WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Saul Zaentz Company d/b/a Tolkien Enterprises v. Whois Protection
Case No. D2008-0132
1. The Parties
The Complainant is The Saul Zaentz Company d/b/a Tolkien Enterprises, California, United States of America, represented by Howard Rice Nemerovski Canady Falk & Rabkin, United States of America.
The Respondent is Whois Protection, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name is registered with R Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2008. On January 29, 2008, the Center transmitted by email to R Corp a request for registrar verification in connection with the domain name at issue. On January 31, 2008, R Services Corp 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 February 1, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 21, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 25, 2008
The Center appointed Ross Wilson as the sole panelist in this matter on March 10, 2008. 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 word Hobbit was coined in the early 1930’s by the author J. R. R. Tolkien in his novel The Hobbit. It was again used in the Lord of the Rings trilogy. Since the late 1960’s, the Complainant has held the right to use the HOBBIT mark without limitation. The Complainant holds exclusive worldwide production rights to theatrical, motion picture and live stage of the Tolkien novels as well as the right to license others to sell merchandise and provide services in connection with such film and stage productions.
The US trademark for the word HOBBIT was registered on March 8, 1983, claiming first use in April 18, 1977. Subsequently, other trademarks for the word HOBBIT have been registered in numerous countries.
Since 1972, the Complainant has maintained a worldwide licensing program to promoted merchandise and other goods and services based on the HOBBIT mark.
In 1977, an animated TV movie of The Hobbit was released under license by the Complainant. In the late 1990’s the Complainant licensed its film and certain related merchandising rights in the Lord of the Rings and The Hobbit. The licensee’s three films of the Lord of the Rings released between 2001 and 2003 features various Hobbit characters. Subsequently, the licensee has announced its intention to produce and distribute two more films based on The Hobbit.
The Respondent registered the disputed domain name on March 4, 2007.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the Respondent is using the disputed domain name to direct consumers to its web site which is linked to the domain name site owned by O which provides financial benefits to domain name owners who enter into a relationship with it. The web site contains numerous links using references to Thehobbitmovie Trailer, Hobbit and Bilbo Baggins (a Hobbit character). When an Internet user clicks on a link the user is directed to sponsored websites.
The Complainant believes the disputed domain name is so similar to its registered marks that is likely to cause confusion among the consuming public.
The Complainant states that it has never authorized or licensed the Respondent’s use of the HOBBIT marks. Consequently, the Respondent has no rights to or legitimate interest in the dispute domain name. The Complainant cites Krome Studios Pty. Ltd. v. LaPorte Holdings, Inc.,WIPO Case No. D2004-0707, where the panel found that there was no bona fide offering of goods and services where the dispute domain named was being used for redirecting users to a search engine and the respondent was earning revenue from the redirected traffic. Also, QVC Inc. v. NetworkW and John T. Clark,WIPO Case No. D2006-0349, is cited where earning payment in exchange for exposing Internet users to unrelated advertisements is not a bone fide offering or a legitimate non-commercial use or fair use.
The Complainant claims that the domain name was registered and used in bad faith because of the Respondent’s lack of rights or legitimate interests in the domain name, it knew of the famous HOBBIT mark at the time of registration and it is intentionally attempting to attract for commercial gain Internet users to its site by creating a likelihood of confusion with the Complainant’s trademarks. The Complainant cites Samsonite Corporation v. Colony Holding, NAF Case No. 94313, and V&S Vin & Sprit AB v. Canal Prod. Ltd., (WIPO Case No. D2002-0437) to support its claim that the respondent had knowledge of the mark at the time of registering the dispute domain name inferring bad faith registration and use.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy, as follows:
(i) the domain name 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 in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The onus is on the Complainant to establish each of the above elements.
A. Identical or Confusingly Similar
The Complainant has provided evidence that it has registered rights in the word HOBBIT. The disputed domain name incorporates the registered trademark. In fact, it is the most distinguishing of the three elements of the domain name. The addition of the elements “the” and “movie” are not distinctive in their own right. While the disputed domain name cannot be considered to be identical to the registered mark the presence of the mark as the only distinctive element makes it confusingly similar.
The Panel finds that the domain name is confusingly similar to the Complainant’s registered trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out how a Respondent can demonstrate rights to and legitimate interests in the disputed domain name. In this case, the Respondent has chosen not to file any submission or evidence to demonstrate its rights or legitimate interests in the name Hobbit. In this situation, paragraph 14(b) of the Rules allows the Panel, in the absence of exceptional circumstances, to draw such inferences from the absence of a Response from the Respondent as it considers appropriate.
The evidence provided by the Complainant is that the Respondent has used the domain name to derive a commercial benefit by enticing users to click on the Complainant’s marks and Hobbit characters which then link to sponsored web sites. The Complainant makes it clear that the Respondent is not a licensee of the Complainant and that the Complainant has not granted permission to the Respondent to use the trademark HOBBIT in any manner or to incorporate the trademark in a domain name.
There is no indication on the website that the Respondent has made a bona fide use of the domain name or the word “hobbit”. Similarly there is no evidence that the Respondent is commonly known by the domain name.
Overall, based on the cases cited by the Complainant and the lack of evidence before the Panel that the Respondent has any rights or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii) of the Policy under the above criteria or otherwise, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
For the purposes of determining if there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the domain name as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.
The Complainant asserts that the bad faith domain name registration and use is evidenced by the Respondent knowingly incorporating the Complainant’s well-known trademark in the disputed domain name. The evidence that the domain name has been registered and used in bad faith is apparent in the fact that there is no reason for the Respondent to use the Complainant’s widely known trademark other than to attract a financial benefit.
A number of the sponsored links in the Respondent’s website include the Complainant’s HOBBIT mark or associated characters which have no other common usage or meaning. This infers that the Respondent was aware of the Complainant’s trademark at the time of registering the disputed domain name.
In the decision in Veuve Clicquot Ponsardin, Maison Fond�e en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163, the panel found that bad faith exists where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.”
During 2007 the Respondent engaged in over a dozen similar activities which in itself infers bad faith. In all of the disputes the Respondent was found to have undertaken bad faith use and registration. For example, in each of the following cases the panels found that actual knowledge of the complainant’s trademarks and activities at the time of the registration of the disputed domain names may be considered an inference of bad faith; A�ropostale West, Inc. v. Whois Protection,WIPO Case No. D2007-1271, McIlhenny Company v. Whois Protection / Domain Name Administrator,WIPO Case No. D2007-0767, and HBOS Plc v. Whois Protection,WIPO Case No. D2007-1605.
On the basis of the evidence put forward by the Complainant, the Panel is satisfied that the Respondent’s conduct falls within paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the Complainant has demonstrated that the domain name was registered and used in bad faith.
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.
Ross Wilson
Sole Panelist
Dated: March 24, 2008
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