WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
JRR Tolkien Estate Limited v. Network Operations Center, Alberta Hot Rods
Case No. D2003-0837
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 Network Operations Center, Alberta Hot Rods, High Prairie, Canada.
2. The Domain Name and Registrar
The disputed domain name <jrrtolkien.com> ("Disputed Domain Name") is registered with CORE Internet Council of Registrars.
3. Procedural History
The Complaint against the Respondent Alberta Hot Rods 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 CORE Internet Council of Registrars a request for registrar verification in connection with the Disputed Domain Name. On October 29, 2003, CORE Internet Council of Registrars transmitted by email to the Center its verification response confirming that Network Operations Center is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
In response to a notification by the Center that the registrant of record for the Disputed Domain Name was not the entity specified in the Complaint as the Respondent and therefore that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 5, 2003. In filing its amended Complaint, the Complainant stated that a Network Solutions, Inc WHOIS search listed Alberta Hot Rods as the registrant organisation and therefore that the Complaint should be against both Network Operations Center and Alberta Hot Rods.
The Center verified that the Complaint together with the amendment to 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 November 10, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was November 30, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on December 5, 2003.
The Center appointed Alistair Payne as the sole panelist in this matter on December 11, 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 trade mark 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 trade mark 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 world-wide 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 trade mark TOLKIEN in the USA, Canada, South Africa and Brazil and a pending application for registration of a stylised word trade mark JRR TOLKIEN in the European Union (CTM).
5. Partiesí Contentions
1a. Trade Mark Rights
The Complainant submits that in addition to its rights in the Registered Marks, it has unregistered trade mark 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. The Complainant submits that the name JRR Tolkien gives rise to similar common law rights as in these cases.
1b. Identical or Confusingly Similar
The Disputed Domain Name comprises the Complainantís mark JRR TOLKIEN without the space between "JRR" and "TOLKIEN" and with the generic suffix ".com." Accordingly, the Disputed Domain Name is identical or confusingly similar to the Complainantís mark JRR TOLKIEN.
The Disputed Domain Name is also confusingly similar to the Complainantís mark TOLKIEN. The term "TOLKIEN" has no meaning independent of the name of the author JRR Tolkien and the marks TOLKIEN and JRR TOLKIEN are effectively interchangeable.
2. Rights or Legitimate Interests
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
Neither the Complainant nor any of its licensees has ever licensed or otherwise authorised the Respondent to use the Complainantís marks TOLKIEN or JRR TOLKIEN in any manner whatsoever.
The Complainant is not aware of any evidence of the Respondentís use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with any bona fide offering of goods or services. The Respondent is using the Disputed Domain Name to link to its own commercial website at "www.celebrity1000.com". Neither that site nor its content has any legitimate connection of any nature with the Complainant, its trade marks or the goods and services offered under those marks.
The Respondent has not (as an individual, business, or other organisation) been commonly known by the Disputed Domain Name.
The Respondent is not making a legitimate non-commercial or fair use of the Disputed Domain Name without intent for commercial gain. On the contrary, the Respondent is using the Disputed Domain Name, with intent for commercial gain, misleadingly to divert customers to its own commercial website.
3. Registration and Use in Bad Faith
The Complainant seeks to rely on the Respondentís constructive knowledge of the Complainantís registered trade marks. The Complainant submits that it is inconceivable that at the date of registration of the Disputed Domain Name the Respondent was unaware of the world-famous marks TOLKIEN and JRR TOLKIEN and that both were exclusively associated with the late author JRR Tolkien and his literary works and the authorised goods and services sold under those marks. The Complainant invites the Panel to infer that the obvious intention of the Respondent in registering the Disputed Domain Name was to take advantage of the Complainantís goodwill in the said marks.
The Complainant contends that the Disputed Domain Name was registered (among other reasons) in order to prevent the Complainant from reflecting the mark in a corresponding domain name and that the Respondent has engaged in a pattern of such conduct, as evidenced by a number of previous UDRP decisions against the Respondent involving domain names comprising the names of celebrities and authors, including Pamela Anderson v. Alberta Hot Rods, WIPO Case No. D2002-1104, Dr. Michael Crichton v. Alberta Hot Rods, WIPO Case No. D2002-0872, and Pierce Brosnan v. Network Operations Center, Alberta Hot Rods, WIPO Case No. D2003-0519.
The Complainant further contends that the fourth element of the Policy in respect to registration and use in bad faith is satisfied as the Respondent has intentionally attempted to attract, for commercial gain, internet users to its web sites by creating a false impression that it is associated with the Complainant.
The Respondent did not reply to the Complainantís contentions.
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 trade mark 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 trade mark or service mark, and (b) that the Disputed Domain Name is identical to or confusingly similar to such trade mark or service mark.
The Complainant has established that it has registered trade mark rights in the mark TOLKIEN which is sufficient to establish confusing similarity under this part of the Policy.
The Disputed Domain Name incorporates the Complainantís distinctive registered mark TOLKIEN in its entirety with the only other difference (excluding the generic ".com" suffix) being the addition of the letters corresponding to the first initials of the well-known author Professor JRR Tolkien. For the purposes of this part of the Policy the Panel finds that the addition of these letters does not in any way distinguish the Disputed Domain Name from the Complainantís mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances that a Respondent may use to demonstrate its rights or legitimate interests to the domain name.
The Respondent has not replied to the Complainantís contentions and on the evidence there is nothing to suggest that the Respondent has any rights or legitimate interests in respect of the Disputed Domain Name. The Panel therefore finds that this element of the Policy is established.
C. Registered and Used in Bad Faith
In the absence of contrary evidence from the Respondent, the Panel accepts that the Respondent has previously engaged in a pattern of conduct in registering domain names in order to prevent the owners of the trade marks or service marks (the owners being well-known individuals in most of the previous cases involving the Respondent) from reflecting the marks in corresponding domain names, and finds that it has again done so in this case. Further the Panel notes that the Disputed Domain Name resolves to the Respondent's own commercial website at "www.celebrity1000.com" and the Complainant's assertion that it has not authorised such use, nor has it any legitimate connection with this website. Accordingly, the Panel finds that under paragraphs (c)(ii) and (c)(iv) of the Policy these circumstances are evidence of both bad faith registration and use of the Disputed Domain Name by the Respondent.
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 <jrrtolkien.com> be transferred to the Complainant.
Dated: December 26, 2003