WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Saul Zaentz Company d/b/a Tolkein Enterprises v. Eurobox Ltd. / “The Saul Zaentz Company”
Case No. D2008-0156
1. The Parties
The Complainant is The Saul Zaentz Company d/b/a Tolkein Enterprises, Berkeley, California, United States of America, represented by Howard Rice Nemerovski Canady Falk & Rabkin, United States of America.
The Respondent is Eurobox Ltd. of St. Petersburg, Russian Federation / “The Saul Zaentz Company” of California, United States of America,
2. The Domain Name and Registrar
The disputed domain name <middleearthonline.com> is registered with NICREG LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2008. On February 1, 2008, the Center transmitted by email to NICREG LLC a request for registrar verification in connection with the domain name at issue. The case file for this case indicated that the Whois details for the disputed domain name indicated that, on February 5, 2008, the registrant was listed as ‘Temporarily assigned to Eurobox Ltd.”
With no timely response from the registrar, the Center sent five follow-up emails to the registrar between March 7 – 27, 2008. On March 12, 2008, NICREG LLC transmitted by email to the Center its verification response confirming that ‘The Saul Zaentz Company’ was then listed as the registrant and providing the contact details. (The Panel notes that the conduct of the registrar in this case is comparable to other registrars in cases also involving the Respondent: see for example, Mrs. Eva Padberg v. Eurobox Ltd., WIPO Case No. D2007-1886; Weyerhaeuser Company v. Eurobox Ltd., Parallam, DP Manager / “Weyerhaeuser Company”, WIPO Case No. D2007-1792.)
Because the verification response of March 12, 2008 appeared to indicate that the Complainant was the named registrant, the Center sent an email to the registrar on March 14, 2008, to clarify the nature of the registration. The Center similarly sent an email to the Complainant. Neither responded. However, the Center made it clear that, in the absence of a response, the case would proceed on the basis (which appears obvious by the fact of the case proceeding) that the Complainant was not in fact the registrant of the disputed domain name. Accordingly, and on the basis that the entity which was the registrant-in-fact remained ‘Eurobox Ltd’, 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 (both ‘Eurobox Ltd’ and ‘The Saul Zaentz Company’), and the proceedings commenced on April 1, 2008. The record of transmissions of notifications from the Center to the Respondent indicate that those communications were received by a number of email addresses for the Respondent. As such, the Center discharged its burden to achieve actual notice of the dispute. The case file also indicates that a hard copy of the notification did not reach the physical post address for the Respondent, despite numerous attempts at delivery. (The Panel has inferred that this was because that address did not in fact exist.)
In accordance with the Rules, paragraph 5(a), the due date for Response was April 21, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 23, 2008.
The Center appointed James A. Barker as the sole panelist in this matter on May 6, 2008. 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 disputed domain name was registered on May 8, 2007.
On January 24, 2008 (as evidenced in the Complainant) the disputed domain name reverted to a website which indicated that ‘This domain name was recently registered/purchased.’ Three links were provided at the top of the page to ‘sponsored links’, including to the websites ‘couponmountain.com’, ‘findstuff.com’ and ‘shopbrite.com’.
At the date of this decision, the disputed domain name did not revert to an active website.
5. Parties’ Contentions
The following is summarized from the Complaint.
The Complainant holds exclusive rights to use and license marks related to the late Professor J.R.R Tolkein’s famous literary works The Hobbit and The Lord of the Rings (the ‘Tolkein Works’).
The Complainant has more than 120 trademark registrations for, and extensive common law trademark rights in, the marks MIDDLE EARTH, MIDDLE-EARTH, and THE BATTLE FOR MIDDLE-EARTH. (The Complainant provided evidence of those registrations, for example on the principal register of the United States Patent and Trademark Office, with those registrations being first filed in July 2000.)
The Complainant claims that the Respondent was using the disputed domain name in connection with a ‘pay-per-click’ website. The Complainant has held the rights to use, and license others to use, marks related to the Tolkein Works. Beginning in the mid-1970’s the Complainant established, and has continued to maintain, a successful worldwide licensing program to promote merchandise and other goods and services based on the Tolkein Works.
The Complainant also owns over 60 registered domain names incorporating the MIDDLE EARTH marks, including <middle-earth.com> and <middleearth.com>.
