In a decision that seems surprising at first glance, Warner Bros. lost a case under the Uniform Domain Name Dispute Resolution Policy (UDRP) for the domain name <dumbledore.com>. “Dumbledore” is the name of a popular Harry Potter character, and Warner Bros. is a sophisticated trademark owner, but the UDRP panelist found that the registrant of the domain name had rights or legitimate interests in <dumbledore.com> and that it did not register or use the domain name in bad faith. The decision was based largely on the fact that the word “dumbledore” has a dictionary meaning.
Facts
As stated in the UDRP decision, Warner Bros. is the owner of a number of trademark registrations that include the word DUMBLEDORE, which identify Professor Albus Dumbledore, one of the characters in the Harry Potter series by J.K. Rowling. Warner Bros. made clear that the DUMBLEDORE trademark is well-known, based on the success of the Harry Potter series (including 400 million books sold in 68 languages, and movies that have grossed $9.18 billion, as well as theme parks in Orlando and Hollywood) and the fact that in a Google search for “Dumbledore,“ every result in the first five pages refers to the Harry Potter character.
The domain name <dumbledore.com> was created in July 2004 (after Warner Bros.’s trademark rights arose) and obtained by the current registrant, Karl Allberg, in 2019. Warner Bros. said that Allberg offered to sell the domain name to it for $12,000, but Allberg said his offer was only in response to a contact by a representative for Warner Bros. In any event, Allberg said that “dumbledore” is “a dictionary word with a long history in the English language” meaning bumblebee and that he intends to use the domain name “for a web community.”
Decision
The panelist denied Warner Bros.’s claim and allowed Allberg to keep the domain name.
First, the panel found that Allberg’s explanation as to why he registered the domain name was plausible, especially given the dictionary meaning of the word “dumbledore,” which gave him rights or legitimate interests in the domain name under the UDRP:
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.”
Second, the panel found that Allberg did not register and use the domain name in bad faith because “dumbledore” has a definition unrelated to the Warner Bros. trademark, Allberg did not initiate a sale of the domain name to Warner Bros., and the passive holding doctrine does not apply here:
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…. Here, the disputed domain name is intended for a use consistent with its meaning.
[I]n 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.
Lessons
Even though I am not a Harry Potter fan, I am familiar with the Dumbledore character, which obviously is quite well-known. But as this UDRP case makes clear, the strength of a trademark is not the only consideration. It is always important to examine how (or even if) a disputed domain name is being used, and whether the trademark also has a dictionary definition.
I was unaware that “dumbledore” was a synonym for “bumblebee” — but apparently it is.
Because the word “dumbledore” is so closely associated with Harry Potter, it may be hard to think of how it could be used in another context. But the panelist’s decision may be easier to understand if you think of a different trademark that is also well-known but has a dictionary definition — such as “apple.” In that context, it may be easier to see how a domain name containing the word “apple” would be appropriate where the registrant does not proactively offer it for sale to Apple (the technology company formerly known as Apple Computer) or use it in connection with a website that has any association with Apple.
(Photo credit: Copyright © Ari Isenberg 2019 at Warner Bros. Studio Tour London.)
