May 4, 2020
Authored and Edited by Jonathan Uffelman; Margaret A. Esquenet
A recent UDRP decision illustrates the unpredictability of UDRP claims where a complainant’s asserted trademark has any generic or descriptive meanings.
Based on the world-famous Harry Potter series of books and movies, Warner Bros. Entertainment Inc. (“Warner”) holds multiple “Dumbledore”-formative trademark registration, including ALBUS DUMBLEDORE, DUMBLEDORE’S ARMY, and PROFESSOR DUMBLEDORE, but no registrations for “Dumbledore” standing alone. Karl Allberg acquired the <dumbledore.com> domain name in August or September 2019. When Warner filed its UDRP complaint in early February 2020, Allberg had not used the domain for anything other than a blank, hosted webpage on WordPress that said nothing but “Dumbledore” and “HOME.”
In his defense, Allberg asserted the word “dumbledore” is an old English word meaning “bumblebee,” and after the UDRP complaint was filed, he altered his website by posting a “moderately researched write-up of dumbledores and bumblebees.”
To prevail in a UDRP proceeding, a complainant must establish the following three elements: (1) the disputed domain is identical or confusingly similar to the complainant’s trademark or service mark; (2) the domain name registrant has no rights or legitimate interests in the domain; and (3) the domain was registered and is being used in bad faith. Here, the Panelist concluded Warner failed on elements 2 and 3. Despite the international fame of the Harry Potter juggernaut, the Panelist’s decision turned on the facts that Warner held no rights to DUMBLEDORE standing alone, and that the word “dumbledore” has a descriptive or generic meaning.
According to the Panelist, Allberg had legitimate interests in the domain name because he had engaged in “demonstrable preparations” to use it before the complaint was filed. To establish “demonstrable preparations” under Policy Paragraph 4(c)(i), respondents typically must produce actual evidence, rather than mere assertions, of those preparations. But the Panelist distinguished cases where the domain name is identical to a complainant’s asserted trademarks, rather than merely confusingly similar: “The concept of demonstrable preparations is not a ‘one size fits all’ test. . . . When domain names are identical it follows that the reasons for [the] choice must be more specific and convincing to pass the credibility test. The bar is lower with dictionary-word domain names.” Accordingly, the Panelist found Allberg’s “demonstrable preparations” were established by the mere fact that he had purchased “a WordPress package for the website.”
With respect to bad faith, Warner argued that given fame of the Harry Potter books and the fictional name Albus Dumbledore, Allberg must have had knowledge of the DUMBLEDORE marks when registering the domain name. Allberg admitted as much. Rejecting that argument, the Panelist found, “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.” Allberg’s failure to use the domain name did not evidence bad faith for the same reason.
Allberg also denied having offered to sell Warner the domain name. Warner, however, produced an email exchange showing Allberg had offered to sell it for $12,000. Unpersuaded the Panelist noted: “If the decision in this case were to be decided on this issue, Respondent’s credibility would have been severely tested.” But because Allberg had only responded to Warner’s inquiry, rather than instigating negotiations himself, the Panelist found no bad faith. Once again, the Panelist found the fact that “dumbledore” is a dictionary word to be critical, holding that: “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.”
Finally, the Panelist addressed that Allberg had modified the domain name’s website content during the proceeding, which numerous panelists have found suggests a pretextual change made only to establish fair use under the Policy. But the Panelist here found this issue immaterial to the determination of the case and did not take the modified website into account.
Viewing the totality of circumstances, a different UDRP panelist could have come to a different conclusion in this case. The fame of the Harry Potter series and the Albus Dumbledore character, combined with Allberg’s self-justifying post-complaint modification of his website would likely have been sufficient to have led another panelist to find bad faith was more likely than not. With this background, Allberg’s attempted obfuscation of his offer to sell the domain may have alarmed another panelist more. Moreover, less than a month after the case was decided, Allberg modified his website yet again to display content wholly unrelated to bumblebees. This post-decision information was not, of course, available to the Panelist, but it suggests Allberg’s earlier modification was unrelated to his actual intentions for the website, but rather was made avoid a finding of bad faith. It remains to be seen if Warner challenges this decision in court, as is its right under the UDRP policy.
Nonetheless, the case is a good reminder that the success of a UDRP complaint often depends on how the appointed panelist weighs the facts, and prospective complainants must analyze their case carefully when asserting trademarks with any possible descriptive or generic meaning.
The case is Warner Bros. Entertainment Inc. v. Karl Allberg, Case No. FA2002001881913 (NAF Feb. 19, 2020).
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