The recent UDRP decision ordering the transfer of the domain name worldofwizarding.com wrongly failed to apply the important precedent of the Rogers test in its legitimate interests analysis. The Rogers test was established in the landmark 1989 case Rogers v. Grimaldi and seeks to balance trademark rights against artistic free expression under the First Amendment.
In Rogers, dancer Ginger Rogers sued over the film title “Ginger and Fred” – but the court found no infringement because the title had artistic relevance to the film, a fictional story about Italian dancers nicknamed “Ginger and Fred” after Rogers and Astaire. This landmark case established that titles with artistic relevance are protected unless they explicitly mislead as to source.
The World of Wizarding case cried out for similar balancing. The domain incorporated the WIZARDING WORLD trademark to promote fictional wizarding events – a parodic commentary squarely in the artistic realm. The respondent even added its own creative elements (“world of”) – much like the film title adding “and Fred” in Rogers. Yet the UDRP panel solely focused on the trademark rights, ignoring the artistic nature.
This is not a typical cybersquatting dispute. Rather, the Respondent’s use of a Domain Name is merely ancillary and incidental to its business. And the panel wrongly determined that the Respondent’s business competes with the Complainant’s business in any meaningful way.
Unlike Rogers, the panel failed to even address whether the domain had artistic relevance or explicitly misled. It performed no balancing at all. This flies in the face of Rogers and its progeny, where courts excused uses in video games, songs, and more due to artistic relevance and no explicit misleading. A more nuanced analysis considering free speech was warranted.
By utterly ignoring the Rogers framework, the World of Wizarding panel established a dangerous UDRP precedent at odds with US court precedents like Rogers. Its transfer order impinges on free expression and legitimate parody of the US-based domain name owner. Let’s hope future UDRP panels don’t fall under the spell of this decision, and remember to balance trademarks and free speech as Rogers wisely did. The World of Wizarding ruling sadly failed on that count, wrongly disregarding key principles at the intersection of intellectual property and the First Amendment.
What do you think? Did the UDRP panel fail to properly consider free speech interests in this case? Share your thoughts in the comments!
Some Arguments that could have been made on behalf of Michaelis Events:
- The Supreme Court left open if Rogers ever applies beyond trademarks. While its applicability to Michaelis Events’ domain name disputes is unresolved, UDRP panelists should favor free expression in analyzing fair use under the second element of the UDRP Policy.
- Domains often have dual functions as source identifiers and communicative titles. The Rogers test developed for artistically relevant titles should apply.
- Michaelis Events’ fictional wizarding world content shows the domain serves the expressive function of commentary and parody, not just source identification.
- Using Rogers would properly balance trademark rights against Michaelis Events’ free speech interests in parody and commentary.
- The Supreme Court ruled expressive message content remains relevant to likelihood of confusion in Jack Daniel’s Props. v VIP Prods. [, June 8, 2023, No. 22-148]. Rogers would directly assess the weight of Michaelis Events’ disclaimer and parody.
- Rogers provides a framework for evaluating whether a domain explicitly misleads as to source, not just causes confusion. The panelist failed to distinguish these.
- Concurring opinions advise care in applying Rogers. Its applicability here remains open.
- Unlike the “Bad Spaniels” marks, Michaelis Events did not concede to using the domain as a trademark nor is there evidence of trademark usage on the website.
- Michaelis Events’ website content supports parody and commentary purposes, reducing any explicit intent to mislead consumers.
In conclusion, the panelist had strong grounds to apply Rogers given its unsettled scope, Michaelis Events’ expressive content, lack of trademark use, and parody purpose. This could have led to a more balanced ruling.
Review of the worldofwizarding.com website:
- It promotes a fictional “A Wizard’s Christmas” event set at the Alabaster School of Witchcraft and Wizardry.
- The site provides detailed background on the imaginary school, houses, professors, and characters. This establishes an elaborate fictional wizarding world.
