By Elliott Riches
If you stop someone on the street and ask if they know what “dumbledore” means, most would say, “A character from Harry Potter.”[1] This would not be surprising as Albus Dumbledore is a key figure in a franchise that sold more than four hundred million books in 68 languages and has a set of related films which have grossed $9.18 billion.[2] However, go to a dictionary, look up dumbledore, and most would be surprised to see that a dumbledore is another name for a bumblebee.[3] Which is why, as of now, if you search “dumbledore.com” in a web browser, you will retrieve a webpage discussing the bumblebee.[4] Thanks to a decision from Forum, a U.S. based arbitration service, the current website address, linked to the dumbledore bumblebee, cannot be claimed by Warner Brothers Studios, who own the rights to the Dumbledore character.[5]
Each site on the internet is required to have its own unique identifying address.[6] These unique identifiers can be names, numbers, or a combination of the two that allow someone using the internet to access the webpage.[7] These unique addresses are often referred to as a “domain name.”[8] To get a domain name, a website owner need only go to one of the various “hosts” and purchase a name that nobody else owns.[9] However, this system appears to have a flaw. With multiple websites that allow the registering of domain names, how are there no repeats? The International Corporation for Assigned Names and Numbers (“ICANN”) ensures there are no duplicates.[10] ICANN coordinate’s domains names for the entire world to make sure no two websites use the same domain name.[11]
ICANN also created the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and established rules for how the policy should operate.[12] Under the UDRP, if a party believes that another person has improperly registered a domain name they may seek relief.[13] Under the UDRP, there are three elements a complainant must prove to have the allegedly improper domain name cancelled or transferred to the complainant.[14] The first element involves showing that the domain name is “identical or confusingly similar to a trademark or service mark in which the complainant has rights.”[15] Second, the complainant must prove that the owner “[has] no rights or legitimate interests in respect of the domain name.”[16] Finally, the complainant must prove the “domain name has been registered and is being used in bad faith.”[17]
Since 2003, Warner Brothers has owned trademarks to “Albus Dumbledore,” but does not have a trademark to “Dumbledore” standing alone.[18] In July 2004, the domain name “dumbledore.com” was first registered. In 2019, Karl Allberg acquired the domain name and registered it with Porkburn LLC in an agreement that subjected him to the UDRP.[19] Warner Brothers sought to have the trademark transferred to it from Allberg and filed an action under the UDRP with Forum, who appointed Gerald Levine as the “single-member panel.”[20]
The arbiter analyzed each of the elements of ¶ 4 of the UDRP to conclude that Allberg could keep the domain name. The arbiter started by analyzing whether the name was confusingly similar with Warner Brothers’ trademarks. As he wrote, “[t]he burden of proof on the first element is relatively low.”[21] While, Warner Brothers did not own the “dumbledore” trademark, the domain name is close enough to the other trademarks to be “confusingly similar,” as provided in the first element.