The Complainant claims that the disputed domain name is identical or confusingly similar to its marks. The only difference between the disputed domain name and the Complainant’s MIDDLE EARTH mark is the addition of the generic word ‘online’, which merely refers to the Internet context of any website.
The Complainant claims that the Respondent lacks any rights or legitimate interests in the disputed domain name. The Complainant claims that the Respondent cannot show any of the evidence of such rights or legitimate interests for the purposes of paragraph 4(c) of the Policy. The Complainant claims that the Respondent is diverting Internet users for commercial gain.
The Complainant, finally, claims that the disputed domain name was registered and is being used in bad faith. The Respondent is acting in bad faith by using the disputed domain name in connection with a pay-per-click website; and is intentionally trading on the fame of the Complainant’s marks. The Complainant provides evidence that the disputed domain name was transferred from ‘Web Advertising Corp’ (which has a history as an unsuccessful respondent in numerous prior proceedings under the Policy) to ‘Eurobox Ltd’ (the latter which describes itself as providing a proxy service).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These issues are discussed in turn as follows, immediately after a discussion of a procedural issue concerning the proper respondent.
A. The Proper Respondent
In this case, the Respondent’s details (that is, those of the registrant as indicated in the Whois details) appear to have been changed after the Complaint was filed with the Center on February 1, 2008. At the date the Complaint was filed, the registered domain name holder was ‘Eurobox Ltd’. By at least February 5, 2008, the registrant’s details had been changed to reflect the name of the Complainant itself.
These circumstances are not unlike those, also involving this Respondent (Eurobox Ltd), in Weyerhaeuser Company v. Eurobox Ltd., Parallam, DP Manager / “Weyerhaeuser Company”, WIPO Case No. D2007-1792. In that case, the change in the registrant’s details to reflect those of the then complainant, and effected after the date the complaint was filed, was of no moment. In that case, the complaint proceeded against the originally named respondent, on the basis that “either (a) the registrar-advised change in registration details can be disregarded as invalid and the Complaint, having been brought against a respondent identified using the Who-Is registration details available at the time of filing, must be in order; or (b) the change in registration is legitimate only insofar as it does not reflect any underlying change in the true ownership of the Domain Name, in which case it cannot be said that the proceedings have been brought against the wrong person.”
This Panel adopts the same approach. As such, the Respondent in this case is properly reflected as ‘Eurobox Ltd’, in addition to the details included for the registrant in the WhoIs.
The Respondent appears to operate a ‘proxy service’ for domain name holders. The result is that the true identity of the Respondent is unknown.
B. Identical or Confusingly Similar
The Complainant has substantial and well-known registered trademark rights in relation to MIDDLE EARTH.
The disputed domain name is not identical to that mark. But it is clearly confusingly similar. The only difference between them is the addition of the generic term ‘online’. It is well-established that the addition of that generic term to a widely-known mark is not relevant for the purpose of determining confusing similarity. (See, for example, the following cases in which the addition of the term ‘online’ to a mark was found to have no distinguishing value: Banca Intesa S.p.A v. Roshan Wickramaratna, WIPO Case No. D2006-0215, Société Air France, Koninklijke Luchtvaart Maatschappij v. Wan-Fu China, Ltd., WIPO Case No. D2007-0651, Pneus-online Suisse SARL v. Delti.com AG, WIPO Case No. D2006-0479, F. Hoffmann-La Roche AG v. Den, WIPO Case No. D2006-0182.)
Likewise, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered mark. The Complainant has therefore established its case for the purpose of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
It is difficult to conceive that the Respondent has a right or legitimate interest in the disputed domain name. The Respondent provided no evidence of having any.
As noted above, at the date of this dispute, the disputed domain name did not revert to an active website. The Complainant provides evidence that the disputed domain name reverted to a ‘parking’ website before the Complaint was filed. The registration of a domain name in connection with such a website is not, in itself, a violation of the Policy. However, the Respondent has wholly incorporated the Complainant’s trademark in that connection. The Respondent had no license do to so.
The ‘portal’ website (of which the Complainant provides evidence) indicates no connection with the Complainant, nor any other objective connection with the nature of the Complainant’s mark. The Complainant’s mark is also very widely-known. As such, a reasonable inference is that the disputed domain name was registered to capitalize on the trademark value of the Complainant’s mark. In such circumstances, the trend in UDRP decisions is to recognize that such practices generally do constitute abusive cybersquatting. See, e.g., Champagne Lanson v. Development Services / MailPlanet.com, Inc., WIPO Case No. D2006-0006. This conclusion is supported by the other evidence in this case, referred to below.
