The Saul Zaentz Company v. Aaron Cicchelli
Claim Number: FA1309001518140
Complainant is The Saul Zaentz Company (“Complainant”), represented by Alec P. Rosenberg of Arent Fox LLP, Washington, D.C., USA. Respondent is Aaron Cicchelli (“Respondent”), Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <middleearthgold.com>, <middleearthguide.com>, <middleearthguides.com>, <middleearthitems.com>, <middleearthonlinesale.com>, <middleearthonlineshop.com>, <middleearthonlinestore.com>, <middleearthsale.com>, <middleearthstore.com>, <wwwmiddleearth.com>, <wwwmiddleearthonline.com>, registered with GoDaddy.com, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 5, 2013; the National Arbitration Forum received payment on September 5, 2013.
On September 6, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <middleearthgold.com>, <middleearthguide.com>, <middleearthguides.com>, <middleearthitems.com>, <middleearthonlinesale.com>, <middleearthonlineshop.com>, <middleearthonlinestore.com>, <middleearthsale.com>, <middleearthstore.com>, <wwwmiddleearth.com>, <wwwmiddleearthonline.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 September 9, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 30, 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@middleearthgold.com, postmaster@middleearthguide.com, postmaster@middleearthguides.com, postmaster@middleearthitems.com, postmaster@middleearthonlinesale.com, postmaster@middleearthonlineshop.com, postmaster@middleearthonlinestore.com, postmaster@middleearthsale.com, postmaster@middleearthstore.com, postmaster@wwwmiddleearth.com, postmaster@wwwmiddleearthonline.com. Also on September 9, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 2, 2013 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed
The Honourable Neil Anthony Brown QC 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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
Complainant made the following contentions
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant owns the exclusive rights to use a series of registered trademarks, including MIDDLE-EARTH ,related to the late Professor J R R Tolkien’s acclaimed literary works, The Hobbitt and The Lord of the Rings.
2. Complainant has registered the MIDDLE-EARTH mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 2,971,045 filed on November 13, 2000; registered on July 19, 2005).
3. Complainant has also established common law trademark rights to MIDDLE-EARTH.
4. Respondent has registered each of the disputed domain names and they resolve to parking pages that contains click-through advertisements to various websites.
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.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant owns the exclusive rights to use a series of registered trademarks related to the late Professor J R R Tolkien’s acclaimed literary works, The Hobbitt and The Lord of the Rings .One of those trademarks is MIDDLE-EARTH. Complainant uses the MIDDLE-EARTH mark in connection with the sale of an array of games and other products related to the stories in The Hobbitt and The Lord of the Rings. Complainant’s MIDDLE-EARTH mark is a term whose meaning is nearly exclusively related to the myths of the late Professor Tolkien’s stories. Complainant registered the MIDDLE-EARTH mark with the USPTO (Reg. No. 2,971,045 filed on November 13, 2000; registered on July 19, 2005). As both parties in this proceeding reside in the United States, Complainant has established rights in the MIDDLE-EARTH mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel finds that Complainant’s Policy ¶ 4(a)(i) rights, as vested by this registration, date back to the November 13, 2000 filing date. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). The Panel also finds that Complainant has established common law trademark rights to MIDDLE-EARTH with respect to its use for the above purposes and that such common law trademark rights date back to at least the year 2000 and probably prior to that time as Complainant has used the MIDDLE-EARYTH trademark since 1977.
