Hobbits v. Hobbitts: Generic Mark Argument Won't Prevent Panel From Seeing Pay Per Click Parking as Bad Faith

Seemingly generic domain names can often turn into a trademark nightmare when used in combination with pay per click parking pages.  A recent proceeding in front of the World Intellectual Property Organization demonstrates that a registrant’s inability to control these pay per click parking ads can result in the loss of a domain name.  It is important to realize that these parking pages can be used against you as evidence of your bad faith intent to profit from the trademark of another.

In The Saul Zaentz Company d/b/a Tolkien Enterprises v. CheapYellowPages.com / Brian Wick (Case No. D2008-0021), Saul Zaentz went after CheapYellowPages for its use of a pay per click parking page on hobbitts.com.  Zaentz is the owner of the HOBBIT mark, also known as those vertically-challenged humanoids seen prancing across the mountains of Mordor to Mt. Doom.  CheapYellowPages registered its precious, hobitts.com, and threw up the standard pay per click parking page.  Saul Zaenta brought suit, and CheapYellowPages argued that hobbit was a generic term used for small persons or things or, alternatively, high order bits in software programming.  The panel didn’t buy the arguments, and instead found that CheapYellowPages chose the domain name to capitalize off of the famous HOBBIT mark.

The interesting component of this case arises out of an issue that we see often.  In deciding whether the Respondent registered in bad faith, the court looked to the use of a pay per click parking page.  CheapYellowPages’ pay per click parking page offered visitors “a wide variety of commercial products and services offered by third-party advertisers.”  The panel specifically noted that, even if they were to accept Respondent’s argument that hobbitts is generic, these ads “do not concern mythological creatures, small people, or high-order bits in software code.”  Thus, even though the ads were not directly trading off of the HOBBIT mark by generating links to third parties selling products in competition with Saul Zaentz, the panel still found bad faith registration.

Those utilizing parking pages should understand that the contextual ads generated by parking pages can and will be used against you in an arbitration proceeding under the UDRP or in a lawsuit under the Anticybersquatting Consumer Protection Act.  As we have said before, these ads often end up as Exhibit 1 in a UDRP proceeding as evidence of a bad faith intent to profit from the use of a registered mark, even if you believe that the mark is generic.  If you are faced with a threat of infringement under the UDRP or the ACPA, or if you believe that someone is infringing on your valuable mark through their use of a pay per click parking page, contact an attorney well versed in this area.

Comments

[Johnny]

Well, I see that domain owner as being in a tough position - even if he developed out website. If he makes a site and uses Google Adwords or some other network of ads he or she cannot monitor the site(s) every second and with the network's auto-optimizing system could put up an infringing ad for two hours even, for example, and cause a trademark infringment instance.

Basically, the only options are to sit on the domains and have a blank page or develop the site(s) and sell advertising yourself - and monitor very closely what goes up.

But, as we both know even the big news/media networks and every other company of any size use networks for ad backfill - it's standard practice.

There really needs to be a standard solution developed for lightning-fast resolutions of conflicts. It just is not fair to the domain owners, nor the trademark owners - so some kind of compromise on some medium between the two parties need to be agreed on.

[Imagine Parked Pages That Exluded Trademark Protected Ad Categories]

Isn't the real answer for Parking Companies and Google to allow us to exclude ad categories in trademark protected categories? If no ads for movies or hobbitts memorabilia, the parking page might have been proof of good faith, not bad. Of course, the registrant, parking company and Google would all make less money. The relevance of the parking page to the consumer is most relevant if they are truly searching for the trademark owner, typed it in wrong and the parked page is showing ads of companies relevant to the trademark they were searching for. Parking is dangerous business for good reason.