WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
JRR Tolkien Estate Limited v. tolkien.net
Case No. D2003-0833
1. The Parties
The Complainant is JRR Tolkien Estate Limited, Oxford, United Kingdom of Great Britain and Northern Ireland, represented by Manches Solicitors, United Kingdom of Great Britain and Northern Ireland.
The Respondent is tolkien.net, Dallas, of United States of America.
2. The Domain Name and Registrar
The disputed domain name <tolkien.net> ("Disputed Domain Name") is registered with Tucows and was registered in March 1999.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 20, 2003. On October 20, 2003, the Center transmitted by email to Tucows a request for registrar verification in connection with the Disputed Domain Name. On October 20, 2003, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 28, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 7, 2003. The Response was filed with the Center on December 8, 2003.
The Center appointed Alistair Payne as the Sole Panelist in this matter on December 18, 2003. 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 proprietor of the registered trademark TOLKIEN which is registered in the UK, the European Union (CTM), Australia and New Zealand in a number of classes, and is also the proprietor of the United States registered trademark JRRT - TOLKIEN comprising a stylised device combining the letters "JRRT" and the name "Tolkien" in class 16 ("Registered Marks").
The Registered Marks are licensed by the Complainant to its worldwide exclusive licensee, HarperCollins, and are extensively used under that licence in connection with the sale of books, audio tapes, calendars, maps and other merchandise, examples of which are attached to the Complaint.
The Complainant has pending applications for registration of the word only trademark TOLKIEN in the USA, Canada, South Africa and Brazil and a pending application for registration of a stylised word trademark JRR TOLKIEN in the European Union (CTM).
5. Partiesí Contentions
1a. Trademark Rights
The Complainant submits that in addition to its rights in the Registered Marks, it has unregistered trademark rights in the mark JRR TOLKIEN ("Unregistered Mark") by virtue of its use of the Unregistered Mark as described below and has been entitled to the marks TOLKIEN and JRR TOLKIEN for many years.
The Complainant is responsible for the administration of the copyright in the works of the late author, Professor JRR Tolkien, including:
The Lord of the Rings;
Farmer Giles of Ham;
The Adventures of Tom Bombadil;
The Road Goes Ever On;
The Father Christmas Letters; and
The Works have been widely published under the marks JRR TOLKIEN and TOLKIEN since the publication of "The Hobbit" in 1937. The best known Work, "The Lord of the Rings," was first published in 1954, and has been translated into 36 languages with an estimated 100 million copies sold worldwide. Licensed motion pictures of the first tow books of "The Lord of the Rings" were released in 2001 and 2002, with a third picture due for release in 2003.
The Complainant is engaged principally in the licensing, administration and protection of rights in the Works. The worldwide book publishing rights and book-related merchandising rights are licensed to HarperCollins and are sub-licensed in the US to Houghton Mifflin. The motion picture rights were licensed to United Artists in 1969, and are currently held by The Saul Zaentz Corporation and New Line Cinema.
There is a vast and highly active market for books and other products sold under the TOLKIEN and JRR TOLKIEN brands and the Complainant and its licensees are exclusively entitled to the goodwill associated with those brands. Both the TOLKIEN and JRR TOLKIEN marks are famous worldwide and have, since as early as the 1930ís, been synonymous and exclusively associated with the Works and with the books and other products of the Complainant and its licensees.
The Complainant relies on a number of previous UDRP decisions including Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235 and Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210 to support its case that the name of an individual, even if unregistered, may of itself give rise to sufficient rights for the Purposes of the Policy.
1b. Identical or Confusingly Similar
The Disputed Domain Name comprises the Complainantís mark TOLKIEN with the addition of the generic suffix ".net." Accordingly, the Disputed Domain Name is identical or confusingly similar to the Complainantís mark TOLKIEN.
The Disputed Domain Name is also confusingly similar to the Complainantís mark JRR TOLKIEN as the only differences between the Disputed Domain Name and this mark are the absence of the initials "JRR" and the addition of the generic suffix ".net."
2. Rights or Legitimate Interests
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name for the following reasons:
The Respondent is not connected with the Complainant or an authorised licensee of the Complainant (either regarding the Complainantís copyright works or its trademarks).
To the Complainantís knowledge, the Respondent has made no use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services.
The Respondent (as an individual, business, or other organisation) has never been commonly known by the Disputed Domain Name and has acquired no trademark or service mark rights in it.