- The content evokes Harry Potter with references to magical classes, houses, spells, and more. But it uses original names and details.
- Alabaster school’s wizard house descriptions associate wizarding abilities and traits with different animals like raccoons, wolves, otters.
- The site invites users to take a quiz to get sorted into a Hogwarts-style house.
- A disclaimer at the bottom of the home page clarifies that this website is not officially licensed or affiliated with Warner Bros. or Harry Potter.
In summary, the site develops an immersive fictional wizarding world through textual content and invites participation, while including a disclaimer that it is unaffiliated with Harry Potter IP. The content echoes Harry Potter themes but contains original creative elements.
Summary of the worldofwizarding.com UDRP decision
Here is a summary of the UDRP decision for Warner Bros. Entertainment Inc. v. Sharon Jerome / Michaelis Events, LLC over the domain name <worldofwizarding.com>:
- Complainant Warner Bros. owns trademarks for WIZARDING WORLD related to its Harry Potter films and merchandise.
- Respondent registered the worldofwizarding.com domain in 2021.
- The domain resolves to a site promoting Respondent’s fictional wizarding events.
- The panel found the domain is confusingly similar to Complainant’s mark.
- The panelist found that Respondent’s disclaimer in the footer was inconspicuous. The disclaimer read:
Copyright © A Wizard’s Christmas – All Rights Reserved. This is not a licensed Warner Bros. event. Wizard’s Christmas is not affiliated with Warner Bros. Entertainment Inc. or its Harry Potter® Series of books or movies. We are an independent company and are not affiliated with Warner Brothers nor are we an officially licensed retailer of official HARRY POTTER® services or merchandise. We purchase merchandise from approved third-party sellers and offer it for resale through our web site. HARRY POTTER® is a federally registered trademark owned by Warner Bros. Entertainment Inc.
- Respondent’s use of the domain for competing goods was not a bona fide offering of goods and services.
- Bad faith was found based on intentional confusion to attract users for commercial gain.
- The panel ordered the transfer of the domain name to the Complainant.
- Date of decision: November 17, 2023
- The panel was a sole arbitrator, Dennis A. Foster, Panelist.
In summary, the panel ruled in favor of the trademark holder, finding the respondent targeted the mark in bad faith by using the confusingly similar domain name for competing goods and services.
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Some General legal principles from the worldofwizarding.com UDRP decision:
Complainant’s Burden of Proof
“Paragraph 4(a) of the Policy requires that Complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred.”
This establishes that the complainant bears the burden of proving all three UDRP elements.
Trademark Registration Establishes Rights
“Having presented the Panel with appropriate evidence of a valid USPTO registration for the WIZARDING WORLD service mark, Complainant has established sufficient rights in that mark to satisfy Policy ¶ 4(a)(i).”
This principle indicates that a registered trademark is adequate to establish the complainant’s rights under the first UDRP element.
Assessing Confusing Similarity
“The Panel finds that these differences do not prevent confusing similarity between the disputed domain name and the mark.”
This suggests that the assessment of confusing similarity is made objectively by the panel based on its own comparison of the domain and trademark.
Burden Shift to Respondent
“After a complainant makes a prima facie case that those rights or legitimate interests do not exist, the burden of proof shifts to that respondent to demonstrate its rights or legitimate interests in the disputed domain name.”
This establishes that once the complainant makes a prima facie case under the second element, the burden shifts to the respondent to rebut this.
Criteria for Lack of Bona Fide Offering
“Offering competing products via a domain name that is confusingly similar to a complainant’s mark fails to constitute ‘a bona fide offering of goods or services’ under Policy ¶ 4(c)(i).”
This principle indicates that using a confusingly similar domain for competing goods or services does not represent a bona fide offering, which would demonstrate legitimate rights per the UDRP.
