LEGO Juris A/S v. Elizer Besnard
Claim Number: FA1201001423428
Complainant is LEGO Juris A/S (“Complainant”), represented by Cecilia Borgenstam of Melbourne IT Digital Brand Services AB, Sweden. Respondent is Elizer Besnard (“Respondent”), Mauritius.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <legoshop.us>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 9, 2012; the National Arbitration Forum received a hard copy of the Complaint on January 9, 2012.
On January 9, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <legoshop.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On January 18, 2012, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 5, 2012 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 10, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <legoshop.us> domain name is confusingly similar to Complainant’s LEGO mark.
2. Respondent does not have any rights or legitimate interests in the <legoshop.us> domain name.
3. Respondent registered or used the <legoshop.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, LEGO Juris A/S, is the owner of the LEGO mark. The mark is used by Complainant in connection with the sale of construction toys and related goods. Complainant has registered the LEGO mark with the Swedish Patent and Registration Office (“SPRO”) (Reg. No. 38,800 registered October 5, 1998). Complainant has also registered the LEGO mark with the United States Patent and Trademark and Patent Office (“USPTO”) (Reg. No. 1,018,875 registered August 26, 1975).
Respondent, Elizer Besnard, registered the <legoshop.us> domain name on November 15, 2011. The disputed domain name resolves to a website which displays links to third-party shopping sites competing with Complainant.
Paragraph 15(a) of the 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant asserts that it has rights in the LEGO mark. Complainant provides the Panel with evidence of its registration through the SPRO for the LEGO mark (Reg. No. 38,800 registered October 5, 1998). Additionally, Complainant provides the Panel with evidence of its USPTO registration for the LEGO mark (Reg. No. 1,018,875 registered August 26, 1975). Previous panels have held that the registration of a mark with a trademark authority, no matter the location of the parties, is sufficient to demonstrate rights in a mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the UDRP does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the LEGO mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <legoshop.us> domain name is confusingly similar to the disputed domain name. Respondent adds the generic term “shop” and the country-code top-level domain (“ccTLD”) “.us” to Complainant’s mark to make up the disputed domain name. The Panel finds that the addition of a generic term fails to negate a finding of confusing similarity. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names). The Panel also finds that the addition of a ccTLD is irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis. See Circuit City Stores, Inc. v. Leeds, FA 139662 (Nat. Arb. Forum Feb. 2, 2003) (finding the <circuitcitystores.us> domain name to be confusingly similar to the CIRCUIT CITY mark because the presence of a top-level domain like “.us” is “inconsequential to a Policy ¶ 4(a)(i) analysis”); see also Am. Express Co. v. McWIlliam, FA 268423 (Nat. Arb. Forum July 6, 2004) (holding that the “.us” ccTLD does not negate confusing similarity under Policy ¶ 4(a)(i)). Therefore, the Panel hold that Respondent’s addition of a generic term and a ccTLD fails to distinguish the <legoshop.us> domain name from the LEGO mark and that the <legoshop.us> domain name is confusingly similar to the LEGO mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is met.
The Panel find that Complainant has made a prima facie case in support of its allegations that Respondent lacks rights and legitimate interests in the <legoshop.us> domain name. Once a prima facie case has been made by a complainant, the burden shifts to the respondent to prove that it does have rights or legitimate interests. See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). The Panel will review the record to determine if Respondent has rights or legitimate interests in the disputed domain name according to the Policy ¶ 4(c) factors, but without the benefit of a Response from Respondent, the Panel may presume that Respondent does not have rights or legitimate interests in the disputed domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).
There is no evidence in the record which suggests that Respondent owns any service marks or trademarks that reflect the <legoshop.us> domain name. Therefore, the Panel finds that Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant contends that Respondent is not commonly known by the disputed domain name. Complainant claims that Respondent does not have any common law rights to use the LEGO mark or any variation of it and does not have a license or authorization from Complainant to use the mark. The WHOIS record for the <legoshop.us> domain name lists “Elizer Besnard” as the domain name registrant, which the Panel finds does not suggest that Respondent is commonly known by the disputed domain name. Panels have found that the WHOIS record and the Complainant’s contentions are often determinative of whether a respondent is commonly known by a disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under UDRP ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). Therefore, the Panel finds that Respondent lacks rights and legitimate interests under Policy ¶ 4(c)(iii) because Respondent is not commonly known by the <legoshop.us> domain name.
