LEGO Juris A/S v. Carol Taylor
Claim Number: FA1006001329723
PARTIES
Complainant is LEGO Juris A/S,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <legosindianajones.us>,
registered with Melbourne IT Ltd.
PANEL
The undersigned 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.
James A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on June 14, 2010; the Forum received a hard copy
of the Complaint on June 16, 2010.
On June 14, 2010, Melbourne IT Ltd. confirmed by e-mail to the Forum that
the <legosindianajones.us> domain name is registered with Melbourne IT Ltd. and that Respondent
is the current registrant of the name.
Melbourne IT Ltd. has verified that Respondent is bound by the Melbourne
IT Ltd. registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with the U. S. Department of
Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 17, 2010, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of July 7, 2010 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 Forum transmitted to
the parties a Notification of Respondent Default.
On July 13, 2010, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed James A. Carmody, Esq.,
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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <legosindianajones.us> domain name is confusingly similar to Complainant’s LEGO mark.
2.
Respondent does not have any rights or
legitimate interests in the <legosindianajones.us> domain name.
3.
Respondent registered and used the <legosindianajones.us>
domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, LEGO Juris A/S, manufactures and
sells construction toys, computer hardware and software, books, videos, and
computer controlled robotic construction sets.
Complainant owns a trademark registration for the LEGO mark with the
United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,018,875 issued
August 26, 1975).
Respondent, Carol Taylor, registered the <legosindianajones.us> domain name on
December 16, 2009. The disputed domain
name resolves to an online store selling not only Complainant’s products but
also competing products, such as Hello Kitty.
DISCUSSION
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 the Complainant's undisputed representations
pursuant to Paragraphs 5(f), 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 the 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 the
Respondent is identical or confusingly similar 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.
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.
Identical
and/or Confusingly Similar
Complainant owns a trademark registration for
the LEGO mark with the USPTO (Reg. No. 1,018,875 issued August 26, 1975). The Panel finds that a trademark registered
with the USPTO conclusively establishes Complainant’s rights in the LEGO according
to Policy ¶ 4(a)(i).
See Lockheed
Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the
complainant had sufficiently established rights in the SKUNK WORKS mark through
its registration of the mark with the USPTO); see also SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his
trademark registration [with the USPTO] establishes Complainant’s rights in the
mark pursuant to UDRP ¶ 4(a)(i).”).
Complainant alleges that Respondent’s <legosindianajones.us> domain name is confusingly similar to Complainant’s mark because the disputed domain attempts to modify Complainant’s LEGO mark only by adding the letter “s,” the trademarked phrase “Indiana Jones” without the separating space, and the country code top-level domain (“ccTLD”) “.us.” The Panel finds that adding an “s” to Complainant’s mark fails to distinguish the disputed domain name under Policy ¶ 4(a)(i). See Keystone Publ’g., Inc. v. UtahBrides.com, D2004-0725 (WIPO Nov. 17, 2004) (finding that the <utahwedding.com> domain name was confusingly similar to the complainant’s UTAHWEDDINGS.COM mark because the domain name simply lacked the letter “s”); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under UDRP ¶ 4(a)(i)). The Panel finds that including another third-party trademark in the disputed domain name does not diminish confusing similarity. See G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (holding the domain name to be confusingly similar where <e-viagra-xenical-celebrex-propecia.com> merely includes the addition of related industry-specific words, namely, the marks of the complainant’s competitors); see also G.D. Searle & Co. v. Paramount Mktg., FA 118307 (Nat. Arb. Forum Sept. 27, 2002) (holding that the addition of other well-known pharmaceutical drug brand names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the capacity of the disputed domain name to confuse Internet users, but actually “adds to the potential to confuse”). The Panel also finds that adding the ccTLD “.us” fails to create a meaningful distinction between the disputed domain name and Complainant’s mark. See UGG Holdings, Inc. and Deckers Outdoor Corp. v. Barclay, FA 216873 (Nat. Arb. Forum Feb. 5, 2004) (“The Panel finds that the addition of the ccTLD ‘.us’ fails to significantly distinguish the domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Crocs, Inc. v. [Registrant], FA 1043196 (Nat. Arb. Forum Sept. 2, 2007) (stating that the “addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”). Thus, the Panel finds that Respondent’s <legosindianajones.us> domain name is confusingly similar to Complainant’s LEGO mark pursuant to Policy ¶ 4(a)(i).
The Panel finds
Policy ¶ 4(a)(i) has been satisfied.
Rights
or Legitimate Interests
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <legosindianajones.us> domain name. The burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) when the Complainant makes a prima facie case in support of its allegations. The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights and legitimate interests in the disputed domain name. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”); see also 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 [UDRP].”).
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <legosindianajones.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 has no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Respondent has offered no evidence, and there is none in the record, suggesting that Respondent is commonly known by the <legosindianajones.us> domain name. The WHOIS information identifies Respondent as “Carol Taylor.” Complainant asserts that Respondent is not licensed or authorized to use Complainant’s LEGO mark. Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the <legosindianajones.us> domain name pursuant to Policy ¶ 4(c)(iii). 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent is using the <legosindianajones.us> domain name to redirect users to an online store selling Complainant’s products and other competing toy products. The Panel finds that Respondent’s use of Complainant’s mark in the disputed domain name to offer products in competition with Complainant, along with Complainant’s own products, is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use).
The Panel finds
Policy ¶ 4(a)(ii) has been satisfied.
Registration
and Use in Bad Faith
Complainant alleges that Respondent’s <legosindianajones.us> domain name redirects
to an online selling toys manufactured by various trademark holders, including
Complainant. As the disputed domain name
is therefore being used to promote and sell competitors’ products, side by side
with Complainant, the Panel finds that Respondent’s disputed domain name
disrupts Complainant’s business and evidences bad faith registration and use
under Policy ¶ 4(b)(iii). See David Hall Rare
Coins v.
Complainant argues that Respondent intentionally included Complainant’s LEGO mark in the <legosindianajones.us> domain name in order to take advantage of the fame and popularity of Complainant’s mark and attract Internet users seeking Complainant’s products to Respondent’s commercial website. Complainant contends that the presence of its LEGO mark in the disputed domain name and on the resolving website misleads and confuses Internet users, likely preventing them from realizing that Respondent’s website is not sponsored by Complainant. The Panel finds that Respondent’s activities in attracting and misleading Complainant’s intending customers for Respondent’s own profit is in violation of Policy ¶ 4(b)(iv) and shows bad faith registration and use. See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to UDRP ¶ 4(b)(iv).”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under UDRP ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
The Panel finds
Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <legosindianajones.us> domain name be TRANSFERRED from Respondent to Complainant.
James A Carmody, Esq., Panelist
Dated: July 15, 2010
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