Criteria for Bad Faith
“The Panel concludes that Respondent is intentionally attempting to attract, for commercial gain, internet users based on the likelihood of confusion with Complainant’s mark in bad faith pursuant to Policy ¶ 4(b)(iv).”
This establishes that intentionally creating confusion to attract users for commercial gain satisfies the bad faith requirement under the Policy.
Summary of the key facts and holdings in Rogers v. Grimaldi regarding use of trademarked titles under the Rogers test:
Ginger Rogers sued the producers of the film “Ginger and Fred” about two fictional Italian cabaret dancers nicknamed after Rogers and Astaire.
Rogers claimed the film’s title infringed her trademark rights in her name under the Lanham Act.
The Second Circuit held that titles with artistic relevance to a work are protected under the First Amendment unless the title explicitly misleads as to the content or source of the work.
The court found the film title had artistic relevance to the story about the two fictional dancers known as “Ginger and Fred.”
Since the film title did not explicitly mislead that it was about Rogers herself, it was protected expressive speech under the First Amendment.
This established the Rogers test balancing trademark rights against free expression for titles of artistic works.
The Rogers test looks at whether the title has artistic relevance and if it explicitly misleads consumers regarding content or source.
In summary, Rogers v. Grimaldi involved a film title making artistically relevant use of Ginger Rogers’ name, which was protected speech under the First Amendment per the court’s new balancing test.
Key points about the Rogers Test:
- Rogers v. Grimaldi established a test for balancing trademark rights against free expression when trademarks are used in artistic works. The test looks at whether the use has artistic relevance and explicitly misleads as to source.
- The Rogers test has been widely adopted by appeals courts for evaluating Lanham Act claims against expressive works using trademarks, like movie and book titles, video games, songs etc.
- The case was decided by the Second Circuit Court of Appeals in 1989.
- The court recognized titles have an “expressive element” and often minimal risk of confusing consumers about content or source.
- Rogers set a high bar for finding infringement, to avoid chilling artistic expression. Plaintiffs must show the title is not artistically relevant or explicitly misleading.
- The Rogers test has been adopted by other circuit courts and applied beyond just titles, like song lyrics, video games, merchandise, etc.
- Critics argue it sets too high a bar against finding infringement. Defenders argue it provides important free speech protection.
- The Supreme Court recently limited Rogers to non-trademark uses in the Jack Daniel’s v. VIP Products but left larger questions about its validity open.
- Key issues include what qualifies as an “artistic work” under Rogers, how explicit misleading must be, and if it applies beyond titles.
- The Supreme Court decision in Jack Daniel’s Properties v. VIP Products provided more clarity on the proper scope of the Rogers test. The outcome should apply the Rogers test when the domain name is not used as a trademark.
- Attorneys advise trademark owners that Rogers does not give blanket immunity for use of marks in creative works. Evidence of explicit misleading as to source can still overcome the defense, as can uses that go beyond titles into the body of a work.
- Surveys may be useful to show confusion, but should not be the only evidence relied upon as respondents may misunderstand parody protections.
- Rogers requires careful pleading by parties and scrutiny by courts as to whether the accused work is truly artistically relevant and non-explicitly misleading per the Lanham Act.
In summary, the attorney analyses emphasize Rogers as an important precedent at the intersection of trademark and free speech law, while recognizing its scope and application, courts and UDRP panelists should apply the Rogers test when the domain name is not used as a trademark but only as a URL when engaged in artistic free expression under the First Amendment.
worldofwizarding.com UDRP DECISION
Warner Bros. Entertainment Inc. v. Sharon Jerome / Michaelis Events, LLC
Claim Number: FA2309002064214
Complainant is Warner Bros. Entertainment Inc. (“Complainant”), represented by Annie Allison of Haynes and Boone, LLP, New York, USA. Respondent is Sharon Jerome / Michaelis Events, LLC (“Respondent”), represented by Amy Sullivan Cahill of Vice Cox & Townsend PLLC, Kentucky, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <worldofwizarding.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to Forum electronically on September 29, 2023; Forum received payment on September 29, 2023.
