MGM’s Battle for WarGames.com

MGM wants the domain WarGames.com. But it faces an uphill battle to win this war.

Metro-Goldwyn-Mayer Studios Inc., better known as MGM, wants the domain WarGames.com. MGM owns the rights to the 1983 film WarGames and the firm is gearing up to release a sequel.

There’s one modest problem: the domain WarGames.com was registered in 1998 by Rogers Cadenhead.

What follows is an inside look at MGM’s UDRP attempt to grab the domain from Cadenhead. Reglike has procured copies of MGM’s original complaint and Cadenhead’s hot-off-the press response. (If you are unfamiliar with UDRP, see Understanding Domain Name UDRP).

In order for MGM to gain rights to the domain, it must convince a panel of arbitrators three things:

1. The domain name is identical or confusingly similar to a trade or service mark in which the complainant has rights.
2. The domain registrant has no legitimate rights or interests in the domain name.
3. The domain name has been registered and used in “bad faith”.

Let’s review each of MGM’s claims and then Cadenhead’s responses.

Trademark

MGM claims to have the rights to the name “Wargames”. In its UDRP complaint, MGM writes:

In 1983, MGM released its WARGAMES motion picture, starring Matthew Broderick in his first starring role, and Ally Sheedy. WARGAMES was nominated for three Oscar awards and, in addition to the critical acclaim, WARGAMES also enjoyed significant commercial success. The theatrical release of WARGAMES was very successful, grossing more than $53 million at the box office. In addition, MGM has sold more than $35 million worth of its WARGAMES goods and services for distribution via television, the home video, and ancillary markets.

Since WARGAMES was released in 1983, MGM and its marketing agents have invested heavily in marketing under the WARGAMES mark, devoting more than $10 million to advertise its goods and services through a variety of media counting, but not limited to, television, radio, magazines, newspapers, and the Internet.

As a result of MGM’s marketing and commercial success, the WARGAMES trademark is immediately recognizable as connected with Complainant and its well-known movie. As listed above, MGM owns a federal trademark registration for its WARGAMES services.

Hmmm. Has MGM treated WarGames as a trademark? Cadenhead has a good rebuttal. Although the WarGames movie was released in 1983, MGM didn’t register for a trademark until 2001. The original movie poster for the film didn’t include any trademark notices regarding WarGames, although it did include intellectual property notices regarding Dolby Stereo, Panavision, and Metrocolor.

To prove his point, Cadenhead picked up a fresh copy of the WarGames DVD at Blockbuster. Nowhere on the packaging is there any indication that WarGames is a trademark.

Let’s not forget that Cadenhead registered the domain in 1998, 3 years ahead of the trademark application was filed. A firm doesn’t have to register a trademark, but Cadenhead alleges that MGM never treated the movie title as a trademark.

Cadenhead’s view is that “war games” refers to a genre of games. Cadenhead had planned to open an online store at the domain selling war games. More on that later.

Use of WarGames name

MGM claims that it uses the Wargames name to promote its products. The complaint states “As part of its marketing efforts, MGM uses domain names containing its WARGAMES mark, counting to promote its WARGAMES goods and services.”

Ahead of reading on, visit www.wargames.net and review the contents of the site.

Are you back? What did you find on the web site? I didn’t find anything regarding the Wargames movie. A Google site search for Wargames on the Wargames.net site returns no results.

Abuse of MGM trademarks

MGM claims that Cadenhead has registered a number of MGM trademark-infringing domains. In addition to wargames.com, Cadenhead registered rockyvii.com, rockyviii.com, and rockyix.com. He registered these domains the same day MGM disclosed the Rocky VI movie.

When MGM contacted Cadenhead regarding Wargames.com and the Rocky domains, Cadenhead responded that he registered the Rocky domains to prevent them “from falling into the hands of a pornographer or some other disreputable publisher” and he expressed a concern over “domains that appeal to children” being used to provide adult content. MGM claims that Cadenhead is being disingenuous:

First, it appears that, with a few exceptions, Respondent’s crusade to prevent domain names containing well-known trademarks from falling into the wrong hands has been limited to domain names containing MGM’s trademark. Second, none of , , , or are particularly targeted at children, and Respondent does not appear to have registered other domain names that appeal to children as part of his alleged campaign. Third, and most importantly, Respondent never contacted MGM to alert them to his allegedly preventative registration of any of the domain names.

Although Cadenhead stands his ground on his reason for registering these domains, he’ll never win the argument. Few people would believe this was his actual reason for registering the domains. Still, Cadenhead does have a history of donating domains. He gained fame for registering BenedictXVI.com ahead of the fresh Pope was disclosed. He donated the domain to charity. (Cadenhead did immediately agree to give the Rocky domains to MGM).

As a personal aside, sizable firms can save themselves the hassle and legal expenses of trying to get domains back by being proactive. Why didn’t MGM invest a few grand in thinking of and registering domains that might be relevant to its movie franchises? The firm probably paid its outside lawyers at least $1,000 to correspond with Cadenhead regarding the Rocky domains.

