WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Tolkien Estate Limited v. Domain Investments / Matthew Jensen

Case No. D2021-2571

1. The Parties

The Complainant is The Tolkien Estate Limited, United Kingdom, represented by Maier Blackburn, United Kingdom.

The Respondent is Domain Investments / Matthew Jensen, United States of America, represented by Johnson | Dalal, The Intellectual Property Law Firm, PLLC, the United States of America.

2. The Domain Name and Registrar

The disputed domain name <jrrtoken.com> is registered with 1API GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 7, 2021. On August 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 10, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint.

The Center sent an email communication to the Complainant on August 11, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on the same day.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 1, 2021. The Response was filed with the Center on September 1, 2021.

In a cover letter to the Response, the Respondent’s representative stated that the Respondent should not be the one named by the Complainant (i.e. Domain Investments) and that the true owner of the disputed domain name is an individual who is not called Domain Investments and that he does not know Domain Investments. The Response includes a signed declaration by Matthew Jensen who claims in that declaration to be the owner of the disputed domain name.

The Center appointed John Swinson as the sole panelist in this matter on September 10, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is the Estate of Professor J.R.R. Tolkien. Professor Tolkien, who died in 1973, was a professor of English language and literature at Merton College, Oxford. Professor Tolkien also wrote fantasy novels as J.R.R. Tolkien. The most famous of these novels are The Hobbit and The Lord of The Rings series.

The Complainant owns a number of registered trademarks, including United Kingdom trademark number 902843332 for the mark J R R TOLKIEN registered on April 2, 2004, and United States trademark number 3031857 for the mark J R R TOLKIEN, registered on December 20, 2005.

The Respondent is an individual who is a resident of Florida, in the United States of America. The Respondent markets and offers for sale digital tokens, corresponding to a digital currency. The Respondent claims to have started offering digital tokens for sale on or around August 6, 2021.

The disputed domain name was registered on February 26, 2021.

At the time of this decision, the website at the disputed domain name resolves to a website at <thetokenofpower.com>. That website includes images of wizards (including one who looks like Gandalf from The Hobbit) and other images related with Tolkien’s works and derived work, and includes the phrase “The One Token That Rules Them All”.

5. Parties’ Contentions

A. Complainant

In summary, the Complainant makes the following submissions:

The Complainant owns numerous registered trademarks, including those listed in section 4.

Professor Tolkien’s works are widely disseminated, have been made into films, and are subject to many licensing deals.

On a side-by-side comparison, the Complainant’s famous trademark can be recognized in the disputed domain name. Only the letters “L” and “T” are omitted from the disputed domain name.

The content on the website at the disputed domain name trades off the Complainant’s reputation.

The website purports to offer investment in a cryptocurrency supposedly named “JRR Token” and refers extensively throughout the site to the Works and associated media.

The Respondent’s website contains no identity or contact details relating to its operator. The details of its supposed offering of cryptocurrency are so vague that it is reasonable to question whether it even offers the goods or services to which it refers.

The Respondent is not known by the disputed domain name. The Respondent has not been licensed by the Complainant.

The name and trademark J R R TOLKIEN is distinctive and has no meaning in commerce other than to refer to the Complainant and its activities. The disputed domain name constitutes an impersonation of the Complainant’s trademark J R R TOLKIEN and its domain names including <jrrtolkien.com> and can be viewed only as an instrument of fraud, specifically designed to mislead Internet users into believing that it and the website to which it resolves have some legitimate commercial connection with the Complainant.

The Respondent’s conduct in this regard is aggravated by the use of the disputed domain name for a website purportedly relating to cryptocurrency, which is in itself a highly contentious area of activity.

It is obvious from the Respondent’s selection of the disputed domain name and its use in connection with a website referencing the works of Professor J.R.R. Tolkien that the Respondent registered the disputed domain name in the knowledge of the Complainant’s trademarks and with the intention of taking unfair commercial advantage of the enormous goodwill attaching to them.

The Respondent has used the disputed domain name for the purpose of a website (and linked social media accounts) which seeks further to create a false association between the Respondent’s purported product and the Complainant’s valuable goodwill in the world-famous works of Professor J R R Tolkien.

