ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION The Roald Dahl Story Company Limited v. Roald Dahl, Roald Dahl Case No. D2023-3918 1. The Parties The Complainant is The Roald Dahl Story Company Limited, United Kingdom, represented by Ashfords LLP, United Kingdom. The Respondent is Roald Dahl, Roald Dahl,1 Pakistan. 2. The Domain Name and Registrar The disputed domain name is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2023. On September 20, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 20, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (The Roald Dahl World Limited) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 28, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 29, 2023. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 3, 2023. In accordance with the Rules, paragraph 5, the due date for Response was October 23, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 24, 2023. 1 These registrant details are included in the WhoIs information provided by the Registrar with no guarantee or warranties regarding their accuracy.
page 2 The Center appointed Assen Alexiev, Jane Lambert, and Marilena Comanescu as panelists in this matter on January 23, 2024. The Panel finds that it was properly constituted. Each member of 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. 4. Factual Background The Complainant is the legal owner of various intellectual property rights relating to the works of Roald Dahl, the world-famous author, including the copyrights in respect of his literary works. In 2021, the Complainant became a subsidiary of Netflix Inc. The Complainant is the owner of a number of trademark registrations for “Roald Dahl” (the “ROALD DAHL trademark”), including the following: - the United Kingdom trademark ROALD DAHL with registration No. UK00003094069, registered on June 5, 2015, for goods and services in International Classes 16, 24, 25, 28, 30, 32, and 41; - the European Union trademark ROALD DAHL with registration No. 016295321, registered on January 25, 2018, for goods and services in International Classes 8, 9, 16, 21, 25, 28, 32, and 41; and - the International trademark ROALD DAHL with registration No. 1442211, registered on July 12, 2018, for goods and services in International Classes 3, 8, 9, 14, 16, 18, 21, 25, 28, 30, and 32. The Complainant is also the owner of the domain name registered on April 2, 1998, which resolves to the Complainant’s official website. The disputed domain name was registered on July 30, 2023. It resolves to a website that represents “The Museum of the Future” and sells tickets. At the time of the filing of the Complaint the disputed domain name resolved to a website that contained images of the Roald Dahl books as published and made them available for free download. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. The Complainant states that the disputed domain name is confusingly similar to its ROALD DAHL trademark, because it differs from the trademark only in the addition of the dictionary word “world”, which does not distinguish it from the trademark. The Complainant notes that the Respondent is not commonly known by the disputed domain name, which was registered in 2023, long after the first registration of the Complainant’s trademark. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name, because it is not affiliated to the Complainant and has not been authorized to use the Complainant’s trademark or to register any domain name incorporating it. According to the Complainant, the Respondent’s only interest in the disputed domain name is to take advantage of the ROALD DAHL trademark to divert traffic intended for the Complainant. The website at the disputed domain name is designed to look like it is an “official” ROALD DAHL website and offers infringing copies of the Complainant’s copyrighted works to the public. The Complainant adds that the Respondent has also copied without permission the “Privacy Policy”, “Terms and Conditions”, and “Acceptable Use Policy” from the Complainant’s official website.
