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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Saul Zaentz Company d/b/a Tolkien Enterprises v. CheapYellowPages.com / Brian Wick

Case No. D2008-0021

 

1. The Parties

The Complainant is The Saul Zaentz Company d/b/a Tolkien Enterprises, Berkeley, California, United States of America, represented by Howard Rice Nemerovski Canady Falk & Rabkin, United States of America.

The Respondent is CheapYellowPages.com / Brian Wick, Denver, Colorado, United States of America, represented by Lewis & Hand, LLP, United States of America.

 

2. The Domain Names and Registrar

The disputed Domain Names <hobbits.com> and <hobbitts.com> are registered with eNom, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2008. On January 7, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 7, 2008, the Registrar transmitted by email to the Center its verification response confirming that the Respondent CheapYellowPages.com is listed as the registrant organization, also naming Brian Wick 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 January 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response January 30, 2008. The Response was filed with the Center January 30, 2008.

The Complainant submitted a “Supplemental Brief” in reply to the Response on February 20, 2008. The Respondent rejoined by submitting a letter and exhibits on February 27, 2008.

The Center appointed W. Scott Blackmer, David E. Sorkin and Gary J. Nelson as panelists in this matter on March 3, 2008. The Panel finds that it was properly constituted. Each member of 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 a Delaware corporation with its principal place of business in Berkeley, California. It is undisputed that, since the late 1960s, the Complainant and its predecessors in interest have held rights to use marks based on the popular fantasy novels of the late English author J.R.R. Tolkien, particularly The Hobbit, or There and Back Again (first published in 1937) and the Lord of the Rings trilogy (the first of which was published in 1955). All of these books featured characters of an imaginary race of three-foot-tall humanoids that Tolkien called “hobbits”.

It is also undisputed that Tolkien’s works, and his hobbit characters, are well known in Great Britain and the United States of America. The Complainant reports that more than 45 million copies of Tolkien’s books have been sold in the United States alone since 1938, and that they have been translated into more than 35 languages. An animated film version of The Hobbit was broadcast in the United States in 1977, and related HOBBIT merchandise was advertised and sold nationally. New Line Cinema released live-action film versions of each of the books in the Lord of the Rings trilogy in, respectively, December 2001, December 2002, and December 2003. These films, featuring hobbits, were viewed by an audience of millions. They grossed more than US $1 billion in the United States and some $US 2.8 billion worldwide through February 2005. Collectively, the three films garnered ten Golden Globe nominations and thirty Academy Award nominations, winning seventeen Academy Awards, including Best Picture in 2003. The films were subsequently televised and released in DVD and VHS formats. At the same time, the Complainants’ various licensees advertised and sold new editions of the Tolkien books and a variety of HOBBIT-branded merchandise.

The Complainant owns numerous trademark registrations consisting of, or incorporating, the term “hobbit”. These include United States Registration No. 1230026 (HOBBIT), registered on March 8, 1983 and showing first use in commerce on April 18, 1977.

The Complainant also owns domain names incorporating the term “hobbit”. These include <hobbit.com>, which resolves to a website describing the Complainant’s trademark licensing program.

The Response identifies the Respondent Brian Wick of Denver, Colorado as the “principal” of the Respondent CheapYellowPages.com. It appears from the online database maintained by the Colorado Secretary of State that CheapYellowPages.com is not a legal entity but rather a registered trade name of American Distribution Systems, Inc., which is in turn listed as a Colorado business corporation for which Brian Wick is the registered agent. As the Response does not identify a legal person other than Mr. Wick, the term “Respondent” will henceforth signify Brian Wick in his stated capacity as the “principal” of the registrar-confirmed registrant of record, “CheapYellowPages.com”.

According to the Response, the Respondent is engaged in “Internet advertising and marketing services,” with a “business model” that “has always been based primarily on purchasing domain names that consist of common use and generic terms and phrases, surnames and geographic terms, and, to a lesser extent, close misspellings of these terms.” The Respondent’s website at “www.cheapyellowpages.com” refers to an “advertising and marketing network of over 10,000 pure and intuitive generic, common use, surname or geographic <.com> Internet Domains.” More than 4,000 of these are used for “‘Yellow Page’ style directory listings . . . with advertising on the side.” As the Respondent’s website explains,

“<.com>’s are a self-promoting, self-advertising and self-marketing media source - known as “Direct Navigation” - meaning Internet users - at least 15% of the time - key in what they want into the command line of their Internet Browser followed by a <.com> - resulting in a network of ‘<.com> TV Channels’ containing storefronts, advertising and other content - such as keying in CheapApartments.com in the command line of the Internet Browser rather than keying in “Cheap Apartments” into a search engine, like Google, Yahoo or MSN.”