The Respondent is not making a legitimate non-commercial or fair use of the Disputed Domain Name since the website attaching to the Disputed Domain Name is active only to provide links to commercial websites at "www.amazon.com", "www.buy.com" and "www.sell.com."
The very limited use to which the Respondent has put the Disputed Domain Name up to this point is such that the only result or information a visitor to the website can get is in the form of links to commercial websites. There is no bona fide non-commercial (or commercial) legitimate use being made of the Disputed Domain Name.
The Respondent has failed to make any reply to a letter from its solicitors, Manches, to the Respondent dated June 26, 2003, and accordingly, has failed to make any contention that it has any rights or legitimate interest in the Disputed Domain Name. The Respondentís failure to reply should be taken into account in any assessment (if necessary) of whether its use of the Disputed Domain Name is bona fide.
3. Registration and Use in Bad Faith
The Complainant believes that although the Respondentís website is titled Tolkien online resources for Tolkien fans and claims that Tolkien.net will be online soon, the Respondent has merely registered the name for its own financial gain or in the hope of selling it to the Complainant for more than the administrative costs incurred by it. No attempt has been made to develop the website into a legitimate commercial or non-commercial website despite the Complainantís solicitorsí letter to it dated June 26, 2003. There is no evidence that it will act as "Öan online resource for JRR Tolkien fans" or that it has been run as such a site since the date of registration of the Disputed Domain Name in 1999. Instead, the Complainant believes that the Respondent has used the site, and will continue to use it, solely as a referral site to commercial websites.
The Complainant contends that the Disputed Domain Name was registered in order to prevent the Complainant from reflecting the trademarks in a corresponding domain name. The Complainant refers to the cases of FMV Opinions, Inc. v. the Fair Market Valuation experts, WIPO Case No. D2002-0372, VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607 and AKG Acoustics GmbH v. Allen G., WIPO Case No. D2001-0533 as evidence of the fact that the Respondent has engaged in a pattern of such conduct.
In addition, the Complainant believes that the Respondent registered the Disputed Domain Name with the intention to attract for commercial gain, Internet users to the Respondentís website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís website or location or of a product or service on the Respondentís website or location. That is, the Respondent is capitalising on the fame of the Complainantís mark in luring people to its website and then receiving advertising revenue and/or commission from the commercial websites to which it links.
The Complainant submits that the TOLKIEN and JRR TOLKIEN trademarks are famous marks (being the name of one of the best known English language authors of the 20th Century) and it is inconceivable that the Respondent would not be aware of this fact. By virtue of the widespread use and reputation of the TOLKIEN and JRR TOLKIEN trademarks, members of the public in almost every country throughout the world (especially in the countries where JRR Tolkienís books have been published) would believe that the entity owning the Disputed Domain Name was the Complainant or in some way associated with the Complainant.
The Respondent has (by ignoring the pre-action correspondence noted above) failed to provide any evidence of any actual or contemplated good faith use by it of the Disputed Domain Name. The Complainant submits that the Respondentís failure to make any reply to the legitimate claims set out in that pre-action letter in itself constitutes evidence of bad faith on the Respondentís part.
1a. Trademark Rights
The Respondent contends that surnames are not protected trademarks and that the Complainant has no exclusive right to the surname "Tolkien" unless the name has acquired a secondary meaning. A database search has yielded over 4,200 persons with the name "Tolkien."
1b. Identical or Confusingly Similar
The Respondent contends that no confusion is created by the Respondentís website at the Disputed Domain Name. When an Internet user enters the Disputed Domain Name into his or her browser, that user is first greeted by the words at the top of the page that read, "Online Resources for Tolkien Fans." It is highly unlikely that the reasonable Internet user will be confused as to the content of the Respondentís site.
2. Rights or Legitimate Interests
The Respondent submits that its use of the Disputed Domain Name is in connection with a bona fide non-commercial service for the purpose of providing criticism, commentary, and resources with regard to the literary works of the author J.R.R. Tolkien and has no commercial purpose. The Respondent is a non-profit organisation that does not sell goods or services but provides free of charge email services under the <tolkien.net> address to 348 members, an email newsletter and commentary with regard to literary works. The Respondent submits that in order to support the costs associated with these hosting and email services, it asks its members to use the links on its home page when purchasing Tolkien-related products.
