WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Saul Zaentz Company d/b/a Tolkien Enterprises v. ECWD, Inc.
Case No. D2007-0685
1. The Parties
The Complainant is The Saul Zaentz Company d/b/a Tolkien Enterprises, of California, United States of America, represented by Howard Rice Nemerovski Canady Falk & Rabkin, United States of America.
The Respondent is ECWD, Inc., of Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2007. On May 10, 2007, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On May 10, 2007, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 16, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 5, 2007. The Respondent did not submit any response. Accordingly, the Center subsequently notified the Respondent’s default.
The Center appointed William R. Towns as the sole panelist in this matter on July 5, 2007. The Panel finds that it was properly constituted. 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 owner of numerous United States federal registrations for the trademarks HOBBIT and THE HOBBIT (collectively the “HOBBIT Marks”), the first of which was issued by the United States Patent and Trademark Office (USPTO) in March 1983. The Complainant also is the owner of trademark registrations for the HOBBIT Marks in a number of other countries around the world. The Complainant is the holder of various exclusive rights relating to the literary works of J.R.R. Tolkien, including such well-known works as The Lord of the Rings trilogy and the The Hobbit.1 The Complainant has made extensive use of the HOBBIT Marks through worldwide licensing for use with a broad array of goods and services.
The Respondent registered the disputed domain name on February 24, 2003, according to the registrant’s Whois database. The uncontested evidence before the Panel indicates that disputed domain name has been used in association with a website that features links to third party pornographic websites.
5. Parties’ Contentions
A. Complainant
The Complainant asserts exclusive rights to use and license marks related to J.R.R. Tolkien’s works The Hobbit and The Lord of the Rings. The Complainant holds numerous registrations for the HOBBIT Marks in the United States of America and elsewhere and also asserts common law rights in these marks based on continuous and exclusive use. The Complainant contends that the HOBBIT Marks are famous and well known, as a result of their extensive and continuous use and the good will developed therefrom, and the worldwide popularity of the Tolkien works.
The Complainant contends that the disputed domain name is confusingly similar to the HOBBIT Marks. The Complainant maintains that the Respondent has not been authorized to use the HOBBIT Marks, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent registered and is using the domain name in bad faith for commercial gain to misleadingly divert Internet users to a pornographic website.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain names are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s HOBBIT Marks, which the Complainant unquestionably has established rights in through registration and use. At a minimum, the Complainant’s marks are entitled to a presumption of validity by virtue of their registration with the United States Patent and Trademark Office. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. Further, the Complainant has submitted extensive evidence that the HOBBIT Marks have acquired significant fame and are well-known.
The disputed domain name incorporates the Complainant’s HOBBIT mark in its entirety. The mere addition of a generic or descriptive term such as “drunken” does not diminish the confusing similarity of the disputed domain name to the Complainant’s HOBBIT Marks. See, e.g., Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain. It is uncontroverted that the Respondent is not affiliated with the Complainant and that the Complainant has not authorized the Respondent to use the Complainant’s marks or register domain names incorporating those marks. Further, there is no indication that the Respondent has been commonly known by the disputed domain name. Instead the record reflects the Respondent’s registration of a domain name incorporating in its entirety the Complainant’s HOBBIT mark and its use to redirect the public to a pornographic website.
The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. The circumstances as set forth and documented in the Complaint and its Annexes are sufficiently evocative of cybersquatting to require the Respondent to come forward with evidence under paragraph 4(c) of the Policy demonstrating rights to or legitimate interests in the disputed domain name. See, e.g., Huge Fastigheter AB v. Nestol Ltd, WIPO Case No. DNU2005-0002.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a formal response to the Complaint, and in the absence of any such submission this Panel may accept all reasonable inferences and allegations included in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.2 In any event, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the safe harbors of paragraph 4(c) of the Policy. Nothing in the record indicates that the Respondent has been commonly known by the disputed domain name, or that the Respondent has made any noncommercial or fair use of the domain name. Further, numerous panels have held that a respondent’s use of a domain name corresponding to a third party’s mark to attract Internet traffic to a pornographic website does not constitute the use of the domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i). See, e.g., Benetton Group SpA v. Domain for Sale, WIPO Case No. D2001-1498. See also The Saul Zaentz Company v. Siarhei Chyzhevich, WIPO Case No. D2006-0370.
Accordingly, the Panel deems that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
As noted above, the Complainant has provided substantial evidence that its HOBBIT Marks are well-known, and the Panel concludes from the totality of the circumstances in this case that the Respondent was aware of the Complainant’s marks when it registered the disputed domain name. The Panel further finds from the circumstances of this case that the Respondent’s aim in registering the disputed domain name was in all likelihood to profit from and exploit the Complainant’s marks, by attracting Internet users looking for products or services associated with the Complainant’s marks to the Respondent’s website, which on the uncontested evidence provided in the Complaint appears to have been used to redirect or provide links to third party fee-based pornographic websites. The Panel is satisfied that this constitutes bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy. See The Saul Zaentz Company v. Siarhei Chyzhevich, WIPO Case No. D2006-0370.
Accordingly, for the foregoing reasons, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
William R. Towns
Sole Panelist
Dated: July 19, 2007
1 “Hobbit” is the name given by Tolkien to the fanciful, three-foot tall characters first featured in The Hobbit , published in the late 1930’s, and then in The Lord of the Rings published some sixteen years later.
2 Some panels have held that a respondent’s lack of response can be construed as an admission that the respondent has no rights or legitimate interests in a disputed domain name. See Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624. Other panel decisions note that adverse inferences may be drawn from a respondent’s failure to reply. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.
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