The website encourages visitors to “contact us” about listing advertisements in any of the Respondent’s “<.com> TV channels”.

The Respondent registered the Domain Names on January 15, 2002 and August 7, 2002, respectively. The Response states that the Domain Names have not been “parked” with a third-party, pay-per-click advertising network but have been used only for websites operated by the Respondent itself. The Complainant furnished printouts of those websites dated January 4, 2008. Each contained identical content, except for the Domain Name itself and the respective headings “Hobbits” and “Hobbitts” before the tag line “Internet Advertising & Marketing”. Each offered information about “a wide variety of quality products and services at great values through our store brands”, with “targeted advertising and marketing store brands that connect you with the right retailer, distributor or manufacturer”. In the frame were links to other advertising directory websites operated by the Respondent, such as “www.cheapquotes.com”, “www.cheapmovies.com”, “www.cheaprugs.com”, and even “www.cheaplawyers.com”, each in turn featuring paid advertising links in different categories of goods and services.

The Domain Names currently resolve to similar websites that are each labeled with the Domain Name and the tag line “Internet Advertising & Marketing”. Each now includes the following statement: “The Hobbits.com [or Hobbitts.com] website listings community is temporarily unavailable at this time. Please check back periodically.” Links are still displayed to other advertising directory websites operated by the Respondent, such as those listed above.

Counsel for the Complainant sent the Respondent a cease-and-desist letter on October 12, 2007. Counsel for the Respondent replied on October 23, 2007, arguing that “hobbit” is a common word and that the Respondent was unaware of the Complainant’s trademark rights when the Domain Names were registered. This proceeding followed.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Names are confusingly similar to its registered and common-law HOBBIT trademarks, and that the Respondent has no rights or legitimate interests in them.

The Complainant observes that the Domain Names were registered in 2002 “on the heels of the blockbuster release of the first film in the New Line Film Trilogy” (in December 2001). The Complainant infers that the Domain Names were registered and used in a bad-faith effort to mislead Internet users and divert them to the Respondent’s advertising directory websites for commercial gain. The Complainant cites several other UDRP proceedings in which the Respondent was involved, concluding that the “Respondent has a history, pattern and practice of registering domain names corresponding to trademarks owned by others.”

B. Respondent

The Respondent does not deny knowledge of the Tolkien books and films based on those books but argues that “hobbit” is nevertheless a generic term. The Respondent cites a 19^th Century treatise on English folklore and other commercial and noncommercial instances of the term, as in “Hobbit Travel” (the trade name of a California travel agency), HOBBIT HOMES (the subject of a pending application for United States trademark registration at the time the Domain Names were registered), Hobbit Hill Riding Stables in Arkansas, and the use of the term “hobbit” in referring to small persons or things, such as a diminutive humanoid fossil skeleton discovered in 2003. The Respondent says that he was personally aware that “hobbit” is used as an acronym for a “high order bit” in software programming.

In defending a 2002 UDRP proceeding, Lord, Bissell & Brook v. Default Data.com, NAF Claim No. FA108064, the Respondent Brian Wick (who submitted the response on behalf of DefaultData.com in that proceeding) actually cited the Domain Name <hobbits.com> as an example of “his generic portfolio holdings”. The Respondent contends that the Domain Names were registered in good faith for the value deriving from their generic qualities and have not been used to compete with the Complainant.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a Respondent of a disputed domain name, a Complainant must demonstrate each of the following:

(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.

Under paragraph 15(a) of the Rules,

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

A. Supplemental Filings

The Rules do not explicitly provide for supplemental filings in a Policy proceeding, except at the request of the Panel (see Rules, paragraph 12). Paragraph 10 of the Rules enjoins the Panel to conduct the proceeding “with due expedition” and empowers the Panel to “determine the admissibility, relevance, materiality and weight of the evidence”. Therefore, UDRP Panels are reluctant to countenance delay through additional rounds of pleading and typically accept supplemental filings only to consider new evidence or provide a fair opportunity to respond to new arguments.

The Complainant’s nine-page “Supplemental Brief” and the Respondent’s five-page letter in reply largely re-argue the relevance and significance of certain facts and contentions in the initial submissions. This is not new evidence, and these are not new arguments. However, the Response asserts that the Domain Names are not used to “provide merchandising or other services in any way related to films and stage productions based on Professor Tolkien’s books”. The Complainant’s Supplemental Brief furnishes new evidence on this point, to which the Respondent’s letter replies. The Panel considers the parties’ supplemental filings only to the extent that they address this new evidence.

