WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Saul Zaentz Company v. Siarhei Chyzhevich
Case No. D2006-0370
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 Siarhei Chyzhevich, Brooklyn, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <lotrfanclub.com> (the “Domain Name”) is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2006. On March 24, 2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the Domain Name. On March 28, 2006, Network Solutions, LLC 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 March 29, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 18, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 19, 2006.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on May 5, 2006. 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 various exclusive, worldwide motion picture, stage, merchandising and other rights in certain literary works of J.R.R. Tolkien, including The Lord of the Rings trilogy, The Fellowship of the Ring, The Two Towers, The Return of the King and The Hobbit. Complainant has licensed its rights to prepare films based on the Tolkien Works and certain related merchandise to New Line Cinema Corporation.
In connection with its rights in the Tolkien Works, Complainant holds United States and foreign statutory and common law rights, including numerous trademark applications and registrations in the titles of the Tolkien Works and the names of the characters, places, items and events in the Tolkien Works. Those marks include, LORD OF THE RINGS (U.S. Reg. No. 2970997, 2944695, 2757847, 2897946) and THE LORD OF THE RINGS (1553027, 2897942, 2925667). Complainant also has filed United States trademark applications and it has numerous foreign registrations for the LOTR mark.
“LOTR” is known to fans of The Lord of the Rings books to be an abbreviation of LORD OF THE RINGS and THE LORD OF THE RINGS marks. For example, when the public enters LOTR into the Yahoo!® search engine, the searcher is taken to the official website of The Lord of the Rings films and other affiliated websites. In the domain name for the official website of the recent stage production of The Lord of the Rings, Complainant has incorporated LOTR (“www.lotr.com”).
Complainant also has a worldwide licensing program to promote products and services based on the Tolkien Works and The Lord of the Rings films and stage production. As part of this licensing program, Complainant and its licensees have promoted through numerous trade channels, including the Internet, THE LORD OF THE RINGS, LORD OF THE RINGS and LOTR marks on a wide variety of commercial products and services. The Lord of the Rings books, films and stage production, as well as the products based upon them, are geared toward families. Through its use and promotion of THE LORD OF THE RINGS, LORD OF THE RINGS and LOTR marks, Complainant has established an association and identification in the minds of the public between itself and the products bearing the marks.
In 2001, Complainant entered into a licensing agreement with Decipher, Inc. Decipher registered the Domain Name and later established and operated a website at www.lotrfanclub.com, which was the official Lord of the Rings fan club. On that website, a variety of commercial products and services relating to the Lord of the Rings films and books was offered. As a result of financial difficulties, Decipher allowed its registration in the Domain Name to expire. Respondent registered the lapsed Domain Name sometime after August 24, 2004, and used it to post hardcore pornography on the site associated with it.
5. Parties’ Contentions
Complainant holds various rights and registrations in THE LORD OF THE RINGS, LORD OF THE RINGS and LOTR marks. By registering and using the Domain Name in conjunction with its website, Respondent has been diverting persons interested in purchasing products related to or learning about The Lord of the Rings and unfairly trading on the goodwill associated with THE LORD OF THE RINGS, LORD OF THE RINGS and LOTR marks. The Domain Name is confusingly similar to and wholly incorporates Complainant’s LOTR mark. Merely adding the descriptive term “fanclub” does not change that. Respondent does not have any legitimate rights or interests in the LOTR mark and has registered and is using the Domain Name in bad faith to misleadingly divert customers to a pornographic website and to tarnish the LOTR mark. The Domain Name should be transferred to Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004 (February 16, 2000). Insofar as Respondent has defaulted, it is therefore appropriate to accept the facts asserted by Complainant and to draw adverse inferences of fact against Respondent. Nonetheless, paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(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.
A. Identical or Confusingly Similar
This factor consists of two inquiries: first, whether Complainant has rights in a relevant mark and, second, is the Domain Name identical or confusingly similar to that mark.
The first inquiry does not require Complainant to show that it has trademark rights in the Respondent’s country nor that its trademark rights are in respect of the particular goods or services of the Respondent. Kabushiki Kaisha ASTY and Kabushiki Kaisha F.D.C. Products v. LiHai, WIPO Case No. D2003-0963 (February 1, 2004). It is sufficient that Complainant establishes that, at the time of filing the Complaint, it has some rights in a trademark anywhere in the world. Id. These include rights flowing from registration, rights flowing from use having led to distinctiveness or rights as licensee. Id. (citing Advanced Magazine Publishers Inc. v. Computer Dazhong, WIPO Case No. D2003-0668 (December 12, 2003)). Although at the time Complainant filed the Complaint in this matter, none of its five applications to register LOTR with the U.S. Patent and Trademark Office had issued, Complainant has adduced other proof of its rights in the LOTR mark. For example, it has (1) foreign registrations for LOTR, namely in Australia, Benelux, Switzerland, United Kingdom, Mexico, Paraguay and Norway; (2) common law rights as a commonly known abbreviation for Complainant’s well-known marks THE LORD OF THE RINGS and LORD OF THE RINGS both of which are registered in the United States; and (3) common law rights derived from a worldwide licensing program that promotes a wide variety of commercial products and services through various trade channels, including the Internet, relating to its THE LORD OF THE RINGS, LORD OF THE RINGS and LOTR marks.