Complainant asserts that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The <legoshop.us> domain name resolves to a website which provides links to third-party Internet shopping websites that compete with Complainant by offering Complainant’s goods for sale. Panels have found previously that the display of competitive links on a disputed domain name that is confusingly similar is not a use which provides the respondent with rights or legitimate interests in the domain name. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to UDRP ¶ 4(c)(iii)); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to UDRP ¶ 4(c)(iii)). The Panel therefore finds that the use of the <legoshop.us> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(ii) and 4(c)(iv), and thus that Respondent lacks rights and legitimate interests in the disputed domain name.
Complainant argues that Respondent’s lack of rights and legitimate interests is evidenced by Respondent’s willingness to sell the disputed domain name. Complainant offered to reimburse Respondent for its registration costs, but Respondent countered that a sale at that price would force Respondent to incur a large economic loss. Panels have found that a willingness to sell a disputed domain name for an amount which is in excess of the respondent’s out-of-pocket costs is evidence of a lack of rights and legitimate interests. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under UDRP ¶ 4(a)(ii)). The Panel thus finds that Respondent’s willingness to sell the <legoshop.us> domain name for an amount beyond its registration and renewal costs demonstrates that Respondent does not have rights or legitimate interests in the <legoshop.us> domain name pursuant to Policy ¶ 4(a)(ii).
The Panel finds that Policy ¶ 4(a)(ii) is met.
Complainant argues that Respondent’s bad faith registration and use of the <legoshop.us> domain name is clear by Respondent’s willingness to sell the disputed domain name. Following Complainant’s offer to reimburse Respondent for its registration costs for the <legoshop.us> domain name, Respondent countered that selling the disputed domain name for an amount equal to its registration costs would be a big loss for Respondent. The panels in Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000), and Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), found that the willingness to sell a disputed domain name for an amount in excess of out-of-pocket costs demonstrates bad faith. Therefore the Panel finds that Respondent’s registration and use of the <legoshop.us> domain name was done in bad faith pursuant to Policy ¶ 4(b)(i).
Complainant argues that the <legoshop.us> domain name’s registration and use is a product of bad faith. Complainant contends that Respondent intended for the <legoshop.us> domain name to be disruptive to Complainant’s business. The disputed domain name resolves to a website which displays links to third parties who compete with Complainant by selling Complainant’s products. Panels have previously held that the display of links which are competitive is disruptive to Complainant’s business and demonstrates bad faith. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to UDRP ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iii).”). The Panel therefore finds that the <legoshop.us> domain name was registered and is being used in bad faith demonstrated by its disruptive nature under Policy ¶ 4(b)(iii).
Complainant next contends that the disputed domain name’s bad faith registration and use is clear because of Respondent’s intent to profit from the <legoshop.us> domain name. The <legoshop.us> domain name is confusingly similar to the LEGO mark. Therefore, Internet users may reach Respondent instead of Complainant and, seeing the LEGO logo and competitive material that is similar but not exact to Complainant’s offered goods, will become confused as to who is the source of the disputed domain name. Respondent contends that the sale of the disputed domain name without profit compensation would be a big loss, and thus the Panel finds that Respondent is profiting from the display of these competing links and the Internet users who click through them by mistaking the <legoshop.us> domain name as affiliated with Complainant. Therefore, the Panel finds that Respondent’s bad faith registration and use of the disputed domain name is demonstrated by Respondent’s intent to take commercial advantage of Internet users’ mistakes as to the source of the <legoshop.us> domain name pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under UDRP ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iv).”).
The Panel finds that Policy ¶ 4(a)(iii) is met.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <legoshop.us> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: February 22, 2012
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