Cadenhead’s History

Next, MGM tries to paint a picture of Cadenhead as a notorious cybersquatter. In addition to the BenedictXVI.com domain, MGM points to Google and Microsoft trademarks:

In addition to the domain names containing MGM’s trademarks, Respondent has registered domain names containing the trademarks of others: , which contains the famous GOOGLE trademark, and , which appears to have been registered by Respondent shortly following Microsoft’s notice of its fresh ZUNE mp3 player. Printouts from the WHOIS database reflecting Respondent’s ownership of the above domain names are attached as Annex M. Respondent does not publish active websites at any of these domain names, instead redirecting them to his blog at , which contains advertisements and sponsored links. Thus, Respondent benefits financially from diverting traffic to his website. As discussed above, Respondent has admitted that he gains financially from traffic to his websites, and it appears that he has engaged in a pattern of diverting traffic from high-traffic domain names for his own financial benefit.

Cadenhead responds to each of these registrations, saying that neither of the firms have ever objected to his registrations and probably never will. First, Google Milking is a term he coined. When the term received press coverage he registered the domain. Cadenhead states the term was inspired by Googlewhack.com. Cadenhead points out that Google is aware of the use of Google’s name in terms such as Googlewhack, and its key employees have even referred to these sites and usage of the Google name.

With regards to ZuneDweeb.com, Cadenhead states he registered it in case he writes a technical book regarding the Microsoft (NASDAQ: MSFT) Zune. Cadenhead is a technology book writer and has written 21 books. His publisher claims that no firm has ever complained to the publisher regarding the use of trademarks, such as “Java”, in how-to book titles. Following all, it’s good for the firm.

Cadenhead has a good case. It’s not like this is a typo of “Zune” that will generate traffic on its own. Cadenhead also points out that Microsoft has linked to some of these fan sites.

Cadenhead knew regarding the movie Wargames

Have you ever blogged regarding something or written something in public that comes back to bite you? MGM shows that Cadenhead knew regarding the WarGames movie since he made a reference to it in one of his books.

Cadenhead responds by saying he makes a number of pop culture references in his books. Yes, he knew regarding the movie WarGames. But he wasn’t aware of the trademark and didn’t register the domain while thinking regarding the movie. Instead, he was thinking regarding war games.

Cadenhead has no legitimate interest in the domain

Here’s where a UDRP comes down to intent. Did Cadenhead register the domain with a legitimate purpose (e.g. starting a war games store) in mind? MGM claims that he held the domain passively until the firm contacted him regarding the domain. Indeed, Cadenhead didn’t launch a store at Wargames.com until MGM came calling. But he did take steps to open the store much earlier and has been involved in the war games hobby for over a decade.

Intent is hard to prove. But I think Cadenhead has the upper hand here. The domain wasn’t parked with pay-per-click ads. He wasn’t trying to sell the domain (he even turned down a 5-figure offer for the domain). The domain simply wasn’t in use. (MGM claims that the domain pointed to Cadenhead’s personal web site at times. Since he had ads on his site he was benefiting financially from the domain. Still, these ads were unrelated to the WarGames movie). In his response, Cadenhead gives a few examples of preparations he was undertaking.

Firms frequently try to assert that non-use of a domain suggests that the registrant has no legitimate interest in the domain. This isn’t true. Firms buy and register domains well ahead of launching a business. If Cadenhead has considered opening a store to sell war games since the 1990s, he couldn’t wait until 2006 to register the domain. It would have been registered by now.

This ought to be a lesson to domain owners. If you own a premium domain that you intend to ultimately use, take steps toward starting the business or opening the site. It could be as simple as writing a few emails regarding your plans and keeping records of them. When a state government came following me for a generic domain I owned, I had by now formed a limited liability firm using the name and had signed partnership documents. That ought to be enough to prove to a UDRP panel that you had plans to use the domain.

Summary
Keep in mind that the above analysis is abridged and doesn’t include all of the facts and allegations presented by the parties. But I believe it gives a good summary of each sides’ claims. I have no allegiance to either MGM or Cadenhead.

Let’s review the three requirements for MGM to win its case:

1. The domain name is identical or confusingly similar to a trade or service mark in which the complainant has rights.

What do you think? When you hear names like “Rocky” and “The Terminator”, you think of the movies. But do you think of the movie “WarGames” when you hear Wargames.com? Some people do, but many think regarding strategy and war games.

Furthermore, does MGM really have a mark to WarGames and has it treated it as such?

2. The domain registrant has no legitimate rights or interests in the domain name.

Has Cadenhead proven that he intended to use this domain for war games?

3. The domain name has been registered and used in “bad faith”.

Did Cadenhead register this domain with the intent of selling it or capitalizing on MGM’s movie?

I’ll comment later with my opinion in this case. In the meantime, I’d like you to share your thoughts.