If you are still in a Christmas mood the following post might not be to your taste.
The WIPO Arbitration and Mediation Center recently decided that the domain "sex-hobbit.com" had to be transferred to the Complainant, The Saul Zaentz Company d/b/a Tolkien Enterprises, who holds, has used, and has licensed others to use, the famous and well-known HOBBIT marks in connection with a wide variety of commercial goods and services. The Respondent in the case could not substantiate any rights in the domain name, nor had he derived any rights from the Complainant to permit use of or to incorporate the HOBBIT mark in the domain name. The domain name had been used to "... provide a gateway to graphic, hard-core pornographic websites catering for sexual tastes at what the [WIPO] Panel would characterize as the more extreme end of the spectrum."
The WIPO panel decided that the contested domain name was confusingly similar to HOBBIT marks and that it is the “hobbit” element "...which provides the only distinctive element in the Domain Name. It is the “hobbit” which will immediately grab any reader’s attention, and immediately create an association with the HOBBIT, in which the Complainant has established its rights." The panel further ruled that the Respondent had no rights or legitimate interests in respect of the domain name and that the domain name had been registered and used in bad faith.
The panel applied paragraph 4(b)(iv) of the of the Uniform Domain Name Dispute Resolution Policy directly and decided that:
"... [the] HOBBIT mark has been incorporated in the Domain Name specifically for its potential attractive benefit to entice consumers to the Respondent’s website. By the Respondent’s own admission, was preferred to because of the fantasy association of the Hobbit. That fantastical association, the public recognition and reputation in the HOBBIT name and mark has been developed by the Complainant’s worldwide promotion of the Tolkien books and characters. The Respondent is not entitled to arrogate the HOBBIT name and reputation to himself for attracting Internet users to his website and to exploit confusion with the Complainant’s HOBBIT mark for Respondent’s own benefit in this manner.
The Respondent’s actions in threatening, or purporting to transfer the Domain Name to an unidentified third party also support the Complainant’s contention that the Respondent’s registration and use of the Domain Name meets the “bad faith” criterion under the Policy.
The Panel therefore finds that the Domain Name has been registered and is being used in bad faith and that Paragraph 4(a)(iii) of the Policy is also met."
Case reference: The Saul Zaentz Company d/b/a Tolkien Enterprises v. ATTO i.t.c.
Case No. D2007-1495 of 4 December 2007