The Saul Zaentz Company d/b/a Tolkien Enterprises v. ATTO i.t.c.
Case No. D2007-1495
1. The Parties
The Complainant is The Saul Zaentz Company d/b/a Tolkien Enterprises, of Berkeley, California, United States of America, represented by Howard Rice Nemerovski Canady Falk & Rabkin, United States of America.
The Respondent is ATTO i.t.c., of Leiden, Suid Holland, The Netherlands, represented by Rob Hankel as Administrative Contact, the Netherlands.
2. The Domain Name and Registrar
The disputed domain name, <sex-hobbit.com>, is registered with Tucows, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2007. On October 12, 2007, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On October 12, 2007, Tucows transmitted by email to the Center its verification response confirming inter alia that the Respondent is listed as the registrant and providing the contact details and confirming the language of the registration agreement as English. 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 October 17, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 6, 2007. Between October 17 and October 22, 2007, the Center received, responded to and forwarded to the Complainant, various email communications from the Respondent regarding the Domain Name and the dispute. On November 8, 2007, no further communication having been received, the Center notified the Respondent that these email communications would be treated as the Response.
The Center appointed Keith Gymer as the sole panelist in this matter on November 20, 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
According to the Registrar’s WHOIS record, the Domain Name was originally registered on January 27, 2004.
The Complainant, The Saul Zaentz Company (“SZC”), d/b/a Tolkien Enterprises holds exclusive rights to use and license marks related to the late Professor J.R.R. Tolkien’s famous literary works The Hobbit and The Lord of the Rings. The Complainant has many trademark registrations for THE HOBBIT and HOBBIT marks in the United States and throughout the world.
5. Parties’ Contentions
A. Complainant
The Complainant made extensive submissions in support of its claims, edited extracts of which are included and reproduced below:
SZC Holds The Famous And Well-Known HOBBIT Marks.
The term “HOBBIT” was created in the early 1930’s by the late Professor J.R.R. Tolkien to describe the fanciful, three-foot tall characters first featured in his novel The Hobbit, or There And Back Again, and later in The Lord of the Rings trilogy.
The Hobbit was first published in Great Britain in November 1937 and in the United States in January 1938. Professor Tolkien began writing a sequel to The Hobbit immediately upon its publication. The Hobbit was an instant success and underwent over 20 printings before its sequel, The Lord of the Rings trilogy, was published 16 years later.
Since the late 1960s, Complainant and its predecessors in interest have held the right to use and license others to use, marks related to the Tolkien Works including, without limitation, the titles of each of the Tolkien Works and the names and visual representations of the characters, places, objects, and events described in the Tolkien Works. Complainant also holds exclusive, worldwide theatrical motion picture and live stage production rights in and to the Tolkien Works, as well as the right to, or to license others to, sell merchandise and provide services in connection with such film and stage productions.
The Tolkien Works, as well as the films, stage production, and products based upon them, have a strong family orientation. Millions of children and parents all over the world have become devoted fans and followers of the heroic adventures of the characters in the Tolkien Works, in part because of the strong values of friendship, loyalty, and sacrifice personified by the Tolkien Works’ heroes.
Complainant has extensively cultivated the HOBBIT Marks.
Beginning in at least the mid-1970s, SZC established, and has continued to maintain, a successful worldwide licensing program to promote merchandise and other goods and services based on the Tolkien Works, as well as on the films and stage adaptations thereof produced or licensed by SZC. As part of this program, SZC and its licensees have aggressively promoted, through numerous channels of trade, the HOBBIT Marks, along with many other Tolkien Marks that contribute to the Tolkien Works’ mythos.
Complainant has used, and licensed others to use, the HOBBIT Marks or other Tolkien Marks in connection with a wide variety of commercial goods and services.
In the late 1990’s, Complainant licensed its film and certain related merchandising rights to the Tolkien Works to New Line Cinema Corporation (“New Line”). New Line has released a total of three live action, special effects-packed films based on The Lord of the Rings, including The Lord of the Rings: The Fellowship of the Ring, in December 2001; The Lord of the Rings: The Two Towers, in December 2002; and The Lord of the Rings: The Return of the King, in December 2003, (collectively, the “New Line Film Trilogy”). Like the books and the Bakshi Film, the New Line Film Trilogy features leading HOBBIT characters, including Bilbo Baggins (the title character from The Hobbit) and his nephew, Frodo Baggins. In this way, the New Line Film Trilogy perpetuates the mythos of the Tolkien Works. The New Line Film Trilogy has been one of the most acclaimed and successful film series of all time. Each film in the New Line Film Trilogy is among the all-time top grossing films in the United States and abroad.
