• Rosie Burbidge

How Tolkein's estate reclaimed a copycat crypto domain name



The estate of JRR Tolkien has won a UDRP action against the registrant of the domain name jrrtoken.com, which has been used for a website relating to cryptocurrency.


Tolkien, the author of books including The Hobbit and The Lord of The Rings trilogy, died in 1973. The Tolkien Estate owns trade marks for JRR Tolkien, including in the UK and US.


It brought the UDRP complaint against Matthew Jensen, who registered the domain name on 26 February 2021. The website at the disputed domain included references to Tolkien’s books, such as images of wizards, rings and Hobbit holes and the phrase “The One Token That Rules Them All”.


The three elements

The decision, by WIPO panellist John Swinson, concluded that the domain name should be transferred as all three elements of paragraph 4(a) of the UDRP Policy had been satisfied (Case No D2021-2571).


First, the panellist found the domain name was confusingly similar to the trade mark: “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.” This finding was reinforced by the respondent’s parody argument, and the fact that the website resolved to a website containing references to Tolkien’s work.


Second, the respondent had no rights or legitimate interests in the disputed domain name: the domain name was selected solely to create a false association with or to evoke the complainant; and the use of the domain name was misleading and sought to create a false impression of association or endorsement.


Third, the registration and use of the domain name was in bad faith: “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.”


The decision, which has prompted coverage in the general media (e.g. The Guardian), shows the value of having registered trade marks to protect the rights of authors and fictional characters. It is also a reminder to domain name registrants that alluding to a famous trade mark while denying similarity is a challenging and best avoided.


To find out more about the issues raised in this case contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com


#trademark #trademarklaw #domain