The Saul Zaentz Company v. Greg Dodds
Claim
Number: FA0401000233054
Complainant is The Saul Zaentz Company, San
Francisco, CA (“Complainant”) represented by J. Andrew Coombs, 450 N.
Brand Blvd., Suite 600, Glendale, CA 91203-2349. Respondent is Greg Dodds, 54 Broughton Street, Gore, Southland, 9700, New
Zealand (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <lordringstamps.com>, <lord-rings-stamps.com>,
<lordringscoins.com>, and <lord-rings-coins.com>,
registered with Go Daddy Software, Inc.
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on January 29, 2004; the Forum received a hard copy of the
Complaint on January 30, 2004.
On
January 30, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that
the domain names <lordringstamps.com>, <lord-rings-stamps.com>,
<lordringscoins.com>, and <lord-rings-coins.com> are
registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the names. Go Daddy Software, Inc. has verified that Respondent
is bound by the Go Daddy Software, Inc. registration agreement and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
February 2, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 23, 2004 by which Respondent could file a Response to
the Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@lordringstamps.com,
postmaster@lord-rings-stamps.com, postmaster@lordringscoins.com, and
postmaster@lord-rings-coins.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
March 4, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having
reviewed the communications records, the Administrative Panel (the "Panel")
finds that the 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's
Supplemental Rules and any rules and principles of law that the Panel deems
applicable, without the benefit of any Response from Respondent.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <lordringstamps.com>,
<lord-rings-stamps.com>, <lordringscoins.com>, and <lord-rings-coins.com>
domain names are confusingly similar to Complainant’s LORD OF THE RINGS
mark.
2. Respondent does not have any rights or
legitimate interests in the <lordringstamps.com>, <lord-rings-stamps.com>,
<lordringscoins.com>, and <lord-rings-coins.com>
domain names.
3. Respondent registered and used the <lordringstamps.com>,
<lord-rings-stamps.com>, <lordringscoins.com>, and <lord-rings-coins.com>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
In 1976,
Complainant acquired exclusive film, stage and merchandising rights to the
literary works of the late Professor J.R.R. Tolkien who created a book entitled
The Hobbit and a trilogy known as The Lord of the Rings.
Complainant owns
the following United States Patent and Trademark Office (“USPTO”) trademark
registrations: THE LORD OF THE RINGS (1553027, May 30, 1989; 2765513, Sept. 16,
2003), LORD OF THE RINGS (2757847, Sept. 2, 2003), THE LORD OF THE RINGS THE
TWO TOWERS (2800197, Dec. 30, 2003).
The marks have been in use in commerce since 1988.
In 1998,
Complainant licensed New Line Cinema to film the trilogy. The trilogy has been released and
distributed around the world and has achieved massive box office success.
Respondent
registered the disputed domain names <lordringstamps.com> and <lord-rings-stamps.com>
on July 8, 2003. The following day,
July 9, 2003, Respondent registered the remaining disputed domain names <lordringscoins.com>
and <lord-rings-coins.com>. Complainant has asserted that Respondent uses the domain names to
sell products relating to The Lord of the Rings motion pictures.
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."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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 has
established rights in the LORD OF THE RINGS mark through its registration with
the USPTO and continuous use in commerce since 1988. See Men’s Wearhouse,
Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S.
trademark law, registered marks hold a presumption that they are inherently
distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption).
Each of the
disputed domain names contain the terms “Lord” and “Rings,” incorporating the
principal elements of Complainant’s LORD OF THE RINGS mark and merely omitting
the insignificant functional words “the” and “of.” The omission of the preposition and the efinaite article fails to
sufficiently distinguish the domain name from the mark pursuant to Policy ¶
4(a)(i). See Mega Society v. LoSasso d/b/a Mega Foundation, FA
215404 (Nat. Arb. Forum Jan. 30, 2004) (finding that the disputed domain names
<megasociety.net> and <megasociety.com>
were confusingly similar to Complainant's THE MEGA SOCIETY common law mark and
the omission of the definite article "the" was insignificant under
the Policy.); see also Antoun d/b/a Paxton Herald v. Truth Squad,
FA 114766 (Nat. Arb. Forum Aug. 21, 2002) (stating that the term
"the" is "often added only for grammatical purposes, and may be
superfluous to the name itself").
Likewise, each
disputed name has added generic or descriptive terms to the principal elements
of Complainant’s mark, which also fails to distinguish sufficiently the names
from the LORD OF THE RINGS mark. See Sony
Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (“Neither the
addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract
from the overall impression of the dominant part of the name in each case,
namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also
Am. Online, Inc. v. Anytime Online Traffic School, FA 146930 (Nat. Arb.
Forum Apr. 11, 2003) (finding that Respondent’s domain names, which incorporated Complainant’s entire mark and
merely added the descriptive terms “traffic school,” “defensive driving,” and
“driver improvement” did not add any distinctive features capable of overcoming
a claim of confusing similarity); see also Pfizer, Inc. v.
Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject
domain name incorporates the VIAGRA mark in its entirety, and deviates only by
the addition of the word “bomb,” the domain name is rendered confusingly
similar to Complainant’s mark); see also Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000)
(finding the <westfieldshopping.com> domain name confusingly similar
because the WESTFIELD mark was the dominant element).