B. Identical or Confusingly Similar

The Complainant has established rights in the registered HOBBIT mark. The Domain Names differ from the mark only in adding the plural “s” and, in the case of the second Domain Name, a doubled “t” (an apparent misspelling of “hobbit”). The Domain Names are visually and phonetically similar to the HOBBIT mark, and the Panel finds that they are confusingly similar to the mark for purposes of the Policy, paragraph 4(a)(i).

C. Rights or Legitimate Interests

The Policy, paragraph 4(c), advises respondents as follows:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to you 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; . . .”

The Respondent claims the right to use, for commercial Internet advertising and marketing services, domain names consisting of “common use and generic terms and phrases . . . and . . . close misspellings of these terms”, citing The Landmark Group v. DigiMedia.com L.P., NAF Claim No. FA285459 (“As long as the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks, this is a business model that is permitted under the Policy”). See also Weather Shield Mfg., Inc. v. Lori Phan, WIPO Case No. D2007-1247 (resale and advertising may in some contexts represent legitimate interests, “particularly where the Domain Name is a dictionary word and there is not persuasive evidence that the Respondent was more likely than not aware of the Complainant’s marks”).

If, on the contrary, the evidence indicates that the Respondent chose the Domain Names in an effort to capitalize on the fame of the HOBBIT mark, rather than for their generic qualities, this could not be considered a use in connection with a “bona fide” offering of goods or services. See, e.g., Philip Morris USA Inc. v. Prophet Partners Inc., WIPO Case No. D2007-1614 (“Marlboro” is a family and place name as well as a widely known trademark for cigarettes, but <marlboro.biz> was used to sell tobacco products and other commercial goods and services, suggesting that the domain name was chosen for its trademark rather than generic value). That issue is closely tied to the question of bad faith, which is discussed more fully below.

D. Registered and Used in Bad Faith

The Policy, paragraph 4(b), gives non-exhaustive illustrations of bad faith registration and use, including the following:

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

The Respondent claims that there was no intention to divert Internet users seeking information about HOBBIT-branded goods or services. But even accepting the Respondent’s argument that the term “hobbit” has some generic value, the fact remains that there is no evidence that the Domain Names have ever been used in a way that reflected the generic value of the term “hobbit”. The advertisements featured or linked from the websites associated with the Domain Names do not concern mythological creatures, small people, or high-order bits in software code. They concern, rather, a wide range of commercial products and services offered by third-party advertisers.

The Respondent does not deny awareness of the Tolkien books and the films based on The Hobbit and The Lord of the Rings trilogy, and it is significant that the first of the Domain Names was registered within a month after the commercial release of the first of the highly popular New Line Cinema films based on The Lord of the Rings. Moreover, the Complainant has furnished evidence from the Internet Archive Organization’s Wayback Machine that the website associated with the Domain Name <hobbits.com> in 2003 and 2004 advertised “CheapDVDs” including DVDs of both the animated film The Hobbit and the New Line Cinema Lord of the Rings trilogy. Search engine results for “hobbits.com” on “www.yahoo.com” and “www.altavista.com” display the Respondent’s website corresponding to that Domain Name with the heading “visit bilbo’s homepage” (Bilbo being the name of the protagonist in The Hobbit), a heading typically provided by the registrant of a website rather than by the search engine.

Thus, there is no evidence supporting the Respondent’s contention that the Domain Names were registered and used for their dictionary or generic value. To the contrary, the evidence points to an opportunistic choice of Domain Names likely to attract Internet users because of an assumed association with the recently re-popularized Tolkien books and characters, their film adaptations, and the related HOBBIT mark. This is not consistent with Respondent having a right or legitimate interest in the sense of paragraph 4(a)(ii), and is consistent with bad faith as described in paragraph 4(b)(iv) See Philip Morris USA Inc. v. Prophet Partners Inc., supra.

The Respondent concedes that “in the earlier days of his domain name business, his company registered a number of domain names that were confusingly similar to the names of famous law firms, lawyers and corporate entities”. He points to UDRP decisions in his favor (involving domain names comprising generic terms) as well as those that ordered the transfer of domain names based on his bad-faith registration and use. The Panel does not find it necessary to consider, however, whether the Complainant has established that the Respondent has engaged in a “pattern and practice” of cybersquatting. The evidence in this proceeding demonstrates that, more likely than not, the Respondent registered and used the Domain Names at issue here in an illegitimate and bad-faith effort to mislead Internet users for commercial gain.

The Panel finds, therefore, that the Complainant has established the second and third elements of the UDRP Complaint.

 

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 Names, <hobbits.com> and <hobbitts.com>, be transferred to the Complainant.

Dated: March 17, 2008