On October 2, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <worldofwizarding.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 9, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to firstname.lastname@example.org. Also on October 9, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on October 25, 2023.
An Additional Submission from Complainant was received on October 26, 2023. This Additional Submission complied with Supplemental Rule 7, and will be considered by the Panel in its decision below. On October 31, 2023, an Additional Submission from Respondent was received. This Additional Submission complied with Supplemental Rule 7, and will also be considered by the Panel in its decision below. On October 27, 2023, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Dennis A. Foster as Panelist.
On November 10, 2023, the Panel issued Procedural Order No. 1 requesting the Respondent to re-submit its Additional Submission in pdf format and extending the Decision due date to November 17, 2023. On November 13, 2023, the Respondent complied.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
– Complainant is a fully integrated, broad-based entertainment company that produces feature film, television and home entertainment products for worldwide distribution. One of Complainant’s most successful franchises involves movies based on the famous, best-selling Harry Potter novels authored by J. K. Rowling. As a result, Complainant offers a multitude of products under this franchise that are marketed under Complainant’s WIZARDING WORLD marks that are registered with several authorities, including the United States Patent and Trademark Office (“USPTO”). Complainant also conducts a portion of this franchise business under its <wizardingworld.com> domain name.
– The disputed domain name, <worldofwizarding.com>, is confusingly similar to Complainant’s WIZARDING WORLD service mark. The disputed domain name includes both words contained in Complainant’s mark and merely inverts them, which does not mitigate confusion. Also, the insertions of the common word “of” and the “.com” generic Top Level Domain (“gTLD”) fail to create a meaningful distinction.
– Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not affiliated with Complainant and has not received authorization from Complainant to use its mark in any manner. There is no suggestion that Respondent is commonly known as the disputed domain name. Complainant fails to use the disputed domain name for a bona fide offering of goods or services or for legitimate noncommercial or fair use, because the disputed domain name leads to a website that offers tickets to services and merchandise that suggest an association with Complainant’s mark and thus infringe on and compete with Complainant’s offerings. Respondent’s disclaimer, posted on the bottom of Respondent’s webpage attached to the disputed domain name, does not legitimize Respondent’s use of the disputed domain name.
– Respondent registered and is using the disputed domain name in bad faith. Respondent clearly had knowledge of Complainant’s WIZARDING WORLD service mark when registering the disputed domain name. Moreover, Respondent is using the disputed domain name purposely to disrupt Complainant’s business by offering competitive products. Respondent is also attempting to gain commercially due to the likely confusion between the disputed domain name and Complainant’s trademark as to the ownership of the website connected to the disputed domain name.
– Respondent is an event-planning agency that for nine years has hosted a holiday event called “A Wizard’s Christmas.” This event features a fictional place in the magical world called the Alabaster School of Witchcraft and Wizardry, which offers dinner, theater-style performance and a marketplace with magical shops, boutiques and food. It is marketed to audiences that include fans of books and films relating to Harry Potter, Lord of the Rings, Percy Jackson and The Hobbit.
– The disputed domain name is not confusingly similar to any of Complainant’s marks. None of those marks and the disputed domain name are exactly the same and, in comparison, they create distinct commercial impressions with no likelihood of confusion.
– Respondent has rights or legitimate interests in the disputed domain name because it is used in connection with a bona fide offering of goods and services. Respondent uses the disputed domain name for entertainment goods and services involving its registered ALABASTER SCHOOL OF WITCHCRAFT & WIZARDRY service mark.
– Respondent registered and is using the disputed domain name in good faith. The disputed domain name was registered and is being used for Respondent’s bona fide offering of entertainment goods and services in connection with its “A Wizard’s Christmas” event and other related events.
