The Saul Zaentz Company v. Sam Solomon
Claim Number: FA1306001505579
Complainant is The Saul Zaentz Company (“Complainant”), represented by James R. Davis of Arent Fox LLP, Washington, D.C., USA. Respondent is Sam Solomon (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <thehobbitfilmreview.com>, <thehobbitisracist.com>, <thehobbitracism.com>, <thehobbitracist.com>, <lotrmoviereview.com>, and <lotrtrilogyreview.com>, registered with NETWORK SOLUTIONS, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Nelson A. Diaz (ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 19, 2013; the National Arbitration Forum received payment on June 19, 2013.
On June 19, 2013, NETWORK SOLUTIONS, LLC. confirmed by e-mail to the National Arbitration Forum that the <thehobbitfilmreview.com>, <thehobbitisracist.com>, <thehobbitracism.com>, <thehobbitracist.com>, <lotrmoviereview.com>, and <lotrtrilogyreview.com> domain names are registered with NETWORK SOLUTIONS, LLC., and that Respondent is the current registrant of the names. NETWORK SOLUTIONS, LLC. has verified that Respondent is bound by the NETWORK SOLUTIONS, LLC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 20, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 10, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@thehobbitfilmreview.com, postmaster@thehobbitisracist.com, postmaster@thehobbitracism.com, postmaster@thehobbitracist.com, postmaster@lotrmoviereview.com, and postmaster@lotrtrilogyreview.com. Also on June 20, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on July 9, 2013.
On July 11, 2013, an Additional Submission was received from the Complainant. The Additional Submission does comply with Supplemental Rule 7.
On July 15, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Nelson A. Diaz (ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
B. Respondent
C. Additional Submissions
Policy ¶ 4(a)(i) Confusingly Similar, Policy ¶ 4(a)(ii) Rights & Legitimate Interests, and Policy ¶ 4(a)(iii) Bad Faith Use & Registration have been violated by the Respondent.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant claims that it owns rights to THE HOBBIT and the LOTR trademarks, for use in motion pictures, books, toys, computer games, and online services. Complainant has registered these marks with the USPTO for several purposes. See THE HOBBIT (Reg. No. 2,949,370 registered on May 10, 2005 (computer software, video game software); (Reg. No. 3,245,235 registered on May 22, 2007 (providing news and information related to computer and video games); (Reg. No. 4,128,961 registered on Apr. 17, 2012 (online retail store services)); see also LOTR (Reg. No. 3,556,585 registered on Jan. 9, 2009 (swords, knives, sword scabbards); Reg. No. 3,669,349 registered on August 18, 2009 (dioramas featuring figures from films)). The Panel concludes that registration of a mark with the USPTO is a satisfactory showing of rights when both parties dwell within the United States. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in the LOTR and THE HOBBIT marks pursuant to Policy ¶ 4(a)(i).
Complainant claims that Respondent registered the <thehobbitfilmreview.com>, <thehobbitisracist.com>, <thehobbitracism.com>, <thehobbitracist.com>, <lotrmoviereview.com>, and <lotrtrilogyreview.com> domain names, which are confusing similar to Complainant’s marks. The Panel agrees that the addition of the gTLD “.com” is irrelevant in all cases. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel notes the <lotrmoviereview.com> and <lotrtrilogyreview.com> domain names in respect to the LOTR mark. The Panel agrees that generic terms such as “movie” and “review” do nothing to diminish confusing similarity. See Victoria’s Secret v. Plum Promotions, FA 96503 (Nat. Arb. Forum Feb. 27, 2001) (“The mere addition of the generic term “tv” does not reduce the likelihood of confusion under Policy 4(a)(i).”). The Panel finds that the descriptive term “trilogy” enhances the confusing similarity as the LOTR mark is used in connection with a trilogy of books/movies. See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”). The Panel concludes that both the <lotrmoviereview.com>, and <lotrtrilogyreview.com> domain names are confusingly similar to the LOTR mark under Policy ¶ 4(a)(i).
The Panel next notes the <thehobbitfilmreview.com>, <thehobbitisracist.com>, <thehobbitracism.com>, and <thehobbitracist.com> domain names in regards to THE HOBBIT mark. The Panel finds the <thehobbitfilmreview.com> domain name confusingly similar to THE HOBBIT mark as it adds nothing of substance beyond the gTLD, the term “film,” and the term “review.” See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). The Panel also finds that the generic term “is” in the <thehobbitisracist.com> does not distinguish the domain name. See id. Previous panels have approached the presence of negative terms, such as “racist” or “racism” in disputed domain names by finding confusing similarity when these negative terms are used in domain names that seek to generate revenue for the respondent. See, e.g., Caixa d’Estalvis y Pensions de Barcelona ("La Caixa") v. Namezero.com, D2001-0360 (WIPO May 3, 2001) (finding “[t]he general principle taught by precedents seems to be that, when a –SUCKS domain name has been registered for the main purpose of making money, it has been registered in bad faith, while when the purpose was really to provide criticism, political or otherwise, a finding of bad faith would not be appropriate”). The Panel agrees the that the <thehobbitisracist.com>, <thehobbitracism.com>, and <thehobbitracist.com> domain names are being used to generate revenue for Respondent, and thus it finds confusing similarity in these domain names under Policy ¶ 4(a)(i).
The Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims that Respondent is not commonly known as either THE HOBBIT or as LOTR. Complainant asserts that it has not licensed or authorized Respondent’s use of these marks. The Panel notes that Respondent identifies as “Osama Abdallah,” though he lists his contact name as “Sam Solomon.” The Panel concludes that there is no basis to conclude that Respondent has been commonly known by any of these domain names under Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Complainant asserts that Respondent uses the domain names to redirect to Respondent’s own domain name, wherein Respondent solicits Internet users to donate cash to him through PayPal or credit card. Complainant does not believe that Respondent can claim in good faith that its use of the domain names is legitimately noncommercial or fair when the ultimate purposes of using these domain names is to build a narrative that persuades Internet users to donate their money to Respondent. The Panel notes that all of the disputed domain names reroute the Internet users to the <answering-christianity.com> domain name, wherein Respondent requests Internet users to donate money to his cause so that he may allegedly advertise for some undefined purpose. See Complainant’s Ex. G. The Panel also notes that the resolving website appears to have political and social commentary such as “911 100% an Israeli Lie,” “Detailed History of the Bible’s Corruption,” “Ethics in Islam,” and “Boston Bombings are 100% Israeli Zionist Job.” See id. The Panel finds that Respondent’s use of the infringing domain names is neither bona fide under Policy ¶ 4(c)(i), nor legitimate noncommercial or fair uses under Policy ¶ 4(c)(iii), because the domain names merely use Complainant’s own marks to facilitate Respondent’s fundraising endeavor. See, e.g., Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant).
Complainant argues that Respondent’s previous behavior shows a pattern of cybersquatting. Complainant notes that Respondent lost a UDRP case several years ago because he was using the complainant’s marks strictly for purposes of driving traffic to Respondent’s own website. See Fox News Network, LLC v. Sam Soloman, D2005-0022 (WIPO Mar. 25, 2005) (rejecting Respondent’s First Amendment arguments in transferring the <hannityandcolmes.com> domain name to the complainant). Complainant claims that Respondent has also been a visitor to the United States District Court of the Southern District of Texas, where a court order mandated that Respondent transfer the <joelosteen.net> domain name to the televangelist Mr. Joel Osteen. The Panel finds that Respondent’s prior UDRP decision is evidence of Policy ¶ 4(b)(ii) bad faith. See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”).
Complainant also argues that Respondent uses these confusingly similar domain names to confuse Internet users into believing the domain names will have content endorsed by Complainant, when all the Internet user can do at the resolving website is donate their own money to Respondent. The Panel finds that the use of these confusingly similar domain names for purposes of shuttling Internet users to the unrelated <answering-christianity.com> domain name wherein Respondent publishes blog posts to request donations is a Policy ¶ 4(b)(iv) bad faith attempt to associate Complainant and its marks with Respondent’s unrelated fundraising endeavors. See Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website); Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Complainant also argues that Respondent cannot allege that it has a First Amendment right to infringe on Complainant’s trademarks. The Panel finds that ordinarily, the speech or content displayed on a website may be protected by the relevant constitutional law, but the subject matter of the domain name itself and the use of trademarks within a domain name are not protected by free speech rights. See, e.g., Diners Club Int’l, Ltd. v. Infotechnics Ltd., FA 169085 (Nat. Arb. Forum Aug. 20, 2003) (“Respondent may have the right to post criticism of Complainant on the Internet, however, Respondent does not have the right to completely appropriate Complainant’s registered trademark in a domain name in a way that will mislead Internet users as to the source or affiliation of the attached website.”).
The Respondent registered all of the domain names at around the same time that Complainant released a feature film under THE HOBBIT mark. Complainant believes that Respondent simply sought to exploit the labor and time Complainant spent preparing for its film launch by registering these domain names so Respondent could get increased publicity for his fundraising operation. The panel in Reuters Ltd. v. Teletrust IPR Ltd. D2000-0471 (WIPO Sept. 8, 2000), found that opportunistic bad faith arises when it seems clear that a respondent’s primary purpose for registering a given domain name is to take advantage of a bout of publicity or success that the complainant is experiencing. The Panel here finds that Respondent’s registration of all of these domain names in the days following the release of Complainant’s THE HOBBIT film shows Policy ¶ 4(a)(iii) bad faith as Respondent sought nothing more than to amplify his odds of getting donations through his use of Complainant’s marks at a time when the marks had achieved a wide level of public awareness.
Complainant asserts in its Additional Submission that if a disclaimer even exists on the website, it would do nothing to negate the bad faith as Internet users are still likely to have their initial interest in seeing Complainant’s websites confused upon being redirected to Respondent’s unrelated fundraising operations at the <answering-christianity.com> domain name. The Panel agrees that as Respondent provides little evidence that this disclaimer actually exists on any of the websites of its <answering-christianity.com> domain name, Respondent’s bad faith is not mitigated by its purported use of such a disclaimer. See Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.”).
Complainant finally argues that Respondent had actual knowledge of THE HOBBIT and LOTR marks when registering these domain names. The Panel finds that when Respondent explicitly makes his own analogies criticizing the LOTR and THE HOBBIT films as racist and Zionist it is clear that Respondent certainly knew of Complainant’s rights in the marks when registering and using the domain names. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <<thehobbitfilmreview.com>, <thehobbitisracist.com>, <thehobbitracism.com>, <thehobbitracist.com>, <lotrmoviereview.com>, and <lotrtrilogyreview.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon, Nelson A. Diaz (ret.), Panelist
Dated: July 16, 2013
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