes to be applicable to the conduct of the Respondent.
Respondent has registered 103104 domain names, all of which include the mark Harry Potter and none of which resolve to an operative web site. It is difficult to discern any motive other than that of preventing the owner of the mark from reflecting the mark in a corresponding domain name. The Panel believes that the registration of over one hundred such domain names is sufficient to constitute a pattern of conduct. Potomac Mills Limited Partnership v. Gambit Capital Management, ICANN Case No. D2000-0062 (four domain names held sufficient); ISL Marketing AG, Federation International de Football Association v. J.Y. Chung, Worldcup2002.com, W Co. and Worldcup 2002, ICANN Case No. D2000-0034 (thirteen domain names held sufficient). The fact that one or more of the domain names at issue do not resolve to websites does not preclude a finding of bad faith "use." Telstra Corp., Ltd. v. Nuclear Marshmallows, ICANN Case No. D2000-0003; Cellular One Group v. Brien, ICANN Case No. D2000-0028.
For all of the foregoing reasons, the Panel decides that the domain names registered by Respondent are confusingly similar to the mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain names at issue, and that the Respondent's domain names have been registered and are being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain names set out in Para. 2 of this Decision be transferred to the Complainant.
M. Scott Donahey
Carol Anne Been Dennis Arthur Foster
Dated: December 13, 2000