SZC also owns registrations for many domain names connected with its HOBBIT Marks, including without limitation, <hobbit.com>, <thehobbit.com>, <hobbit.net>, <thehobbit.net>, <the-hobbit.info>, <the-hobbit.us>, <thehobbitdemo.com>, and <thehobbitgame.com>.
Most recently, EURid—the non-profit organization selected by the European Commission to operate the new .eu top level domain—granted SZC numerous Hobbit-related domain names during the “sunrise period” of EURid’s phased registration program. During this period, domain names were only granted to holders of prior rights who could support their claims with documentary evidence. Applicants without prior rights, or who could not document their prior rights, had to compete for domain names on a first-come basis during the “land rush period”. Recognizing SZC’s undisputed prior rights to Hobbit-related domain names, EURid granted SZC the domain names <thehobbit.eu> and <hobbit.eu>, both during the “sunrise period”.
Complainant is the lawful owner of numerous registrations and applications for the Tolkien Marks, including without limitation the HOBBIT Marks, around the world in connection with various goods and services.
[Copies of various trademark registrations for the HOBBIT Marks from around the world were exhibited to the Complaint.]
As a result of Complainant’s extensive advertising, licensing, and promotion of the Tolkien Works and related films, stage productions, merchandise and other goods and services, the HOBBIT Marks have acquired substantial secondary meaning, identifying goods and services relating to the Tolkien Works and originating from Complainant or Complainant’s licensees.
Thus, independent of any of their trademark registrations, SZC and its predecessors have extensive common law rights to the HOBBIT Marks as a result of the worldwide fame, tremendous goodwill and reputation SZC and its predecessors have developed in the HOBBIT Marks, and the close association the HOBBIT Marks have with SZC.
Respondent’s Domain Name Is Identical Or Confusingly Similar To SZC’s HOBBIT Trademark.
As described above, SZC holds the rights to the HOBBIT Marks, and has for decades. SZC has never authorized or licensed Respondent’s use of the HOBBIT Marks, nor does it do so now.
Seeking to capitalize on the goodwill associated with the HOBBIT Marks and on the mythos of the Tolkien Works, Respondent registered the domain name
<sex-hobbit.com>. On information and belief, Respondent registered the disputed domain name on January 27, 2004. Respondent then proceeded to post significant amounts of hardcore pornographic content and links at the “www.sex-hobbit.com” website. Specifically, posted at the “www.sex-hobbit.com” website are links to, among others, the fee-based pornographic websites “www.hogtied.com”, “www.xfetish.com”, “www.porno2000.net”, and “www.dreamfetishes.com”. Copies of printouts from the “www.sex-hobbit.com” and “www.hogtied.com”, “www.xfetish.com”, “www.porno2000.net”, and “www.dreamfetishes.com” websites, were exhibited to the Complaint.
Respondent’s <sex-hobbit.com> domain name
(1) incorporates wholesale the famous and well-known HOBBIT mark;
(2) merely appends to the HOBBIT mark the generic or descriptive term “sex”;
(3) is confusingly similar to SZC’s own domain names, <hobbit.com>, <thehobbit.com>, <hobbit.net>, <thehobbit.net>, <the-hobbit.info>, <the-hobbit.us>, <thehobbitdemo.com>, and <thehobbitgame.com>;
(4) and is so similar to SZC’s HOBBIT Marks that it is likely to cause confusion among the consuming public.
As detailed above, as of the time of the filing of this Complaint, SZC has trademark registrations for its HOBBIT Marks in both the United States and elsewhere. These domestic and foreign registrations establish SZC’s rights in the HOBBIT Marks.
Also, it is well established that the mere addition of a generic or descriptive term does not diminish the likelihood of confusion with SZC’s HOBBIT Marks nor create a different trademark in which Respondent has rights.
Thus, there can be no dispute that the <sex-hobbit.com> domain name is confusingly similar to the protected HOBBIT Marks.
Respondent Has No Rights To Or Legitimate Interests In The Domain Name.