B. Respondent

In summary, the Respondent makes the following submissions:

The disputed domain name is not identical or confusingly similar to the Complainant’s trademark. This is primarily due to the clear difference in meaning and commercial impression between the disputed domain name and the Complainant’s trademark, as well as the differences in the sound and visual appearance of the marks. Specifically, the Complainant’s J R R TOLKIEN trademark contains the additional letters “L” and “I” which are conspicuously absent from the disputed domain name. The pronunciation is also different.

The disputed domain name and the Complainant’s trademark embody two diametrically opposed meanings and commercial impressions which do not render the disputed domain name confusingly similar to the trademarks.

Professor J R R Tolkien, who is widely known for his works which include, among others, “The Lord of the Rings” and “The Hobbit”. In contrast, the term “token” means digital token facilitates real-world transactions via a decentralized technology – blockchain, which is different to the reputation of Professor J R R Tolkien.

Whereas the Complainant’s trademarks are surnames that are used as trademarks and, therefore, immediately bring to consumers’ minds the late Professor J R R Tolkien, the mark JRR TOKEN as utilized by the Respondent references a unique form of digital currency and engenders a commercial impression relating to the same.

J R R TOLKIEN is not confusingly similar to JRR TOKEN. The former is a surname used as a trademark and the latter is an English word meaning a form of digital currency.

The Respondent possesses rights and legitimate interests in the disputed domain name because it markets and offers for sale digital tokens, corresponding to a digital currency, on the disputed domain name.

Because the term “token” is generic, the Complainant does not hold an exclusive monopoly on that term, thereby entitling the Respondent to use the term TOKEN in the disputed domain name in connection with the offering of its own products, which are wholly different from the Complainant’s books, audio tapes, calendars, maps and other merchandise.

In accordance with paragraph 4(c)(i) of the Policy, the Respondent had been using the disputed domain name in connection with a bona fide offering of its digital tokens since before receiving notice of this dispute and made demonstrable preparations to use the disputed domain name.

In July of 2021, the Respondent created its Twitter account (which is currently used with the identifier @TheTokenOfPower) where it began promoting, marketing and advertising its digital tokens in connection with the JRR TOKEN mark and the disputed domain name.

The Respondent registered the disputed domain name and made a bona fide offering of goods and services prior to notice of this dispute within the meaning of paragraph 4(c)(i) of the Policy.

The fact that the disputed domain name brings to mind the Complainant’s trademarks is indicative of the parody evoked by the JRR TOKEN mark, not of any purported bad faith. The introductory header on the website homepage “ONE TOKEN THAT RULES THEM ALL”, referencing the famous phrase “One ring to rule them all” taken from the well-known “One Ring Inscription” or “Black Speech” which is found in “The Lord of the Rings”, i.e., “One Ring to rule them all, One Ring to find them, One Ring to bring them all, and in the darkness bind them”, produces a humorous difference in order to invoke the desired effect of a parody.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The onus of proving these elements is on the Complainant.

Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

Initially, there is an issue to resolve regarding the correct respondent.

Paragraph 1 of the Rules provide a definition of “respondent” as “the holder of a domain-name registration against which a complaint is initiated”. The Panel notes that the Registrar confirmed Domain Investments as the registrant of the disputed domain name, and that the Complaint was amended and filed against this entity. Domain Investments did not respond to the Compliant. Matthew Jensen received the Complainant (via a contact method set out on the website at the disputed domain name) and filed a Response. He provided declaration stating that he is the owner of the disputed domain name. It appears that Mr. Jensen controls the disputed domain name.

In these circumstances, the Panel will consider Matthew Jensen as a Respondent, and references in this decision to “Respondent” should be considered to be references to Matthew Jensen unless stated otherwise. However, if the Panel had considered Domain Investments as a Respondent too, this would not have affected the outcome of this decision.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

As set out above, the Complainant owns trademark registrations for J R R TOLKIEN.

There is no dispute that a trademark registration for the name of the author of a series of novels is sufficient to demonstrate that the Complainant has the necessary rights under the first element of the Policy. See, for example, Legislator 1357 Limited, Legislator 1358 Limited and Ian Fleming Limited v. Alberta Hot Rods, WIPO Case No. D2008-0832. See also, Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235; and Margaret Drabble v. Old Barn Studios, WIPO Case No. 2001-0209.