Based on this uncontroverted evidence, the Panel finds that Complainant has proved rights to the LOTR mark. See e.g., Kabushiki Kaisha ASTY and Kabushiki Kaisha F.D.C. Products v. LiHai, WIPO Case No. D2003-0963 (February 1, 2004) (“It is sufficient that a Complainant establishes that, at the time of filing the Complaint, it has some rights in a trademark anywhere in the world.”); Banque Saudi Fransi v. ABCIB, WIPO Case No. 2003-0656 (October 14, 2003) (“To the extent that the domain name [<alfransi.com>] contains a part of the Complainant’s registered mark ALBANK AL SAUDI AL FRANSI the Panel considers that an abbreviation of a registered mark incorporated into a domain name may constitute confusing similarity.”); Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784 (October 1, 2001) (“An individual or entity may be entitled to a common law trademark or service mark without registering the mark with the appropriate authority. . . . To establish common law trademark, the Complainant must show that the name . . . has achieved sufficient secondary meaning or association with Complainant.”); Visa U.S.A. Inc., Visa International Service Association v. The Best Present Company, Inc., WIPO Case No. D2002-1106 (January 27, 2003) (finding sufficient common law rights based on the complainant’s use and that of its licensees). 1
Furthermore, the Panel finds that the Domain Name is confusingly similar to Complainant’s LOTR mark. The Domain Name incorporates the entirety of the LOTR mark and appends to it the descriptive term “fanclub.” Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784 (October 1, 2001) (As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark.). Furthermore, the mere addition of a descriptive term does not diminish the likelihood of confusion with Complainant’s LOTR mark. America Online, Inc. v. East Coast Exotics, WIPO Case No. D2001-0661 (July 10, 2001).
For the foregoing reasons, the Panel finds that Policy, paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
Complainant has alleged sufficient facts to establish that Respondent has no rights or legitimate interests with respect to the Domain Name. Such facts, without contrary evidence from Respondent, are sufficient to permit a finding in Complainant’s favor on this issue. Alcoholics Anonymous World Services, Inc. v. Raymond, WIPO Case No. D2000-0007 (March 6, 2000).
Pursuant to paragraph 4(c) of the Policy, Respondent may satisfy its burden by demonstrating any of the following: (i) before any notice of the dispute, Respondent’s 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) Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or (iii) 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. Respondent has failed to provide the Panel with evidence to demonstrate any rights or legitimate interests in the Domain Name. The only evidence of record indicates otherwise.
It is uncontroverted that Respondent is not affiliated in any way with Complainant and that Complainant has not authorized Respondent to register or use the Domain Name, or its THE LORD OF THE RINGS, LORD OF THE RINGS or LOTR marks. Also, there is no evidence that Respondent has in any way been known by the LOTR mark. Rather, it appears that Respondent opportunistically picked up the Domain Name after it lapsed and capitalized on its capacity to generate residual traffic and divert such traffic to pornographic sites which Respondent operates or with which it is associated. Rug Doctor L.P. v. Domain Strategy, Inc., WIPO Case No. D2002-0355 (June 13, 2002) (finding no rights or legitimate interests where respondent registered complainant’s lapsed domain name to use in conjunction with a pornographic site).
Furthermore, numerous panels have held that where someone without trademark rights uses the disputed domain name to redirect the public to a pornographic website, such a use is not a bona fide offering of goods and services. See Sandra Berler v. Kert Clyma, WIPO Case No. 2003-0737 (November 24, 2003); see also, Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079 (April 14, 2000) (“the use of somebody else’s trademark as a domain name (or even as a meta-tag) clearly does not constitute a ‘bona fide’ offering of goods or services when the web site owner has no registered or common law rights to the mark, since the only reason to use the trademark as a domain name or meta-tag is to attract customers who were not looking for an adult sex site, but were instead looking for the products or services associated with the trademark”).
It is also the case that because the website associated with the Domain Name provides links to many third-party fee-based pornographic websites, Respondent is not making a legitimate noncommercial or fair use of the Domain Name but, rather, is acting for its own commercial gain and to tarnish the LOTR mark. Benetton Group SpA v. Domain for Sale, WIPO Case No. D2001-1498 (March 18, 2002).
For the foregoing reasons, the Panel finds that Policy, paragraph 4(a)(ii) has been satisfied.
C. Registered and Used in Bad Faith
Insofar as Complainant and its licensees had been using LOTR and had established rights in the mark before Respondent registered the Domain Name, including as the official authorized website for a fan club relating to The Lord of the Rings films and merchandise, the Panel concludes that Respondent registered and has been using the Domain Name in bad faith. Rug Doctor L.P. v. Domain Strategy, Inc., WIPO Case No. D2002-0355 (June 13, 2002) (holding that the adoption of a lapsed domain name for the use with a pornographic web-site raises an overwhelming presumption that the purpose of the registration and use was to trade upon the confusion created not only with complainant’s trademark, but with the residual reputation of complainant’s web-site).
Furthermore, because The Lord of the Rings books and films are considered family-oriented entertainment, the fact that Respondent has been using the Domain Name with a website having pornographic content is further evidence of bad faith use of the Domain Name. Caesars World, Inc. v. Alaiksei Yahorau, WIPO Case No. D2004-0513 (August 31, 2004) (finding pornographic content of respondent’s website tarnishment and bad faith).
For the foregoing reasons, the Panel finds that Policy, Paragraph 4(a)(iii) has been satisfied.
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 <lotrfanclub.com> be transferred to the Complainant.
Harrie R. Samaras
Dated: May 16, 2006
1 Complainant also claims rights to the LOTR mark based on the domain name www.lotr.com which it has only recently been using for the official website of the recent The Lord of the Rings stage production. It is unclear from the record whether Complainant had registered its domain name before Respondent registered the Domain Name at issue, nonetheless Complainant’s other proof of use is sufficient to prove rights in LOTR.