WIPO Calls for Transfer of Hobbits.com
By Frank Baird III, Legal Team
In the Saul Zaentz Company d/b/a Tolkien Enterprises v. CheapYellowPages.com decision, a World Intellectual Property Organization (WIPO) panel recently ordered the transfer of the domain names hobbits.com and hobbitts.com to Tolkien Enterprises. Tolkien Enterprises (hobbit.com) holds certain exclusive worldwide rights to the literary works of JRR Tolkien’s novels, including "The Hobbit" and "The Lord of the Rings". Tolkien Enterprises licenses the titles, name of characters, scenes, places, things and events appearing in Tolkien’s literary works for use as trademarks and service marks in connection with lines of merchandise.
Brian Wick registered the disputed domain names in 2002, within a month of the release of the film "The Lord of the Rings". Both domains were used in connection with an online directory service, CheapYellowPages.com. The advertisements featured on the websites were for a range of commercial products and services offered by third-party advertisers.
Tolkien Enterprises claimed that the domain names were confusingly similar to its 'HOBBIT' marks, that Wick has no rights or legitimate interest in the domain names, and that the domain names were registered and used in bad faith. Wick asserted that he had a right to use domain names consisting of common use and generic terms, including close misspellings of the terms. Wick argued that the term ‘hobbit’ was generic and that he had no intention to divert users seeking information about Tolkien’s 'HOBBIT' goods or services.
The key issue was whether or not Wick had registered the domain names to capitalize on the fame of the 'HOBBIT' marks, rather than for their generic qualities and attraction as common terminology. The panel decided that even if they accepted that the term 'hobbit' had generic value, Wick presented no evidence that the domain names has been used in a manner that reflected the generic value of the term. Rather, evidence was introduced showing that websites associated with the disputed domains included DVDs of Tolkien’s films. Further, the heading “visit Bilbo’s homepage” was provided in search engine results for hobbits.com.
Ultimately, the panel held that Wick did not prove that the domain names were registered and used for their generic value. The panel felt Wick had made an opportunistic selection of domain names likely to attract traffic because of an assumed association with Tolkien’s works, the film adaptations, and the 'HOBBIT' mark.
Domain owners should take notice of this decision because it illustrates that although a generic mark may be vulnerable to legitimate third-party use, use of the mark in a trademark sense will not be excused by its generic meaning.
Source: Sedo.com -- Reprinted with permission -- July 8, 2008
In the Saul Zaentz Company d/b/a Tolkien Enterprises v. CheapYellowPages.com decision, a World Intellectual Property Organization (WIPO) panel recently ordered the transfer of the domain names hobbits.com and hobbitts.com to Tolkien Enterprises. Tolkien Enterprises (hobbit.com) holds certain exclusive worldwide rights to the literary works of JRR Tolkien’s novels, including "The Hobbit" and "The Lord of the Rings". Tolkien Enterprises licenses the titles, name of characters, scenes, places, things and events appearing in Tolkien’s literary works for use as trademarks and service marks in connection with lines of merchandise.
Brian Wick registered the disputed domain names in 2002, within a month of the release of the film "The Lord of the Rings". Both domains were used in connection with an online directory service, CheapYellowPages.com. The advertisements featured on the websites were for a range of commercial products and services offered by third-party advertisers.
Tolkien Enterprises claimed that the domain names were confusingly similar to its 'HOBBIT' marks, that Wick has no rights or legitimate interest in the domain names, and that the domain names were registered and used in bad faith. Wick asserted that he had a right to use domain names consisting of common use and generic terms, including close misspellings of the terms. Wick argued that the term ‘hobbit’ was generic and that he had no intention to divert users seeking information about Tolkien’s 'HOBBIT' goods or services.
The key issue was whether or not Wick had registered the domain names to capitalize on the fame of the 'HOBBIT' marks, rather than for their generic qualities and attraction as common terminology. The panel decided that even if they accepted that the term 'hobbit' had generic value, Wick presented no evidence that the domain names has been used in a manner that reflected the generic value of the term. Rather, evidence was introduced showing that websites associated with the disputed domains included DVDs of Tolkien’s films. Further, the heading “visit Bilbo’s homepage” was provided in search engine results for hobbits.com.
Ultimately, the panel held that Wick did not prove that the domain names were registered and used for their generic value. The panel felt Wick had made an opportunistic selection of domain names likely to attract traffic because of an assumed association with Tolkien’s works, the film adaptations, and the 'HOBBIT' mark.
Domain owners should take notice of this decision because it illustrates that although a generic mark may be vulnerable to legitimate third-party use, use of the mark in a trademark sense will not be excused by its generic meaning.
Source: Sedo.com -- Reprinted with permission -- July 8, 2008