The Panel considers that the disputed domain name is confusingly similar to the Complainant’s J R R TOLKIEN trademark. Both the disputed domain name and the Complainant’s trademark start with the same five letters (JRR TO) and end in the same two letters (EN). When viewed quickly, the disputed domain name and the Complainant’s trademark look similar.

The Panel notes the Respondent’s contentions that Tolkien is a surname, and that “token” is a dictionary term. However, neither of these avoid a finding of confusing similarity under the first element of the Policy.

The disputed domain name and the Complainant’s trademark are not identical – when compared side-by-side with the Complainant’s trademark, there are two letters missing from the disputed domain name. The removal of two letters to the Complainant’s trademark does not negate the confusing similarity between the disputed domain name and the Complainant’s trademark under the Policy. Where the relevant trademark is recognizable within the disputed domain name, minor changes of this nature usually do not prevent a finding of confusing similarity under the first element. Such conclusion should not be affected by the fact that the change of letters result in a dictionary term, particularly when the Respondent registered the disputed domain name due to its similarities with the Complainant’s trademark.

The Respondent relies on A & F Trademark, Inc., Abercrombie & Fitch Stores, Inc., and Abercrombie & Fitch Trading Co., Inc. v. Chad Nestor, WIPO Case No. D2003-0260, (finding <aberzombie.com> not identical or confusingly similar to the ABERCROMBIE trademark because, while phonetically and visually similar, there was difference in meaning between the marks.). It may be that a one or two letter variation from a well-known trademark may not automatically produce a confusingly similar domain name. Wachovia Corporation v. American Consumers First, WIPO Case No. D2004-0150. Moreover the A & F Trademark Inc., Abercrombie & Fitch Stores, Inc., and Abercrombie & Fitch Trading Co., Inc. v. Chad Nestor case supra dates from significantly prior to the publication of the WIPO Overview and its analysis is overtaken by the “recognizability” test used by panels nowadays. Here, however, on a side-by-side comparison, the Complainant’s trademark is recognizable in the disputed domain name, as shown by the Respondent’s use of JRR in combination with a word that is very similar to TOLKIEN.

Further, in relation to the third element (discussed below), the Respondent relies on parody to claim that he is not acting in bad faith. In doing so, the Respondent admits that the disputed domain name “brings to mind” the Complainant’s trademarks. This also supports the Complainant’s assertion that its trademark has achieved significance as a source identifier, and affirms the conclusion that the Respondent registered the disputed domain name precisely because he believed that the disputed domain name was confusingly similar to the Complainant’s trademark. In addition, the fact that the website at the disputed domain name contains several references to Tolkien’s work further supports the finding of confusing similarity.

The Complainant succeeds on the first element of the Policy in relation to the disputed domain name.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or

(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant.

Previous UDRP Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent.

Accordingly, it is sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden of production will shift to the respondent to rebut that prima facie case.

The Panel concludes that none of the circumstances listed in paragraph 4(c) apply in the present circumstances.

The Complainant has not authorized the Respondent to register or use the disputed domain name or to use the J R R TOLKIEN trademark. The Complainant has rights in the J R R TOLKIEN trademark which clearly predate the Respondent’s registration of the disputed domain name.

The Complainant asserts that the Respondent is not commonly known by the disputed domain name and that the Respondent is not making a noncommercial use of the disputed domain name. The Complainant also asserts that the Respondent is not making a bona fide use of the disputed domain name, because the disputed domain name has no meaning other than to refer the Complainant and its trademark. The Panel finds that the Complainant has made out a prima facie case against the Respondent in respect of the second element.

Thus, the Complainant has established a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the disputed domain name.

The Respondent relies on paragraph 4(c)(i). The Respondent claims that he became aware of the Complainant on August 12, 2021 and that he had promoted JRR tokens prior to this on a Twitter account in July 2021, and commenced offering JRR tokens for sale on August 6, 2021. However, other than a declaration from the Respondent, no tangible evidence was provided by the Respondent to support these assertions or the date of first sale. Mere assertions without proof is generally not sufficient to demonstrate use prior to notice of the Complainant, as required by paragraph 4(c)(i) of the Policy.