Despite satisfying the first element, Warner Brothers had difficulty satisfying the remaining two elements. In analyzing the second element, the arbiter applied Forum precedent, which described a two-step burden-shifting process.[22] Once the complainant properly alleges a prima facie case, the respondent may rebut the prima facie case by demonstrating either its rights or legitimate interest.[23] Here, Warner Brothers established that Allberg was not authorized to use the name nor was he commonly known by that name.[24] Further, it argued Allberg did not hold the domain name in good faith or intend to use the name for a website on dumbledores.[25] Allberg countered that he did intend to use the website for dumbledores and was taking steps to prepare that process.[26] This, Allberg asserted, brought him within ¶ 4(c)(i) of the UDRP which provides rights and legitimate interest may be demonstrated through, “demonstrable preparations to use, the disputed domain name . . . with a bona fide offering of . . . services.”[27] The arbiter agreed, relying on the fact that dumbledore has a dictionary definition to find that Allberg’s evidence, while minimal, met this factor.[28]
Finally, the arbiter went on to consider the third element even though he had already decided the second element was not met.[29] He found that even though Allberg had offered to sell the domain name back to Warner Brothers, which usually shows bad faith, here that presumption was inapplicable since Warner Brothers reached out to Allberg, not the other way around.[30]
Since the decision was made, Allberg has apparently completed his site. Dumbledore.com now discusses the collective intelligence of bumblebees, or dumbledores as Allberg would have you call them.[31] While the site is very basic in form (it is a single page with a few photos, some text, and links), it appears Allberg was honest when he asserted he had a work in progress and was not buying the domain name in bad faith.[32] Those who wish to learn more about dumbledoors can indeed now use Allberg’s site for just that.[33]
The Forum arbiter’s decision has
implications for a variety of domain names that rely on the dictionary. One
prominent example of a trademark that is also a well-known word is Apple, Inc.[34]
A website that used apple in its name and discussed the fruit would likely not
run afoul of the UDRP since apple has a dictionary definition. On the other
hand, if someone bought a domain name that used apple in the name, discussed
apple products, and then sought to sell the name back to the company, such a
use would likely be a violation. For now, buying domain names that can be
confused with registered trademarks will be a perfectly acceptable practice, so
long as that name can be found in a dictionary.
[1] See, Google Results for “dubledore”, Google, https://www.google.com/search?q=dumbledore.
[2] Doug Isenberg, UDRP Case Note: Warner Bros. Loses <dumbledore.com>, GigaLaw (Feb. 26, 2020) https://giga.law/blog/2020/2/26/warner-bros-loses-dumbledore.
[3] Dumbledore, Merriam-Webster https://www.merriam-webster.com/dictionary/dumbledore (last visited Mar. 1, 2020).
[4] Dumbledore.com, https://dumbledore.com/ (last visited Mar. 1, 2020).
[5] See, Warner Bros. Entm’t, Inc. v. Karl Allberg, Forum No. 1881913 (Feb. 19, 2020) (Levine, Arb.). The decision is available here: https://www.adrforum.com/domaindecisions/1881913.htm.
[6] About ICANN, ICANN https://www.icann.org/resources/pages/welcome-2012-02-25-en.
[7] Id.
[8] Id.
[9] Id.
[10] Id.
[11] Id.
[12] See Uniform Domain Name Dispute Resolution Policy, ICANN (Oct. 24, 1999), https://www.icann.org/resources/pages/policy-2012-02-25-en.
[13] Id. ¶ 4.
[14] Id. ¶¶ 4(c).
[15] Id. ¶ 4(a)(i).
[16] Id. ¶ 4(a)(ii).
[17] Id. ¶ 4(a)(iii).
[18] Warner Bros. Entm’t, Inc. v. Karl Allberg, Forum No. 1881913 (Feb. 19, 2020) (Levine, Arb.).
[19] Id.
[20] Id.
[21] Id.
[22] Id.
[23] See Advanced Int’l Mktg. Corp. v. AA-1 Corp, Forum No. 1406896 (Nov. 2, 2011) (Johnson, Arb.); see also Neal & Massey Holdings Ltd. v. Gregory Ricks, Forum No. 1549327 (Apr. 12, 2014) (DeCicco, Arb.). Under the UDRP, rights to a domain name can come from preparation to use the domain name in connection with offering goods or services, that you have been commonly known by that domain name, or you are making a legitimate non-commercial or fair use of the domain name. Uniform Domain Name Dispute Resolution Policy, supra note 12, at ¶¶ 4(c)(i)–(iii).
[24] Warner Bros. Entm’t, Inc. v. Karl Allberg, Forum No. 1881913 (Feb. 19, 2020) (Levine, Arb.).
[25] Id.
[26] Id.
[27] Id.; Uniform Domain Name Dispute Resolution Policy, supra note 12, at ¶ 4(c)(i).
[28] Allberg, Forum No. 1881913.
[29] Id.
[30] Id.
[31] Dumbledore.com, supra note 4.
[32] See id.
[33] Id.
[34] Isenberg, supra note 2.