Complainant further argues that it has used the MIDDLE-EARTH in connection with the sale of goods since 1977. Since 1998, Complainant has operated the <middleearth.com> domain name which promotes Complainant’s merchandising business. See Complaint, Attached Ex. C (noting that Complainant’s <middleearth.com> domain name was registered on April 28, 1998). Complainant claims that the general public associates the MIDDLE-EARTH mark with Complainant’s products. Previous panels, such as the panel in Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011), have expressed the view held at common law—namely, that acquired distinctiveness through secondary meaning requires proof that the trademark has become associated with the source or origin of a good or service. As the Panel agrees that Complainant has adequately shown secondary meaning, it finds that Respondent has also established common law rights under Policy ¶ 4(a)(i) in this mark probably since 1977 and therefore predating the earliest possible registration of the disputed domain names.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s MIDDLE-EARTH mark Complainant next argues that Respondent’s domain names are all confusingly similar to the MIDDLE-EARTH mark. Complainant claims that the mark remains the dominant and distinctive element in each of the <middleearthgold.com>, <middleearthguide.com>, <middleearthguides.com>, <middleearthitems.com>, <middleearthonlinesale.com>, <middleearthonlineshop.com>, <middleearthonlinestore.com>, <middleearthsale.com>, <middleearthstore.com>, <wwwmiddleearth.com>, and <wwwmiddleearthonline.com> domain names. Complainant states that the added terms are generic, or at best non-distinctive descriptive terms referring to the sale of MIDDLE-EARTH goods. Complainant also contends that the addition of the “www” in the <wwwmiddleearth.com> and <wwwmiddleearthonline.com> domain names provides little differentiation from the mark. The Panel agrees that the deletion of the mark’s hyphen, and the addition of the generic top-level domains (“gTLDs”) “.com” to each of the domain names do not factor into this analysis. See, e.g., BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (finding that the domain name, <tippex.com> is confusingly similar to the complainant’s mark, TIPP-EX and that use of a hyphen does not negate likelihood of confusion); Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). The Panel also agrees with Complainant that the addition of “www” is not distinguishing to a domain name. See Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding the prefix “www” followed by the trademark with no period separating them did not distinguish the mark and was confusingly similar). The Panel agrees that the various terms added to the domain names, such as “online shop,” “guides,” “gold,” or “sale” are all generic terms that do not distinguish the dominant MIDDLE-EARTH mark. See, e.g., 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). Thus the Panel finds that all of the <middleearthgold.com>, <middleearthguide.com>, <middleearthguides.com>, <middleearthitems.com>, <middleearthonlinesale.com>, <middleearthonlineshop.com>, <middleearthonlinestore.com>, <middleearthsale.com>, <middleearthstore.com>, <wwwmiddleearth.com>, and <wwwmiddleearthonline.com> domain names are confusingly similar to the MIDDLE-EARTH mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s MIDDLE-EARTH trademark and to use it in its domain names, adding only the generic words such as “online shop,” “guides,” “gold,” or “sale” , thus enhancing the confusing similarity between the domain names and the trademark;
(b) Respondent uses all of the domain names to promote a “parking page” that contains click-through advertisements to various websites;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d)Complainant argues that Respondent is not known by the domain names at issue. Complainant states that it has not otherwise authorized, permitted, or licensed Respondent to make use of Complainant’s marks in domain names. The Panel notes that the WHOIS information shows that “Aaron Cicchelli” is the registrant of record for all of the disputed domain names. In Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), the panel declined to make a finding under Policy ¶ 4(c)(ii) when the only available evidence provided no basis for the claim that the respondent was known by the domain name. The Panel likewise finds that Respondent is not known by any of these domain names under Policy ¶ 4(c)(ii);
(e) Complainant argues that Respondent uses all of the domain names to promote a “parking page” that contains click-through advertisements to various websites. The Panel notes that the domain names are all used to host advertising content, provided by GoDaddy.com, LLC—most of the content consists of hyperlinks to wholly irrelevant goods or services. See Complaint, Attached Ex. E. The panel in Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003), found nothing bona fide about the use of disputed domain names for purposes of allowing the registrar to host its own commercial advertisements. The Panel agrees that Respondent’s holding of these domain names for purposes of commercial advertisements is neither bona fide under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant claims that Respondent intends to confuse and deceive Internet users into believing that the content at the resolving websites—all of which contain advertisements—is related to Complainant and the MIDDLE-EARTH mark. The Panel finds that in all probability each of the disputed domain names was registered long after the filing of the application for registration of the MIDDLE-EARTH trademark in the year 2000. The Panel notes that the domain names all resolve to websites promoting various monetized hyperlinks. See Complaint, Attached Ex. E. Previous panels have found that bad faith exists as a result of the likelihood of confusion when a respondent uses a confusingly similar domain name to lure Internet users into websites that promote hyperlinks, as the respondent profits each time a confused Internet user clicks-through one of these links. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). The Panel thus determines that Respondent registered and uses the domain names in Policy ¶ 4(b)(iv) bad faith by hosting hyperlinked advertisements at the resolving websites.
Secondly, Complainant claims that Respondent had to have actual knowledge of Complainant’s rights in the MIDDLE-EARTH mark when registering these domain names. Complainant states that because it has used the MIDDLE-EARTH mark for years in connection with its goods, the registration of eleven infringing domain names by Respondent is further evidence of such knowledge. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also 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).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the MIDDLE-EARTH mark and in view of the conduct that Respondent has engaged in when using them, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <middleearthgold.com>, <middleearthguide.com>, <middleearthguides.com>, <middleearthitems.com>, <middleearthonlinesale.com>, <middleearthonlineshop.com>, <middleearthonlinestore.com>, <middleearthsale.com>, <middleearthstore.com>, <wwwmiddleearth.com>, <wwwmiddleearthonline.com> domain name be TRANSFERRED from Respondent to Complainant
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 4, 2013
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