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?HOBBIT? Domain Names are Reclaimed by Tolkein Enterprises

By IBLS Editor

In a number of decisions issued by the WIPO Arbitration and Mediation Center, parties who registered domain names that contained the word "hobbit" were required to relinquish their ownership of these registered domain names in favor of the company operating as Tolkein Enterprises. Following, there is an illustration of WIPO panel's position on these cases.

 

The Saul Zaentz Company, doing business as Tolkein Enterprises ("Tolkein Enterprises") holds exclusive rights in marks related to the late Professor J.R.R. Tolkein's works, "The Hobbit" and "The Lord of the Rings." Tolkein Enterprises has used its trademark registrations in Tolkein"s works since 1960s. Among such registrations are those for the marks "THE HOBBIT" and "HOBBIT," where these marks were registered in the United States and in other countries throughout the world. Tolkein Enterprises claims to have actively promoted these marks ever since it obtained rights therein. For example, the famous motion pictures based on the trilogy "The Lord of the Rings" were produced under the license of Tolkein Enterprises.

Generally, the act of registering domain names with the intention to capitalize upon the familiarity of Internet users with a particular trademark constitutes a bad faith registration. In light of this general principle, a number of recent cases have been decided by the WIPO where the trademark "HOBBIT" was used by non-holders of that trademark to attract Internet users to their respective websites. In each of these cases, the registration was deemed to be done in bad faith and the domain name registrant was ordered to relinquish its rights in the domain name in favor of Tolkein Enterprises.

Generally speaking, where a registrant (1) uses a known trademark or a name that is confusingly similar to a known trademark as whole or part of its domain name, (2) does not have a legitimate interest in the use of such a trademark, and (3) where indications exist that the domain name has been registered in bad faith, the registrant will be ordered to renounce its use of that domain name in favor of the original trademark owner.

Tolkein Enterprises already registered such domain names as "hobbit.com," "thehobbit.com," "hobbit.net," "thehobbit.net," "the-hobbit.info," "the-hobbit.us," "thehobbitdemo.com," and "thehobbitgame.com."

Similar domain names including "hobbits.com," "thehobbitmovie.com," "drunkenhobbit.com," and "sex-hobbit.com" have been held by the panel to be confusingly similar to the original "HOBBIT" trademark and their ownership has been transferred to Tolkein Enterprises.

The WIPO panel has held that the word "hobbit" is not a generic term, and that it is specifically related to the Tolkein Enterprises' trademark, "HOBBIT." A number of respondents attempted to argue that the word "hobbit" has a variety of meanings and does not refer exclusively to characters invented by Professor J.R.R. Tolkein. In particular, the respondents argued that this term refers to midgets, or to small persons in general. It was also claimed that the term "hobbit" is used as an acronym for a "high order bit" in software programming.

The panel rejected all of the above arguments, stating that the term "hobbit" immediately creates an association with the trademark "HOBBIT" and therefore the term "hobbit" in a domain name cannot be thought of as a generic term.

One of the examples in which the WIPO panel held that the use of the "HOBBIT" trademark was illegitimate was in a domain name "sex-hobbit.com." The latter website was set up for commercial purposes and provided links to many third-party fee-based, pornographic sites.

Generally speaking, the panel is likely to find that the use of an existing trademark in the context of a subsequent domain name registration is illegitimate or has been perpetrated in bad faith where the registrant uses a term that is similar to the trademark for commercial purposes. In the case of "sex-hobbit.com," an additional factor that militated against the panel's determination that the registrants' use of the domain name was legitimate was the registrant's desire to use the name to promote pornographic materials. Although the panel's decision did not hinge on this fact, Tolkein Enterprises tried to argue that the respondent's use in this context was prima facie illegitimate, because the "HOBBIT" trademark and all products associated with the trademark have a family-oriented nature.

In a number of cases where individuals or entities have registered domain names that contained the term "hobbit," the WIPO administrative panel has held that the registrants' respective domain names were confusingly similar to the famous trademark held by Tolkein Enterprises, "HOBBIT." In all of the cases heard by the panel concerning this trademark, the registrants used these domain names for commercial purposes, and the panel has held that the registrants' use was illegitimate and that the registration was conducted in bad faith.

Full post as published by IBLS Internet Law Blog on October 15, 2008 (boomark / email).