The Respondent submits that it has set up several city-based forums for clubs in various metropolitan areas within the United States, e.g. Pasadena, CA at "www.tolkien.net/pasadena" and that each of these group members is given login ID and password to access a bulletin board at the "www.tolkien.net" website. The Respondent contends that resources and time are required to finish its website at the Disputed Domain Name.
3. Registration and Use in Bad Faith
The Respondent contends that the Complainant has failed to prove this element of the Policy for the following reasons:
The Respondent is not trying to sell the Disputed Domain Name and is therefore acting in good faith.
The Complainant is not prevented from reflecting its mark in a corresponding domain name. The Respondent did not intend to prevent, nor has it prevented, the Complainant from registering a permutation of the "Tolkien" surname. According to WHOIS data, the Complainant owns <tolkien.com>, and has filed WIPO complaints regarding <jrrtolkien.com> and <jrrtolkien.org>, two domain names which more accurately reflect its mark. Further, the Respondent has only registered <tolkien.net> and did not attempt to register any other permutation of the term "Tolkien."
The Respondent is not acting for commercial gain. It is a non-profit organisation and does not generate revenue in the traditional sense. The Respondent helps generate income for the Complainant, by encouraging discussion of literary works under its management.
The Respondent is not related to any of the parties mentioned in the cases relied on by the Complainant to prove this element of the Policy.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this Administrative Proceeding and obtain the requested remedy (in this case transfer of the Disputed Domain Name), the Complainant must prove that each of the three following elements are present:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element of the Policy requires the Complainant to prove (a) that it has rights in a trademark or service mark, and (b) that the Disputed Domain Name is identical to or confusingly similar to such trademark or service mark.
The Complainant has established to the satisfaction of the Panel that it has registered trademark rights in the mark TOLKIEN and the Panel finds that the Disputed Domain Name is identical, excluding the generic ".net" suffix, to the Complainantís distinctive TOLKIEN mark.
B. Rights or Legitimate Interests
In summary, the Respondent attempts to establish that it has rights or legitimate interests in respect of the Disputed Domain Name by submitting that it is hosting a non-commercial bona fide "fan" website at the Disputed Domain Name. The only substantive content on the website comprises a listing of works by Professor JRR Tolkien and links to commercial suppliers of these works. There is no evidence of any other commentary or critique concerning these works on the face of the website. Although the Panel notes the Respondent's statement that it has not to date had the resources and time to finish the website, the Respondent has failed to provide in its Response any evidence of the nature of the email newsletter which it allegedly provides to club members or of the bona fide activities of such members.
The Respondent has not disputed that the Complainant has not authorised the Respondent to use its TOLKIEN mark. The Respondent has not submitted any evidence that it is commonly known by the Disputed Domain Name.
In light of the inclusion of the links to commercial websites such as "www.amazon.com" and "www.sell.com" on the Respondentís website which the Respondent admits generate income for the Respondent, and as the Respondent has provided no substantive evidence of its demonstrable preparations to establish a bona fide non-commercial fan site, even though the Disputed Domain Name was registered almost 5 years ago, the Panel finds that (a) the use made by the Respondent of the Disputed Domain Name has not been in connection with a bona fide offering of goods or services; and (b) the Respondent is not making a legitimate non-commercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainantís TOLKIEN trademark.
The Panel therefore finds that the Complainant has established this element of the Policy.
C. Registered and Used in Bad Faith
On the evidence, the Panel accepts that the Respondent has used and is using the Disputed Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainantís distinctive TOLKIEN mark and has therefore registered and used the Disputed Domain Name in bad faith (paragraph 4(b)(iv) of the Policy). In the Panelís opinion, for the purposes of this paragraph 4(b)(iv) of the Policy, it does not matter that the Complainant may also benefit by visitors to the Respondentís site purchasing its licensed products by following the links provided on the site. The fact remains that the Respondent has also benefited financially (as it has admitted) and the Panel finds that the Respondent has created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of its site. As the learned Panelist stated in the case of Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D2000-0299:
"Öcommercial benefit may well accrue to the Respondent if the products it offers for sale (directly and indirectly) are purchased by those visiting its website, and commercial harm may well be suffered by the Complainant if Internet users abandon their efforts to reach its website. The Respondent will have achieved commercial gain by creating confusion regarding the website location of the Complainant and its services - diverting Internet users to its own website as a source of products and services."
Accordingly the Panel finds that the Complainant has proved this element of the Policy. The Complaint succeeds.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <tolkien.net> be transferred to the Complainant.
Dated: January 8, 2004