Respondent has no rights to or legitimate interests in the domain name because (1) Respondent is not using the <sex-hobbit.com> domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(2) Respondent is not commonly known as the domain name; and
(3) Respondent is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert customers, or to tarnish the HOBBIT trademark.
No Bona Fide Offering Of Goods And Services.
Respondent is not using the domain name in connection with a bona fide offering of goods and services. SZC is not affiliated in any way with Respondent and has never authorized Respondent to register or use the domain name at issue, nor the HOBBIT Marks. Respondent has no active United States trademark applications or registrations for the HOBBIT Marks, and on information and belief, Respondent has not used the HOBBIT Marks in commerce or otherwise, except in connection with its domain name <sex-hobbit.com>.
Further, given
(1) the widespread publicity and fame of the HOBBIT Marks described in detail above, and
(2) Respondent’s registration of the <sex-hobbit.com> domain name in 2004 after the spectacular and recent successful releases of the New Line movie versions of The Lord of the Rings: The Fellowship of the Ring and The Lord of the Rings: The Two Towers, it is beyond dispute that Respondent had knowledge of SZC’s famous marks prior to its registration of the disputed domain name.
Finally, numerous panels have held that where a respondent without trademark rights uses the disputed domain name to redirect to a pornographic website, this use is not in connection with a bona fide offering of goods and services and also suffices as a prima facie showing that Respondent has no rights or legitimate interests in the domain name.
Not Known As The Domain Name.
On information and belief, Respondent ATTO i.t.c. is not known as the domain name.
No Legitimate Noncommercial Or Fair Use Of The Domain Name.
Because the “www.sex-hobbit.com” website provides links to many third party fee-based, pornographic websites, Respondent is not making a legitimate noncommercial or fair use of the domain name, and instead is acting for commercial gain to misleadingly divert customers and to tarnish the HOBBIT Marks.
Accordingly, Respondent has no rights or legitimate interests in the HOBBIT mark.
The Domain Name Was Registered And Is Being Used In Bad Faith.
By registering the domain name <sex-hobbit.com> and posting pornographic content and links to other pornographic websites on the “www.sex-hobbit.com” website, Respondent has intentionally attempted to attract, for commercial gain, users to its website, by creating a likelihood of confusion with SZC’s HOBBIT trademark. As such, Respondent registered and continues to use the <sex-hobbit.com> domain name in bad faith, in violation of the Policy.
As explained in detail above, HOBBIT is a famous mark that is recognized worldwide. As such, Respondent’s registration of the <sex-hobbit.com> domain name, which is confusingly similar to SZC’s HOBBIT Marks, is evidence of bad faith registration and use.
In addition, as noted above, the Tolkien Works and the films, stage productions, and products based upon them are family-oriented entertainment that attracts millions of devoted young fans of elementary and middle school ages from all around the world. Thus, particularly where, as here, the “www.sex-hobbit.com” website could draw a large number of minors searching for information related to the Tolkien Works, the pornographic content of Respondent’s website constitutes significant evidence of bad faith registration and use.
Communications with Respondent
Prior to the filing of this Complaint, SZC sent a letter to Respondent asking it to
(1) cease the use of any pornographic material on the “www.sex-hobbit.com” website;
(2) cease and desist from any and all use of the <sex-hobbit.com> domain name; and
(3) transfer any and all rights in the <sex-hobbit.com> domain name to SZC.
On September 12, 2007, Respondent sent an e-mail to counsel for SZC, agreeing to cease use of the <sex-hobbit.com> domain name and to transfer the <sex-hobbit.com> domain name to SZC.
On September 20, 2007, SZC sent an e-mail to Respondent, thanking him for his cooperation and providing contact information for SZC’s domain name services company so that Respondent could arrange for the transfer of the <sex-hobbit.com> domain name to SZC.
On October 8, 2007, SZC learned that Respondent had contacted SZC’s domain name services company to initiate the transfer of the <sex-hobbit.com> domain name to SZC. SZC also learned that Respondent was attempting to impose certain conditions on the transfer of the domain name. Specifically, Respondent stated that he would only transfer the domain name to SZC if SZC agreed to enter into an agreement that included, among other things, that any use of the “www.sex-hobbit.com” site by SZC for pornographic reasons would constitute a breach of Respondent’s proposed agreement, and that SZC would be liable to Respondent’s company for a commission of 100 Euros for each day the site was used for pornography.
