The Complainant is Joanne Rowling of London, United Kingdom of Great Britain and Northern Ireland, represented by Addleshaw Goddard, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Hostine.net of Torbatjam, Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain name <jkrowling.ir> is registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2006. On August 14, 2006, the Center transmitted by email to IRNIC a request for registrar verification in connection with the domain name at issue. On August 14, 2006, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 6, 2006. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the .IR Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IR Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IR Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 3, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 4, 2006.
The Center appointed Peter G. Nitter as the sole panelist in this matter on October 13, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On August 15, 2006, at the request of the representative
of Complainant, the administrative proceedings were suspended. The proceedings
were reinstituted at the request of the representative of the Complainant on
August 29, 2006.
4. Factual Background
The Complainant is the author inter alia of the following books: Harry Potter and the Philosopher Stone (first published in 1997), Harry Potter and the Chamber of Secrets (1998), Harry Potter and the Prisoner of Azkaban (1999), Harry Potter and the Goblet of Fire (2000), Harry Potter and the Order of Phoenix (2003) and Harry Potter and the Half Blood Prince (2006). The Complainant has sold approximately 330 million books, which have been translated into 61 languages and sold in over 200 countries, including the Islamic Republic of Iran. By way of example, the latest Harry Potter book has sold approximately 67,000 copies in the Islamic Republic of Iran.
The Complainant has since 1997 used and continues to use the mark J K ROWLING for classes of goods and services 9, 16, 25 and 28 and registered the mark for all or some of the classes mentioned in a large number of territories including, inter alia, the United Kingdom on December 22, 1999, with number 22218081 and a Community trademark registered in the same classes on March 2, 2000, with number E154493.
The first four Harry Potter books have been made into films by Warner Bros, which have been seen by millions of cinema goers worldwide. They have been distributed in video cassette and DVD format. The Harry Potter films are made with the approval of the Complainant and have been extensively marketed worldwide referring to the mark J K ROWLING.
The Complainant has always been identified as the author of the Harry Potter books mentioned above by reference to the J K ROWLING mark..
The facts above are drawn from the appendices to the
Complaint as well as the Panel’s own knowledge and research on the Internet.
By reason of the foregoing and the Panel’s independent research, the Panel
concludes that the Complainant’s mark J K ROWLING is very well known world-wide,
and also known in the Islamic Republic of Iran.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the domain name is identical to the Complainant’s J K ROWLING mark, as the domain name consists solely of the said mark with the suffix .ir.
The Complainant contends that the Respondent has no rights or legitimate interests in the domain name at issue. The Respondent is neither the owner nor the license of any rights in the Complainant’s mark J K ROWLING. There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name at issue or a name corresponding to it. The Respondent is not making a legitimate non-commercial fair use of the domain name at issue.
The Complainant contends that the domain name at issue was registered, and is being used in bad faith. The domain name is currently being used to divert Internet users to a website almost identical to the Complainant’s official website. The Respondent uses the words “J.K. Rowling official site” on the website, copied from the official site, as well as a links to other fake versions of the official site in English and Farsi, all in an attempt to mislead Internet users into thinking that the website is endorsed by the Complainant. At the foot of the website connected with the domain name at issue, there is made a reference to Kazem Software and a link to this company’s commercial website, and it is thus clear that the Respondent is seeking to divert Internet users to the commercial website of Kazem Software, and is trying to claim that they are connected to, or associated with, the Complainant.
The Complainant further contends that as the J K ROWLING mark was very well known at the time of the Respondent’s registration of the domain name at issue, it is inevitable that the Respondent was aware of the Complainant at the time. As the Respondent could not register the domain name at issue without violating the Complainant’s rights, this is an indication of bad faith. Moreover, the Respondent has failed to respond to the Complainant’s representative’s attempts to solve the matter amicably, and, according to previous decisions under the Policy, this is a further indication of bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The domain name at issue consist solely of the Complainant’s mark J K ROWLING, with the addition of the suffix, .ir, the country code top level domain for the Islamic Republic of Iran. It is well established that the addition of suffixes consisting of generic or country code top level domains are irrelevant distinctions that are not deemed to change the identity or likelihood for confusion.
Hence, the Panel concludes that the domain name at issue is identical and confusingly similar to the Complainant’s J K ROWLING mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three elements, any of which shall demonstrate the Respondent’s rights and legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. The Respondent had the opportunity to respond and present evidence in support of the elements in paragraph 4(c) of the Policy. The Respondent chose not to do so and has not filed any response in this proceeding establishing any circumstances that could demonstrate any rights or legitimate interests to the disputed domain name.
The Respondent has failed to provide any evidence of rights and legitimate interests. Although the Complainant is not entitled to relief simply by default; the Panel can and does draw evidentiary inferences from the failure to respond.
The Complainant has provided evidence of the extensive use and registration to protect its J K ROWLING mark, and the Panel has no reason to doubt the Complainant’s assertion that it has never authorized the Respondent to use the Complainant’s J K ROWLING mark.
The Panel is thus satisfied that the Respondent has no rights or legitimate interests in respect of the disputed domain name as there is no evidence that the Respondent has used, made preparations to use, or has any intention of using the disputed domain name in connection with a bona fide offering of goods or services, nor is the Respondent making a legitimate, non-commercial or fair use of the disputed domain.
For these reasons the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied by the Complainant.
C. Registered and Used in Bad Faith
The Complainant contends that several aspects related to the disputed domain name are to be considered as evidence of bad faith registration and use of the domain name.
On the background of the Complainant’s contentions and the material provided by Complainant, the Panel finds it evidenced that the Respondent has set up a website resolving to the domain name in question which in the Panel’s view can only be characterized as a fake official website, clearly attempting to give the false impression that it is endorsed by the Complainant, and thus exploiting the fame and goodwill of the Complainant’s valuable J K ROWLING mark.
The Panel furthermore finds that the Respondent’s website resolving to the domain name at issue has been used to divert Internet users to a commercial website owned by Kazem Software, and is attempting to give the false impression that this company is connected to, or associated with, the Complainant. The Panel finds that these actions are attempts to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark in the meaning of the paragraph 4(b)(iv) of the Policy.
Given the Respondent’s obvious attempts to exploit the goodwill and fame of the Complainant, the fact that Complainant’s J K ROWLING mark was very well known at the time of the Respondent’s registration of the domain name at issue, and the fact that the domain name is identical to the Complainant’s mark, it is clear to the Panel that the Respondent had actual knowledge of the Complainant’s trademark rights when he registered and used the domain name at issue, and according to the Panel’s conclusion under section B above, such registration and use of the disputed domain name took place despite it being the case that the Complainant had not granted any such right to the Respondent, and the Respondent did not have any other rights or legitimate interests in using the disputed domain name.
The Respondent’s failure to reply to the correspondence initiated by the Complainant’s representative is in the opinion of the Panel a further indication of bad faith.
Taking into account the fame of the Complainant’s
mark, the use of the disputed domain name and the Respondent’s pattern
of conduct, the Panel finds that the disputed domain name clearly was registered,
and has been used in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <jkrowling.ir> be transferred to the Complainant.
Peter G. Nitter
Sole Panelist
Date: October 27, 2006
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