The Saul Zaentz Company v. Gandalf S.r.l.

Claim Number: FA0112000103063



The Complainant is Michael Rankin and The Saul Zaentz Company, Berkeley, CA, USA (“Complainant”) represented by Annette  L Hurst, of Howard Rice Nemerovski Canady Falk & Rabkin.  The Respondent is Giancarlo  Livraghi Gandalf S.r.l., Milano, ITALY (“Respondent”) Andrea  Monti, of Studio Legale Monti.



The domain name at issue is <>, registered with Dotster.



The undersigned Daniel B. Banks, Jr., certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.



Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel.  As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).


Complainant submitted a Complaint to the Forum electronically on December 14, 2001; the Forum received a hard copy of the Complaint on December 19, 2001.


On December 21, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 10, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).


A timely Response was received and determined to be complete on January 10, 2002.


Complainant's additional submissions were received late on January 16, 2002.  Respondent's additional submissions were received on January 16, 2002.


On February 11, 2002, pursuant to STOP Rule 6(b), the Forum appointed Daniel B. Banks, Jr., as the single Panelist.



The Complainant requests that the domain name be transferred from the Respondent to the Complainant.



A.     Complainant:

In 1976, Complainant acquired exclusive film, stage and merchandising rights to the literary works of the late Professor J.R.R. Tolkien who created a book entitled The Hobbit and a trilogy known as The Lord of the Rings, comprising three volumes: The Fellowship of the Ring, The Two Towers, and The Return of the King (the "Tolkien Works").  Since acquiring these rights, Complainant has licensed its Tolkien-related intellectual property rights to third parties for use as trademarks and service marks in connection with various lines of merchandise.  Among the portfolio of trademarks is the registered trademark GANDALF which is the name of one of the main characters in the Tolkien Works.  For many, Gandalf is the character of greatest interest.  He is a mysterious wizard who plays a central role in the The Hobbit and The Lord of the Rings.  His image frequently adorns the covers of Tolkien's books and the merchandise associated with them.  Gandalf has become one of the most popular and enduring entertainment properties in the world. 


In 1998, Complainant licensed New Line Cinema to film the trilogy and for two years, it was filmed on location in New Zealand.  The first of three films has been premiered in London, England to rave reviews and is scheduled to be released in the United States on December 19, 2001.  Numerous licenses have been awarded in respect to merchandise based on the film and on the literary works.  Tolkien Enterprises sought to register the domain name <> through Network Solutions and submitted an IP claim along with its registration request.


Respondent is an Italian company that provides equipment rental and leasing services, apparently for local boats, based in Milan.  According to D&B European Business Information Report, Respondent has no employees and apparently had substantially less than $50,000 in revenue in 1999.  The president and one of the principal owners of Respondent owns a yacht named “Gandalf” and operates a personal web site in which he admits he took the name for his boat from the Tolkien Works.  Complainant has been unable to locate any commercial web site owned or operated by Complainant. 


By registration of the disputed domain name, Respondent is seeking to capitalize on the increased worldwide popularity of the Gandalf character.  The purpose for doing this is unquestionably for commercial gain.  Under .biz registration restrictions, a .biz registered domain name can only be used for a "bona fide business or commercial use".  The intended use of the name Gandalf to do business over the World Wide Web at the <> site can only be understood as a deliberate attempt to exploit Complainant's tremendous goodwill in this famous mark.  The registration of <> falls squarely under the definition of "bad faith" provided by Rule 4(b)(iv):  Respondent has "intentionally attempted to attract, for commercial gain, Internet users to Respondent's web site or other on-line location by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site or location or of a product or service on Respondent's web site or location."


B.     Respondent:

Respondent Gandalf S.r.l. Corso Italia ("Gandalf") is an Italian based company established in 1987.  Giancarlo Livraghi is its CEO and majority shareholder.  He is an internationally acknowledged expert in advertising, marketing and business communication.  He is also a writer and columnist for several business magazines.


Since 1987, Gandalf has been operating with this business name and since 1998, has operated on the Internet with the domains <> and <>.  Gandalf provides high-level counseling services in the field of management and communication, both off and online.  Complainant's statement that Respondent is a sail chartering company is incorrect.  That activity was discontinued in 1993 and has since been concentrating on its main mission of business strategy consulting. 


There are several other "Gandalf" names on the net.  Some of those are <>; <>; <>; <>; <>; <>; <>; <>; <>; <>; <>; <>; and several others.  None of these domains, to the best of Respondent's knowledge, have ever been challenged by the Complainant or anyone else. 


The Respondent has full rights to the use of its name in its field of activity that is not competitive to the area in which Tolkien Enterprises operates.  There are countless companies worldwide whose names are inspired by characters in books.  And several specifically called Gandalf.  None of these companies are prevented from operating under their chosen names or using them as Internet domains in the .com or other top-level domain categories.  The Gandalf Company is a business and provides service to business.  It was not able to register the <> domain because it was already owned by another company that was originally a U.S. software house that now seems to have switched to other activities.


Under Italian law, Respondent is fully protected in the use of its business name as one of several means of distinction together with the trademark, whether registered or not.  Also, Respondent has filed an application with the Italian Patent Office for the trademark "" in categories 35 (advertising), 38 (telecommunication), and 42 (consulting and company management).  That application is still pending and the term for claims on that trademark has expired.


