DECISION

The Saul Zaentz Company v. Greg Dodds

Claim Number:  FA0401000233054

PARTIES

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.

PANEL

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.

PROCEDURAL HISTORY

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.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

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.

FINDINGS

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.

DISCUSSION

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.

Identical and/or Confusingly Similar

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.

Rights or Legitimate Interests

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.

Registration and Use in Bad Faith

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, [2002] USCA9 115; 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”).

DECISION

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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