C. Complainant’s Additional Submission
– The disputed domain name and Complainant’s marks do not create distinct commercial impressions because a mere inversion of terms fails to create such a distinction. Moreover, the confusion between the disputed domain name and the marks is increased due to Respondent’s website that trades on the globally famous Wizarding World and Harry Potter franchises.
– Respondent uses the disputed domain name to promote an event, “A Wizard’s Christmas,” and other events that are designed to attract fans of the Harry Potter franchise, clearly infringing on Complainant’s marks and competing with Complainant’s offerings. That use of the disputed domain name, to market goods and services that compete with those of Complainant, is not “a bona fide offering of goods and services” consistent with the Policy.
– Respondent’s argument that it registered the disputed domain name in good faith because registration occurred before notice from Complainant is invalid. Also, the claim that the events promoted under the disputed domain name have existed since 2016 is irrelevant, because Complainant’s marks have been well-known since 2010.
– Respondent’s reference to a disclaimer attached to the website connected to the disputed domain name is insufficient to establish good faith registration and use of the disputed domain name.
D. Respondent’s Additional Submission
The Respondent has submitted proof of its USPTO registration of the service mark A WIZARD’S CHRISTMAS, Reg. No. 7,206,552 dated October 31, 2023; and proof of its USPTO registration of the service mark ALABASTER SCHOOL OF WITCHCRAFT & WIZARDRY and Design, Reg. No. 6610507 dated January 11, 2023.
Complainant is an established film and television production company based in the USA that has existed for many years. One of its successful productions involves a motion picture with sequels based on the well-known Harry Potter novels. In conjunction with marketing many products related to this franchise, Complainant has registered the WIZARDING WORLD service mark with several authorities, including the USPTO (e.g., Registration No. 6096860; registered July 7, 2020).
Respondent is the owner of the disputed domain name <worldofwizarding.com>, which was registered on April 15, 2021. The disputed domain name is attached to a website that promotes various goods and services pertaining to imaginative fictional places and characters. The Respondent also is the owner of the service mark A WIZARD’s CHRISTMAS and the service mark ALABASTER SCHOOL OF WITCHCRAFT & WIZARDRY and Design whose details are supra.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Having presented the Panel with appropriate evidence of a valid USPTO registration for the WIZARDING WORLD service mark, Complainant has established sufficient rights in that mark to satisfy Policy ¶ 4(a)(i). See Time Warner Inc. v. Above.com Domain Privacy, FA 1585358 (Forum Dec. 10, 2014) (“Complainant’s USPTO registrations satisfactorily evidence the required Policy ¶4(a)(i) rights in the marks.”); see also Innomed Technologies, Inc. v. DRP Services, FA 221171 (Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant’s rights in the mark.”).
In examining the disputed domain name, <worldofwizarding.com>, the Panel can see plainly that it is not identical to the WIZARDING WORLD mark. However, the differences between the two are not significant because the disputed domain name contains both terms of that mark. Those two terms, “wizarding” and “world,” are inverted in the disputed domain name as compared with the service mark, and the generic term “of” is added along with the “.com” gTLD. The Panel finds that these differences do not prevent confusing similarity between the disputed domain name and the mark. Moreover, the website connected with the disputed domain name contains fanciful materials and goods that are consistent with the materials and goods offered by Complainant under its service mark, thereby increasing the degree of confusion that internet users might encounter. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s service mark per Policy ¶ 4(a)(i). See University of Richmond v. Lunsford, FA 1989143 (Forum Apr. 20, 2022) (finding <richmonduniversity.com> to be confusingly similar to the UNIVERSITY OF RICHMOND mark, while stating “…the inversion of the terms ‘university’ and ‘richmond’ and the omission of the word ‘of’ are insufficient to distinguish the domain name from the mark.”); see also PFIP, LLC v. Planet Fitness, FA 1491578 (Forum May 10, 2013) (finding <fitnessplanetonline.com>, among other disputed domain names, to be confusingly similar to the PLANET FITNESS mark).