Respondent registered the domain in good faith in that it is identical to the company's business name that has existed for more than 15 years.  No one has ever challenged the ownership of the <> domain.  Gandalf's business activity is totally different from the Complainant's.  Respondent has never tried to sell the domain or use it in such a way that could confuse people or customers.  The domain was registered in full compliance with the .biz assigning procedure.


The Complainant is engaging in "reverse domain hijacking", trying to force the Respondent to surrender its rights to that domain.  Although Complainant makes statements about the Respondent's will being to illegally get advantage by the registration of the <> domain, there is no evidence to support such a claim.  Respondent has not yet used the <> domain as a website however, there is no rule that it must be used as a website.  It can be used as an email address. 


C. Additional Submissions

There was an additional Submission by the Complainant that was received after the deadline for submissions.  That additional Submission was not considered.  The Respondent also filed an Additional Submission to Complainant's additional Submission.  Because Complainant's additional Submission was late and not in compliance with Supp. Rule 7(a), the Respondent's additional submission is not considered in compliance with Supp. Rule 7(a) and was not considered.



1 - The disputed domain name is identical to Complainant's registered trademark.

2 - Respondent has no rights or legitimate interest in respect to the domain name.

3 - The domain name was registered in bad faith.



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


Paragraph 4(a) of the STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:


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

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

(3) the domain name has been registered or is being used in bad faith.


Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.


Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form.  Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights.  The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.


Complainant’s Rights in the Mark

Complainant contends that it has rights in the GANDALF name due to its registration of the GANDALF mark on the Principal Register of the United States Patent and Trademark Office on September 4, 2001 (Reg. No. 2,484,069).  The Panel finds that <> is identical to Complainant’s registered GANDALF mark because it incorporates Complainant’s name in its entirety and the addition of a top level like “.biz” does not sufficiently distinguish the domain name from the trademark.  See Little Six, Inc., v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <> is plainly identical to Complainant’s MYSTIC LAKE trademark and service mark).


Rights or Legitimate Interests

Complainant contends that Respondent has provided insufficient evidence to support a claim that Respondent has a service or trade mark in the GANDALF name or the identical disputed domain.  Without sufficient evidence of a trademark, Respondent does not have rights or legitimate interests in <> pursuant to STOP Policy ¶ 4(c)(i). See Pelephone Communications Ltd. v. Weisberg, FA 102792 (Nat. Arb. Forum Jan. 8, 2002) (finding that because Respondent has not come forward to offer evidence that it used the PELEPHONE mark in commerce or owns any trademarks or service marks incorporating the word PELEPHONE, Respondent has not demonstrated any rights or legitimate interests in the <> domain name pursuant to STOP Policy ¶ 4(c)(i)).

Because Complainant owns rights to the GANDALF name, and because that name is so well-known due to the commercial success of the Lord of the Rings movie and literary trilogy, the use of this name is certain to attract visitors to Respondent’s site.  The Panel finds that Respondent has no rights or legitimate interests in the disputed domain pursuant to STOP Policy ¶ 4(c)(ii) because it registered the domain in order to attract customers through use of Complainant’s registered mark.   See Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (inferring that Respondent registered the domain name <>, which incorporates Complainant’s HOUSEHOLD BANK mark, with hopes of attracting Complainant’s customers and thus finding no rights or legitimate interests).

Although Respondent claims to own a consulting business, Respondent indicates it is uncertain as to whether it will use the disputed domain name for its business or some other purpose.  A lack of preparation or knowledge on the part of Respondent about whether it will use the domain name in connection with business indicates Respondent has no rights or legitimate interests.  See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the Respondent is not commonly known by the domain name).

 Complainant contends that even though Respondent owns a yacht by the name of “Gandalf”, alleges to run a business called Gandalf S.R.L., and owns a <> website for its personal musings, none of these things support a finding that Respondent is commonly known by the GANDALF mark pursuant to STOP Policy ¶ 4(c)(iii).  Moreover, the Panel finds that  Respondent has not presented evidence that it is commonly known by the disputed domain name, and therefore, has no rights or legitimate interests pursuant to STOP Policy ¶ 4(c)(iii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark).


Registration or Use in Bad Faith

Complainant contends that the fame of the GANDALF mark, due to the popularity of the character from Tolkien’s books and the recent adaptation of the Lord of the Rings book to a much-anticipated major motion picture, suggests Respondent’s registration of <> is motivated by an attempt to attract Internet users confused into believing the site is affiliated with the GANDALF character that Complainant has rights to. This behavior is determined to be bad faith pursuant to STOP Policy ¶ 4 (b)(iv).  See State Fair of Texas v., FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the Respondent registered the domain name <> to infringe on the Complainant’s good will and attract Internet users to the Respondent’s website); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).


Complainant also contends and the Panel finds that, because Respondent’s use of the disputed domain name is still uncertain, Respondent cannot be certain that there will be no consumer confusion as to Respondent’s website and Complainant’s services.


            Reverse Domain Name Hijacking

The Panel finds that Complainant's ownership of the GANDALF registered trademark in the United States and several other countries is evidence that it did not bring a frivolous claim and was acting in good faith to protect its registered mark.           



The Panel finds that the domain name <> is to be transferred to Complainant and that subsequent challenges under the STOP policy against this domain name shall not be permitted.  



Daniel B. Banks, Jr., Panelist


Dated: February 19, 2002



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