On October 9, 2007, counsel for SZC sent an e-mail to Respondent, stating that SZC would not be willing to enter into any agreement with Respondent concerning SZC’s use of a domain name to which Respondent has no legal right, and reasserted its demand that Respondent transfer the domain name to SZC without delay as he had agreed in his September 12, 2007 e-mail.
On October 10, 2007, Respondent sent an e-mail to counsel for SZC, threatening that if SZC did not respond to his demands by October 12, 2007, he would transfer the
<sex-hobbit.com> domain name to another party with a temporary e-mail address. Respondent also demanded money to renew the <sex-hobbit.com> domain name on behalf of SZC, and threatened to post disparaging comments on the Internet regarding SZC if SZC did not submit to Respondent’s demands.
Remedies Requested.
The Complainant requests that the Domain Name <sex-hobbit.com> be transferred to The Complainant.
B. Respondent
The Respondent made various email submissions to the Center in response to the Complaint and subsequent emails from the Center – extracts are reproduced below:
From October 17, 2007:
“I have not opened the attachment since I am already (like 16 hours ago) no longer the owner of the domain. Your document is too late.
Since we did not come to an agreement upon signing an agreement, I had no option then to sell it to a third party. I will NOT interfere any longer with issues regarding this website. As well will I NOT accept or read any documents (UPS will be sent back) regarding this issue since I am no longer responsible for it. Please contact the registrar for further options.”
From October 18, 2007:
“Stop mailing these mails to me.
Contact the current owner, I am NOT liable at this point.
It seems the WHOIS is not updated, this I cannot change. DO PLEASE CONTACT the registrar. They can tell you who is the new owner. I have an agreement with the new owner not to publish his identity. So I will not.
Again, stop nagging me. It is not my fault that the trademark owner did NOT want to settle. Who is to blame.”
From October 19, 2007:
“I am not sure if I or YOU do not understand all of this.
Can you tell me in Dutch why you are mailing us, and what purpose (your role in this)?
…
Here in the Netherlands the rights are different, so I am sure you wil have to find the new owner to settle this. If not, then parties can be sued. Which is strange for howardrice! Actually Dutch law is in effect here.
What about 6 November, is there something about that day? I missed the point. Perhaps because you cannot deliver me the text in Dutch. I am really sorry I am not able to follow all of this. It seems other peoapl [sic]_think_ they understand me since I write all of this in plain English. But I get the idea we are having some great miscommunication, which started with Caroll F. Barrett She cannot write in Dutch either!”
On 10-10 she writes this:
“We understand that you have contacted our client, The Saul Zaentz’ Company’s agent at MarkMonitor, Courtney Kerns , to initiate the transfer of the <sex-hobbit.com> domain name to our client, The Saul Zaentz Company (“SZC”). Ms. Kerns has let us know that you have tried to impose certain conditions on the transfer of the domain name. Specifically, we understand that you have indicated that you will only transfer the domain name to our client if SZC agrees to enter into an agreement that includes among other things, that any use of the sex-hobbit.com site by SZC for pornographic reasons would constitute a breach of the proposed agreement, and that SZC would be liable to your company for a commission of 100 Euros for each day the site is used for pornography. Our client is not willing to enter into any agreement with you concerning its use of a domain name to which you have no legal right and reasserts its demand that you transfer the domain name to SZC without delay as you had agreed in your September 12, 2007 e-mail.
“If we do not receive confirmation from you that the sex-hobbit.com domain name has been transferred to our client byOctober 15, 2007, we will counsel our client as to its legal options in this matter. We sincerely hope that further action by our client will not be necessary and look forward to receiving your cooperation in transferring the sex-hobbit.com domain name to our client immediately. Please contact me with any questions.”
“As you can see, I gave them the code, but ONLY ASKED THEM not to use the website for pornographic means.
Fair, isn’t it? The website does already have sex-related traffic, so if they try to ‘steal’ the domain all efforts would be lost. Then again, if THEY want to use it for PornoGraphic Materials, it would be UNFAIR, since they do NOT have any rights to the word SEX, which is MY part of the deal. And besides: the word HOBBIT in the domain name is only referring to a FANTASY midget. So I am not _using_ the name to gain profit from it, I only use the name since it has a relation as a synonym for midget. But sex-midget is not a good pronounceable word.
Any way. This is NOT about the word ‘HOBBIT’, which stands ALONE. For ITSELF. It is a new combination, of which one is a synonym. Is that wrong?