As a consequence, the Panel finds that Complainant has demonstrated that the disputed domain name is identical or confusingly similar to a service mark in which Complainant has rights.
Rights or Legitimate Interests
As a respondent in a UDRP proceeding is in the best position to present evidence of rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case that those rights or legitimate interests do not exist, the burden of proof shifts to that respondent to demonstrate its rights or legitimate interests in the disputed domain name. See Neal & Massey Holdings Limited v. Ricks, FA 1549327 (Forum Apr. 12, 2014); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006). In this case, Complainant has sustained a prima facie case by establishing that the disputed domain name is confusingly similar to its service mark and that Respondent is not authorized by Complainant to use that mark.
In rebuttal to Complainant’s prima facie case, Respondent contends that it is using the disputed domain name in connection with “a bona fide offering of goods and services” per Policy ¶ 4(c)(i). However, the Panel finds that the goods offered for sale on Respondent’s website attached to the disputed domain name are quite similar to those offered by Complainant under its service mark. This becomes very clear when Respondent references Harry Potter fans as a target internet user audience, the same audience that Complainant targets. Many prior Policy panels have decided that offering competing products via a domain name that is confusingly similar to a complainant’s mark fails to constitute “a bona fide offering of goods and services” under Policy ¶ 4(c)(i), and the Panel is in agreement with those decisions. See Pink Jeep Tours, Inc. v. Conaway, FA 1564779 (Forum July 23, 2014) (“Respondent’s use of the <pinkjeeptours.us> domain name to promote a business that is directly competing with Complainant’s business is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.”) see also Florists‘ Transworld Delivery v. Malek, FA 676433 (Forum June 6, 2006).
Given that Respondent has failed to successfully rebut Complainant’s prima facie case, the Panel finds that the prima facie case is conclusive.
Accordingly, the Panel finds that Complainant has established that Respondent has no rights or legitimate interests in the disputed domain name.
Registration and Use in Bad Faith
Policy ¶ 4(b) lays out four specific circumstances that can lead to a finding of bad faith registration and use of a disputed domain name, including:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The Panel has found above that the disputed domain name is confusingly similar to Complainant’s mark and that the website connected to the disputed domain name offers competing goods and services for sale. Therefore, the Panel concludes that Respondent is intentionally attempting to attract, for commercial gain, internet users based on the likelihood of confusion with Complainant’s WIZARDING WORLD mark as to the source, sponsorship, affiliation or endorsement of that website in bad faith pursuant to Policy ¶ 4(b)(iv). See Home Box Office, Inc. v. porter, FA 2038411 (Forum May 17, 2023); see also Xylem Inc. v. YinSi BaoHu Yi KaiQi, FA 1612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Respondent has contended that a disclaimer, disavowing connection with Complainant and placed at the bottom of one page of the website attached to the disputed domain name, is sufficient to mitigate a finding of bad faith registration and use of the disputed domain name by Respondent. However, the Panel notes that the disclaimer is barely noticeable and that Respondent admits creating that disclaimer only after having been recently contacted by Complainant. Thus, in accordance with prior Policy decisions, the Panel decides that the disclaimer does not affect the Panel’s finding of bad faith in this case. See Google LLC v. Adrian Ionescu, FA 1761717 (Forum Jan. 8, 2018) (“The mere existence of a disclaimer does not mitigate a respondent’s bad faith actions, particularly if it is inconspicuous, per Policy ¶ 4(a)(iii).”); see also Thirty & Co. v. Jake Marcum, D2016-1212 (Wipo Aug. 16, 2016) (“Rather than curtail consumer confusion, the nearly undetectable disclaimer at the bottom of Respondent’s webpage merely confirms Respondent’s knowledge and bad faith disregard of Complainant’s rights.”).
Therefore, the Panel finds that Complainant has proved that the disputed domain name was registered and is being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <worldofwizarding.com> domain name be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster, Panelist
Dated: November 17, 2023