Tolkien Enterprises obtains transfer of '' and ''

In The Saul Zaentz Company d/b/a Tolkien Enterprises v (Case D2008-0021, March 17 2008), a World Intellectual Property Organization panel has ordered the transfer of the domain names '' and '' to The Saul Zaentz Company (doing business as Tolkien Enterprises).
Since the late 1960s, Tolkien Enterprises had held the right to use trademarks based on JRR Tolkien’s novels - in particular, The Hobbit and The Lord of the Rings. It was undisputed that Tolkien’s works and characters are well known in the United Kingdom and the United States. Tolkien Enterprises owns numerous trademark registrations consisting of or incorporating the term 'hobbit'. It also owns domain names such as ''.
Brian Wick registered '' and '' in 2002. He used the domain names in connection with an online directory service under the registered US trade name His strategy was to catch browser entries made by internet users by directing them to his website, which featured links to businesses with similar names to the word or term entered.
The websites '' and '' offered information about a “wide variety of quality products and services at great values through store brands”, with “targeted advertising and marketing store brands that connect [consumers] with the right retailer, distributor or manufacturer”. In addition, the websites displayed links to other advertising directory websites operated by Wick, which featured paid advertising links for different categories of goods and services.                                                                                                       
Tolkien Enterprises contended that:
  • the domain names were confusingly similar to its HOBBIT marks;
  • Wick had no rights or legitimate interests in the domain names; and
  • the domain names were registered and used in bad faith to mislead internet users and divert them to Wick's advertising directory websites for commercial gain.
Wick claimed that the right to use domain names consisting of “common use and generic terms and phrases… and… close misspellings of these terms” was permitted under the Uniform Domain Name Dispute Resolution Policy. To support the allegation that the term 'hobbit' is generic, Wick cited a treatise on English folklore and documents showing the term 'hobbit' in trade names and trademark applications. In addition, Wick claimed that:
  • the term 'hobbit' is used as an acronym for 'high order bit' in software programming; and 
  • he had no intention to divert internet users seeking information about HOBBIT-branded goods or services. 
Tolkien Enterprises argued that Wick had chosen the domain names in order to capitalize on the fame of the HOBBIT marks, rather than for their generic qualities and attraction as dictionary words. 
Upholding the complaint, the panel held that even accepting the argument that the term 'hobbit' has some generic value, there was no evidence that the domain names at issue had been used in a way that reflected the generic value of the term. The advertisements featured on (or linked to) the two websites concerned a wide range of commercial products and services offered by third-party advertisers.
The fact that Wick's websites were registered within a month of the release of the film Lord of the Rings was also held to be significant. Moreover, there was evidence that the websites associated with the contested domain names included DVDs of the films The Hobbit and The Lord of the Rings. In addition, the heading “visit Bilbo’s homepage” was provided in search engine results for ''.
Therefore, the panel concluded that Wick had failed to prove that the domain names were registered and used for their dictionary or generic value. The panel held that the evidence pointed to an opportunistic choice of domain names likely to attract internet users because of an assumed association with Tolkien's books and characters, their film adaptations and the related HOBBIT mark.
The decision demonstrates that although a generic mark may be vulnerable to legitimate third-party use, use of the mark in a trademark sense is not excused by its generic meaning. 
Chris McLeod and Emilie Scheffer, Hammonds, London

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