Furthermore, the
addition of hyphens and generic top-level domains is irrelevant under the
Policy in determining whether a domain name is confusingly similar to a mark.
See Busy Body, Inc. v. Fitness Outlet
Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that the addition of a
top-level domain is without legal significance); see also Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top
level of the domain name such as “.net” or “.com” does not affect the domain
name for the purpose of determining whether it is identical or confusingly
similar); see also Chernow
Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (“[T]he use
or absence of punctuation marks, such as hyphens, does not alter the fact that
a name is identical to a mark."); see also InfoSpace.com v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (“The domain
name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The
addition of a hyphen and .com are not distinguishing features.”).
Therefore,
Policy ¶ 4(a)(i) is established for Complainant.
The Panel
presumes that Respondent lacks rights to and legitimate interests in the
disputed domain names because of Respondent’s failure to respond to the
Complaint, which is tantamount to an implicit admission that it lacks such
rights and interests. See Do the Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest
complainant’s allegations] is tantamount to admitting the truth of
complainant’s assertion in this regard.”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as
an admission that they have no legitimate interest in the domain names); see
also Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where Respondent fails to respond); see also Vert. Solutions Mgmt., Inc. v.
Webnet-marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding
that Respondent’s failure to respond allows all reasonable inferences of fact
in the allegations of Complainant to be deemed true).
The evidence
before the Panel does not indicate that Respondent is commonly known by the
disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc.
v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS
information, and its failure to imply that Respondent is commonly known by the
disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does
not apply); see also Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been
commonly known by the domain name prior to registration of the domain name to
prevail"); see also Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interest where Respondent was not commonly
known by the mark and never applied for a license or permission from
Complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior
rights in the domain name precede Respondent’s registration; (3) Respondent is
not commonly known by the domain name in question).
Complainant has
asserted that Respondent uses the domain names to sell products relating to The
Lord of the Rings motion pictures; thus, Respondent is offering
unauthorized merchandise that competes with Complainant’s business, which does
not equate to a bona fide offering of goods or services under Policy ¶
4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See
Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum
June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark
to market products that compete with Complainant’s goods does not constitute a
bona fide offering of goods and services); see also Clear Channel
Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2,
2003) (finding that Respondent, as a competitor of Complainant, had no rights
or legitimate interests in a domain name that utilized Complainant’s mark for
its competing website); see also Chip
Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding
that the disputed domain names were confusingly similar to Complainant’s mark
and that Respondent’s use of the domain names to sell competing goods was
illegitimate and not a bona fide offering of goods); see also Avery Dennison
Corp. v. Steele d/b/a Mercian Labels Ltd. and selfadhesivelabels.com, FA
133626 (Nat. Arb. Forum Jan 10, 2003) (finding that Respondent had no rights or
legitimate interests in the disputed domain name where it used Complainant’s
mark, without authorization, to attract Internet users to its business, which
competed with Complainant).
Therefore,
Policy ¶ 4(a)(ii) is established for Complainant.
It is beyond
doubt that Respondent registered and used the disputed domain names in bad
faith pursuant to Policy ¶ 4(b)(iv) because Respondent intentionally attempted
to attract Internet users to its online locations by creating a likelihood of
confusion with Complainant’s LORD OF THE RINGS mark for the purpose of
receiving revenue through unauthorized merchandise sales of products sold under
Complainant’s mark. See 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
Complainant’s well-known marks, thus creating a likelihood of confusion
strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding
that Respondent intentionally attempted to attract Internet users to his
website for commercial gain by creating a likelihood of confusion with
Complainant’s mark and offering the same services as Complainant via his
website); see also Scholastic Inc.
v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001)
(finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the
domain name at issue to resolve to a website offering similar services as
Complainant into the same market).
The fame of The
Lord of the Rings motion pictures also makes it difficult for the Panel to
find any legitimate explanantion for Respondent’s incorporation of the
principal elements of Complainant’s LORD OF THE RINGS mark in the disputed
domain names. The fact that Respondent
used the domain names to sell products relating to Complainant’s mark evidences
that Respondent ignored or consciously disregarded Complainant’s rights in the
LORD OF THE RINGS mark, which can be considered evidence of bad faith under
Policy ¶ 4(a)(iii). See Yahoo! Inc. v.
Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO!
mark negated any plausible explanation for Respondent’s registration of the
<yahooventures.com> domain name); see also Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of
bad faith, when Respondent reasonably should have been aware of Complainant’s
trademarks, actually or constructively.”); see also Entrepreneur Media, Inc.
v. Smith, 279
F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a
mark he knows to be similar to another, one can infer an intent to
confuse."); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr.
24, 2002) (because the link between Complainant’s mark and the content
advertised on Respondent’s website was obvious, Respondent “must have known
about the Complainant’s mark when it registered the subject domain name”).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <lordringstamps.com>, <lord-rings-stamps.com>,
<lordringscoins.com>, and <lord-rings-coins.com>
domain names be TRANSFERRED from Respondent to Complainant.
John
J. Upchurch , Panelist
Dated:
March 16, 2004
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