O, by the way. Because I don’t understand all of this, I feel the urge to keep mailing back when you mail me something about a receipt and passing to a panel.Sorry. Panel. FirstCap P. Who is in the Panel? How many men/woman? What do they do for their living? I hope they do not ‘just’ think the word ‘SEX’ is a problem, because all people stand on this earth BECAUSE of sex. And most of us like to do it. The Internet grew big on it!”
From October 19, 2007
“…O: ps: Did you see the mail Barrett wrote me? Do you need the mail that was sent before that one? I have sent the authentication code TWICE. The first time I got a wringin back, telling me the code did not work. Are you aware of the fact that they ALREADY had (tried to) transfer the domain? à You should ask DOmainDirect why the code did not work, they issued it. But in my opinion I did what I had to do then. Please do take notice of this. If you need proof I will forward ALL emails regarding this issue. I do need a direct answer from ‘Respondent’ (being ‘Wipo’ since there is ‘no person’ answering, as if we are talking to robots, brrr clearly not a Dutch thingy here).”
From October 22, 2007:
“…Ps: I seem to be in some sort of suspension communication if I am right. Where do I find the guidelines FOR this conversation. WIPO has never introduced itself in an ordinal manner. How are people/companies able to communicate if the rules of engagement are not known in advance (let alone in the right language).
I HAVE NOT HEARD ANYTHING ABOUT SUSPENSION Why is there this idea of suspension given, but doesn’t anyone answer?
I WOULD like to give a NEW authentication code for the new owner, but since WIPO/openSRS seems to have me locked out from the registrar DomainDirect, I am not able to do anything. Note that this is making the matter WORSE. And not me but WIPO is doing this. Not sure if anyone notices it . . .
Please note that unfair play will not get far. I am monitoring this conversation as well, plus the info there is on the Internet. If –for some reason- I am disabled to do anything with the domain (which already is in hands of someone else, but I am NOT able to change DNS or anything), it is not my fault and I cannot be held responsible.”
6. Discussion and Findings
In order for the Panel to decide to grant the remedy of transfer of a domain name to a Complainant under the Policy it is necessary that the Complainant must prove, as required by Paragraph 4(a) of the Policy, that
(i) the contested 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.
A. Identical or Confusingly Similar
The Complainant has clearly demonstrated that it has rights in the marks HOBBIT and THE HOBBIT.
Whilst it is true that the Policy does not require the existence of such rights to be necessarily demonstrated in the Respondent’s jurisdiction, the Panel considers that it is desirable that this should be done whenever such rights do exist. In the present case, the Complainant provided evidence of a number of trademark registrations from various countries around the world, but none actually covering the Respondent’s jurisdiction. That potentially raises the question of whether the Respondent might have established rights of his own in that jurisdiction. Certainly, it would have made matters more straightforward and lessened the obvious confusion of the Respondent regarding the relevance of the Complainant’s rights (as demonstrated, for example by the Respondent’s observations “Here in the Netherlands the rights are different” … “Actually Dutch law is in effect here.”) if the Complainant had actually taken the trouble to cite the most pertinent of its rights. (For example, CTM 174961 and Benelux Registration 419546 are both for the HOBBIT mark and are actually in the Complainant’s name, but were not cited in the Complaint.) Indeed, some of the examples of the Complainant’s claimed rights, which were cited in the Complaint itself, were supported by Certificates which showed the rights to be originally held in other names, including “Elan Merchandising, Inc” and “AT&T Corporation”, and without clear evidence of devolution of rights to the Complainant in some cases.
The Complainant also makes much of a claim that it (“SZC”) has been granted domain names, including <hobbit.eu> and <thehobbit.eu> by EURid under the “Sunrise” provisions, which granted priority to owners and purported licensees of trademarks registered in EU jurisdictions. However, no evidence was provided to support this claim. As a non-European entity, the Complainant is not entitled itself to hold .eu domains in its own name. In fact, these domains are actually held in the name of a firm of trademark agents, who were presumably “licensed” by the Complainant, and who no doubt hold them for the benefit of the Complainant. However, this is not disclosed or explained in the Complaint.
In the Panel’s view, a Complainant should cite the most relevant rights in the circumstances of each case, and provide clear evidence to show that any such rights claimed are held by or for the Complainant.
