Complainant is The Tolkien Estate Limited of Oxford, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Maier Blackburn LLP, United Kingdom.
Respondent is Registration Private, Exotikweb of Sophia, France. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 4, 2017. On August 4, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 7, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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" 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 Respondent of the Complaint, and the proceedings commenced on August 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 31, 2017.
The Center appointed Robert A. Badgley as the sole panelist in this matter on September 6, 2017. 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
Complainant holds the intellectual property rights related to the famous literary works of J.R.R. Tolkien, including rights to the mark SILMARILLION, which related to the posthumously published book "The Silmarillion". The mark SILMARILLION is registered in several jurisdictions, including the European Union (registered May 15, 2006, No. 004393071) and the United States of America (registered June 26, 2007, No. 3254871).
The Domain Name was registered on March 20, 2017. The Domain Name resolves to a website which purports to offer a fantasy game evidently under construction. The home page, as well as the numerous internal pages at Respondent's website, features pay-per-click advertisements. The web pages also include the name "J.R.R. Tolkien" near the pay-per-click advertisements. 5. Parties' Contentions A. Complainant
Complainant asserts that it has satisfied the three elements required under the Policy for a transfer of the Domain Name. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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. A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the mark SILMARILLION through registration and use. The Domain Name is confusingly similar to the SILMARILLION mark, inasmuch as it incorporates that mark in its entirety and adds the word "the". The additional word does nothing to reduce confusion between the mark and the Domain Name.
Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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 Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not been authorized by Complainant to use its SILMARILLION mark as a domain name or in any other manner. The record indicates that Respondent has used the Domain Name to generate revenue through pay-per-click advertisements. This is not a legitimate use of the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, "in particular but without limitation", are evidence of the registration and use of the Domain Name in "bad faith":
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
The Panel concludes that Respondent has registered and is using the Domain Name in bad faith. First, it is clear that Respondent had Complainant's well-known SILMARILLION mark in mind when registering the Domain Name. This is obvious because the term "Silmarillion" has no meaning as a word apart from as a reference to the Tolkien book and Complainant's mark, and Respondent's website includes Tolkien's name on most if not all web pages.
The Panel also concludes that Respondent has used the Domain Name in bad faith within the meaning of Policy paragraph 4(b)(iv), quoted above. Respondent is clearly using the Domain Name to attract Internet users, via consumer confusion, to Respondent's website where pay-per-click advertising is featured.
Complainant has established Policy paragraph 4(a)(iii). 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 Domain Name be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Date: September 6, 2017
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