page 3 The Complainant contends that the disputed domain name was registered and is being used in bad faith. According to it, the Respondent’s intention is to act as an “Internet troll” and disrupt the business of the Complainant, and to attract Internet users to the website at the disputed domain name by creating a likelihood of confusion with the Complainant’s ROALD DAHL trademark as to the source, sponsorship, affiliation, or endorsement of the website at the disputed domain name or of a product or service on the website at the disputed domain name. The Complainant points out that the Respondent is making unlicensed and thus infringing copies of copyrighted works owned by the Complainant available for download on the website at the disputed domain name, which displays images of the actual front covers of genuine licensed books in order to promote the download of their unlicensed and infringing copies. The Complainant also notes that the Respondent has also unlawfully copied and displays on its website the Complainant’s “Terms and Conditions”, and “Acceptable Use Policy”, which include the Complainant’s contact details. When a consumer clicks on any of the hyperlinks in these documents on the Respondent’s website, it is taken to the Complainant’s website. The Complainant adds that the name of the Respondent (Roald Dahl who lives in Stratford Upon Avon) is clearly copied and a reference to Roald Dahl, the original creator of the various works and whom the disputed domain name is named after. The Complainant maintains that the above shows that the Respondent is misrepresenting itself as the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of the ROALD DAHL trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the ROALD DAHL trademark is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the ROALD DAHL trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms (here, “world”) may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the ROALD DAHL trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with
page 4 relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. Panels have held that the use of a domain name for illegal activity (here, claimed distribution of illegal copies of the copyrighted books and impersonation of the Complainant) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. The disputed domain name is confusingly similar to the Complainant’s ROALD DAHL trademark and to the name of Roald Dahl, the author of various books the copyright in which is held by the Complainant. The evidence shows that the Respondent’s website copied the look-and-feel of the Complainant’s official website, displayed the ROALD DAHL trademark and copyrighted images of the actual front covers of the genuine books of Roald Dahl, and included copies of various documents from the Complainant’s website. Moreover, the Respondent’s website promoted the availability of downloadable unlicensed and infringing copies of these books, without disclosing the lack of relationship between the Parties and the lack of authorization of these activities by the Complainant. The Respondent has not disputed the Complainant’s contentions and has not submitted any evidence that its name is indeed Roald Dahl, as indicated to the Registrar for the purposes of the registration of the disputed domain name, and this name appears as false, given that the name is used on the Respondent’s website alongside the images of and the download links for the well-known books whose original creator is Roald Dahl and the copyright in which books is held by the Complainant. There is also no evidence that the Respondent has been authorized by the Complainant to offer for download the same books. The above leads the Panel to the conclusion that the Respondent has attempted to impersonate the Complainant and has engaged in copyright infringement. Such activities, while outside of the scope of the Policy per se, can never confer rights or legitimate interests of the Respondent in the disputed domain name. The fact that the website at the disputed domain name has been changed during the course of this proceeding does not affect the above conclusion, but rather appears as an attempt to evade the application of the Policy. The Panel therefore finds that the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. Panels have held that the use of a domain name for illegal activity (here, claimed distribution of illegal copies of copyrighted books and impersonation of the Complainant) constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. As discussed in the section on rights and legitimate interests, the evidence supports a conclusion that the Respondent has attempted to impersonate the Complainant through the registration and use of the disputed domain name, which has resolved to a website offering for download infringing copies of the books the
page 5 copyright in which is held by the Complainant. The Respondent has not submitted any plausible explanation of its actions but has changed the content of the website at the disputed domain name after the filing of the Complaint, which appears as an attempt to escape liability for its actions. The above supports a conclusion that the Respondent has targeted in bad faith the Complainant, its trademark and the copyrighted books authored by Roald Dahl in an attempt to disrupt the business of the Complainant or to attract visitors to the Respondent’s website by confusing them that the disputed domain name and the associated website belong to or are affiliated to the Complainant. Paragraph 4(b)(iv) of the Policy provides that the following circumstance shall be evidence of the registration and use of a domain name in bad faith: “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.” Each of the requirements of that subparagraph have been satisfied. The Respondent has used the disputed domain name to attract Internet users to its website. By so doing, it has the opportunity to gather user’s data from which it will derive commercial gain. The Panel has already found the disputed domain name to be confusingly similar to the Complainant’s trademarks. It follows that a likelihood of confusion has been created. Such confusion relates to the source of products on the Respondent’s website. The Panel finds that the Respondent’s conduct falls full square within Paragraph 4(b)(iv) of the Policy and constitutes evidence of registration and use of the disputed domain name in bad faith. On this basis, the Panel finds that the Complainant has established the third element of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant. /Assen Alexiev/ Assen Alexiev Presiding Panelist /Jane Lambert/ Jane Lambert Panelist /Marilena Comanescu/ Marilena Comanescu Panelist Date: February 6, 2024
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