However, despite its failure to cite what the Panel considers would have been its most relevant rights, the Complainant has nonetheless provided unequivocal evidence of the existence of registered trademark rights in various jurisdictions for the HOBBIT and significant evidence to support a claim to common law rights where these may be established.
The question therefore comes down to a comparison of <sex-hobbit.com> with HOBBIT.
HOBBIT is undoubtedly a strongly distinctive mark. In the Domain Name <sex-hobbit.com>, the generic suffix “.com” is to be discounted and “sex-” is a prefix with the obvious descriptive meaning, which must be recognizable worldwide. It is the “hobbit” which provides the only distinctive element in the Domain Name. It is the “hobbit” which will immediately grab any reader’s attention, and immediately create an association with the HOBBIT, in which the Complainant has established its rights.
The Panel therefore finds that, for the purposes of the Policy, the contested Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights; and the requirements of Paragraph 4(a)(i) of the Policy are met.
B. Rights or Legitimate Interests
Under Paragraph 4(c) of the Policy, any of the following circumstances, (by way of example) might serve to demonstrate a Respondent’s rights or legitimate interests to a domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to the Respondent of the dispute, 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 (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent 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 no substantiated rights in the Domain Name. In particular, the Respondent has derived no rights from the Complainant to permit use of or to incorporate the HOBBIT mark in the Domain Name.
The Domain Name has been used to provide a gateway to graphic, hard-core pornographic websites catering for sexual tastes at what the Panel would characterize as the more extreme end of the spectrum – links referring to “torture”, “pain” and “extreme”, dominate the listings in the pages from “www.sex-hobbit.com” provided as evidence in the Complaint.
The Respondent claims that “the word HOBBIT in the domain name is only referring to a FANTASY midget. So I am not _using_ the name to gain profit from it, I only use the name since it has a relation as a synonym for midget. But sex-midget is not a good pronounceable word”.
But the evidence shows the Respondent’s website is not focused on fantasy, or midgets, or Hobbits, but simply on exploiting links to extreme pornographic sites, most probably to generate click-through income or for some other commercial benefit.
The word “hobbit” has been included in the Domain Name for its public recognition and inherent distinctiveness. The objective is only to increase the likelihood that surfers will click-through to the associated website by exploiting that recognition and the reputation established by the Complainant.
There is no doubt in the Panel’s view that this is not a bona-fide offering or use, but that rather the consequence will undoubtedly be to mislead consumers in general – and even perhaps to mislead those looking for sex sites about or for midgets. Such use will inevitably substantially tarnish the nature of the reputation established by the Complainant in the HOBBIT mark.
Consequently, the Panel considers the Complainant’s arguments to be convincing in this respect, and holds that the Respondent has no rights or legitimate interests in respect of the Domain Name; the requirements of Paragraph 4(a)(ii) of the Policy are met.
C. Registered and Used in Bad Faith
It is for the Complainant to prove, for the purposes of the Policy, that the Domain Name “has been registered and is being used in bad faith”.
Under Paragraph 4(b) of the Policy, the following are relevant examples of the sort of conduct which a Panel may take (without limitation) as evidence of registration and use in bad faith:
“(ii) [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) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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 the 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 considers the example of paragraph 4(b)(iv) of the Policy most directly applicable in the present case.
The HOBBIT mark has been incorporated in the Domain Name specifically for its potential attractive benefit to entice consumers to the Respondent’s website. By the Respondent’s own admission, <sex-hobbit.com> was preferred to <sex-midget.com> because of the fantasy association of the Hobbit. That fantastical association, the public recognition and reputation in the HOBBIT name and mark has been developed by the Complainant’s worldwide promotion of the Tolkien books and characters. The Respondent is not entitled to arrogate the HOBBIT name and reputation to himself for attracting Internet users to his website and to exploit confusion with the Complainant’s HOBBIT mark for Respondent’s own benefit in this manner.
The Respondent’s actions in threatening, or purporting to transfer the Domain Name to an unidentified third party also support the Complainant’s contention that the Respondent’s registration and use of the Domain Name meets the “bad faith” criterion under the Policy.
The Panel therefore finds that the Domain Name has been registered and is being used in bad faith and that Paragraph 4(a)(iii) of the Policy is also met.
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, <sex-hobbit.com> be transferred to the Complainant.
Keith Gymer Sole Panelist
Dated: December 4, 2007
Stay updated! Get new cases and decisions by daily email.