Even if the Respondent did demonstrate use prior to notice of the Complaint, the Panel’s view is that the use of the disputed domain name by the Respondent is not in connection with a bona fide offering of goods or services.

The Respondent asserts, in his signed declaration, that he selected the disputed domain name because “JRR” stands for “Journey through Risk to Reward”. He also states that <jrrcrypto.com> was not available (it is being used by a company in Switzerland called JRR Group). The Panel does not believe that the Respondent selected the letters JRR for the reason he states, and it does not appear that the website at the disputed domain name uses the term “Journey through Risk to Reward”. The Respondent provided no evidence of use of “Journey through Risk to Reward” in any other context. It is not clear to the Panel what “Journey through Risk to Reward” actually means, and why the term “journey” is relevant to the purchase of tokens.

The website at the disputed domain name includes a number of references to The Hobbit and The Lord of the Rings novels, such as images of wizards, rings, Hobbit holes and the like. The phrase “The One Token That Rules Them All” used on the Respondent’s website is a clear reference to The Lord of the Rings. There is no doubt that the Respondent was aware of Tolkien’s works and created a website to trade off the fame of these works.

The Panel concludes that the Respondent knew of the Complainant’s trademark and other intellectual property rights at the time of registering the disputed domain name.

The Panel finds that the disputed domain name was selected for the sole purpose of creating a false association with the Complainant, or to evoke the Complainant and its trademarks through the disputed domain name and website, profiting from the Complainant’s reputation and goodwill, and in such a case, no rights or legitimate interests can be found. See e.g., Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Madonna Ciccone p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847; and Speakasia Online Pte. Ltd. v. Gagandeep Randhawa, WIPO Case No. D2011-1317.

The Panel also concludes that the Respondent used the disputed domain name to divert consumers to the Respondent’s website in a way that was misleading, and to create a false impression that the Respondent is associated with or endorsed by the Complainant. As a result, the Panel finds that the Respondent’s offering of goods or services (even if offered prior to notice of the Complainant) is not a bona fide offering of good or services in accordance with paragraph 4(c)(i) of the Policy. The Nasdaq Stock Market, Inc. v. Green Angel, WIPO Case No. D2001-1010.

The Complaint suggests that the website at the disputed domain name appears to be part of a fraudulent scheme, quoting a media source referring to the Respondent’s website as promoting a “scam-ridden cryptocurrency.” The Panel does not take this unproven allegation into account.

For the reasons set forth above, the Panel concludes the Respondent has no rights or any legitimate interests in the disputed domain name.

The Complainant succeeds on the second element of the Policy in relation to the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith.

J R R Tolkien, and his works, are very well-known. As stated above, they were known to the Respondent.

Due to the fame of the Complainant’s trademark, the Panel considers that it is likely that the Respondent registered the disputed domain name with the intention to take advantage of the Complainant’s reputation. The Respondent did not address the assertions in the Complaint that the disputed domain name comprises an obvious impersonation of the Complainant, or that the Respondent’s website creates a false association with the Complainant. The Panel also notes that there is no disclaimer or other wording on the website at the disputed domain name that tries to dispel any such false association.

The Respondent asserts he used the disputed domain name as a parody, and as such, this is not bad faith use under the Policy. The Response does not clearly identify the subject of the Respondent’s parody (arguably the Complainant’s trademark and/or Tolkien’s works), but more importantly the Respondent does not specify why the disputed domain name is humorous, funny or nail-biting, and not just a domain name chosen due to its similarities with the Complainant’s trademarks to take commercial advantage of its evocation.

If the Respondent’s use was in relation to a genuine noncommercial parody website (see Johnson & Johnson v. Domain Protection Services, Inc., c/o Whois Agent / Danielle Baskin, Danielle Baskin, WIPO Case No. D2021-0947), the result may have been different, but that is not the situation here. The Respondent’s website is clearly a commercial venture, which is clever but not humorous.

The Panel finds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website under paragraph 4(b)(iv) of the Policy.

Thus, for the above reasons, the Panel concludes that the registration and use of the disputed domain name was in bad faith.

The Complainant succeeds on the third element of the Policy in relation to the disputed domain name.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <jrrtoken.com> be transferred to the Complainant.

John Swinson
Sole Panelist
Date: September 24, 2021