The purported change of registration details (to reflect the name of the Complainant), after the Complaint was filed, also suggests that the Respondent has sought to frustrate these proceedings. That said, it is difficult to imagine that the Respondent thought this might succeed. It is a strategy that has evidently failed before. (See Weyerhaeuser Company v. Eurobox Ltd., Parallam, DP Manager / “Weyerhaeuser Company”, WIPO Case No. D2007-1792.) And, whatever else it might be, the Respondent is axiomatically not the Complainant.
The Panel has also taken into account the likelihood that the Respondent has been an unsuccessful respondent in previous cases under the Policy. Although the true identity of the Respondent is difficult to verify (particularly as the Respondent has itself attempted to remain hidden), the Complainant provides evidence that the disputed domain name was held in the name of ‘Web Advertising Corp’. Web Advertising Corp., has been a respondent in multiple prior proceedings: See for example, Mr. Didier Guérin and Didier Guérin SAS v. Web Advertising, Corp., WIPO Case No. D2007-0247, Debevoise & Plimpton LLP v. Keyword Marketing, Inc. / Web Advertising, Corp., WIPO Case No. D2007-1679, among many others.
The Complainant provides evidence of having written to Web Advertising Corp., on April 25, 2007, concerning the disputed domain name then registered with Web Advertising Corp. Shortly thereafter, the registration of the disputed domain name was transferred to the Respondent. This evidence is suggestive of Web Advertising Corp remaining the Respondent-in-fact, but seeking to mask its identity through the proxy service provided by Eurobox Ltd.
As a proxy service Eurobox Ltd has, perhaps unsurprisingly, been named as a respondent in numerous prior proceedings. These include the Weyerhaeuser Company and Mrs. Eva Padberg cases cited above, involving circumstances no dissimilar to this case. And there are others involving the Respondent: Allied Electronics Corporation Limited t/a altron v. WWWAdmin Ltd., ALT project, Eurobox Ltd., WIPO Case No. D2007-1435, Soda-Club (CO2) S.A. v. Percom Ltd. d/b/a WebBooster.com, WIPO Case No. D2005-0465, Kesko Oy v. Eurobox Ltd, WIPO Case No. D2003-0975; Universal Spheres, Inc. dba GoldenPalace.com v. BusinessService Ltd., Escrow Domain Department, Temporary Domain transfer Manager, NAF Case No. FA746952, Gávea Investimentos Ltda v. Tradenames Ltd./ Eurobox Ltd., WIPO Case No. D2007-1804, among others. The Respondent ‘Eurobox’ was unsuccessful in most of those cases (the latter being the exception, on the basis that the then complainant did not establish sufficiently prior trademark rights).
A review of these cases indicates that the use of Eurobox Ltd as a proxy service did little to assist the case for the respondents. Indeed, the use of a proxy service would more usually (although not necessarily always) be indicative that the respondent is seeking to hide its activity from scrutiny in proceedings under the Policy. The natural inference from this is a negative one – that the respondent has ‘something to hide’. Taking into account the circumstances of this case, the Panel draws such a negative inference from the Respondent’s use of Eurobox Ltd as a proxy service.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has therefore established its case for the purpose of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
For similar reasons, the Panel finds that the disputed domain name was registered and has been used in bad faith. There is little evidence before the Panel that would support a contrary conclusion.
As evidenced by the Complainant, the Respondent appears to have used the disputed domain name in connection with a parking website. This type of use, taken together with the fame of the Complainant’s mark, suggests that the Respondent registered the disputed domain name to capitalize on the value of the Complainant’s mark. Such a use (and registration for that purpose) may clearly establish that the disputed domain name has been registered and used in bad faith for the purpose of paragraph 4(b) of the Policy.
The attempt by the Respondent to hide its identity, and the change of registration details shortly after the Complaint was filed, to a name that was obviously false, also support a finding of bad faith. That activity suggests that the Respondent has sought to frustrate these proceedings, and prevent any better examination of its intentions with respect to the disputed domain name.
For these reasons, the Complainant has established its case for the purpose of paragraph 4(a)(iii) of the Policy.
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, <middleearthonline.com> be transferred to the Complainant.
James A. Barker
Dated: May 20, 2008