WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kirkbi AG v. Micore Enterprises, Inc.
Case No. D2002-0327
1. The Parties
The Complainant in this administrative proceeding is Kirkbi AG ("Kirkbi"), a Swiss corporation doing business at Neuhofstrasse 21, Baar, Switzerland. The Respondent in this administrative proceeding is Micore Enterprises, Inc. ("Micore"). The address given for Micore is 18000 Studebaker Rd., Suite 700, Cerritos, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name is . The Registrar of the domain name is Network Solutions, 505 Huntmar Park Drive, Herndon, Virginia, United States of America.
3. Procedural History
This is a mandatory administrative proceeding submitted for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("the Rules"), and the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
By registering the subject domain name with the Registrar, the Respondent agreed to the resolution of disputes pursuant to the Policy and Rules.
The Complainant filed its Complaint with the Center, on April 5, 2002, by email and on April 10, 2002, by hardcopy. On April 18, 2002, having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center formally commenced this proceeding. On May 14, 2002, the Center issued a Notification of Respondent Default.
The Administrative Panel consisting of one member was appointed on June 7, 2002, by the Center.
An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.
4. Factual Background
The following information is derived from the Complainant�s material.
The Complainant is the owner of the trademarks LEGO and LEGO RACERS and all other trademarks used in connection with the LEGO brand of construction toys and other LEGO branded products. Its licensees are authorized to exploit the Complainant's intellectual property rights, including its trademark rights, in the United States and elsewhere.
The Complainant and its licensees (collectively known as "the LEGO Group of Companies" or "the LEGO Group"), through their predecessors, commenced use of the LEGO mark in the United States during 1961 to identify construction toys made and sold by them. Their use of the LEGO mark has been extensive, exclusive, and continuous since 1961. Over the years, the business of making and selling LEGO brand toys has grown remarkably. By way of example, sales in the United States alone of LEGO construction toys far exceed $1 billion over the last 10 years.
The trademark LEGO is among the best-known trademarks in the United States and around the world, due in part to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials. United States� media advertising expenditures by the LEGO Group during the past ten years exceed $50 million. Virtually all parents and children in the United States and likely throughout the world, are familiar with the LEGO name and mark and with LEGO products and services thereby identified.
The LEGO trademark and brand have been recognized as being famous. For instance, in the recent case of Interlego AG and Lego Systems, Inc. and Kirkbi AG v. Abrams/Gentile Entertainment, Inc. and MJJ Multimedia LLC, Opposition No. 103,612, decided on March 8, 2002, the Trademark Trial and Appeal Board of the United States Patent and Trademark Office found that "opposers� mark LEGO is one of the most famous toy marks in the United States."
The World�s Greatest Brands, published by MacMillan Business in 1996, states that LEGO is considered one of the most famous trademarks and brands in the world. Famous Brands, published by Markgraaf BV in 1985, also asserts that LEGO is considered one of the most famous trademarks and brands in the world.
The LEGO Group has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos, and computer controlled robotic construction sets.
The LEGO Group also maintains a Web site under the domain name .
The Complainant owns the following United States� federal trademark registrations, among others, for its LEGO marks:
Mark
Reg. No.
Date of
Registration
Goods
*LEGO
1,018,875
8/26/75
Toy building blocks and connecting links for the same sold separately and as kits for construction of toy houses, buildings, household furnishings, robots, doll figures and vehicular toys in class 28.
*LEGO and Design
1,026,871
12/9/75
Toy building blocks and connecting links for the same sold separately and as kits for construction of toy houses, buildings, household furnishings, robots, doll figures and vehicular toys in class 28.
*LEGO
1,535,046
4/18/89
Computers, computer peripherals, computer programs and plastic building units, sold as a unit for teaching principles of science, design, mathematics and engineering in class 9.
LEGO
2,189,528
9/15/98
Computer game software in class 9.
LEGO
2,065,901
5/27/97
On-line fan club services for users of construction toys rendered via a world-wide computer network in class 41.
LEGO
and design
2,060,284
5/13/97
For a wide range of goods, including, among other things, "educational computer programs used for teaching mathematics, science and technology and for use in the computer-assisted design of toy models and structures; computer accessories, namely, computer cables, interface boxes . . ." in class 9; "computer manuals for use of educational software" in class 16; "computer game software" in class 28; "theme park and amusement park services; entertainment services in the nature of providing facilities for playing computer games; conducting workshops for instruction in the use of computer software and educational toys in teaching . . ." in class 41.
*LEGO
1,563,848
10/31/89
Entertainment services; namely providing exhibitions of models of famous structures made of toy building elements, conducting model building contests and organizing clubs featuring the building of models; retail mail order services in the field of toy building sets in classes 41 and 42.
*LEGO
1,248,936
8/23/83
Series of books and number symbol and letter blocks for instructional use; storage cases, play tables with chairs attached, and including a storage box; storage bags made of cloth; t-shirts in classes 16, 20, 22 and 25.
*LEGO
1,248,938
4/23/83
Series of books and number symbol and letter blocks for instructional use; storage cases, play tables with chairs attached & including a storage box; storage bags made of cloth; t-shirts in classes 16, 20, 22 and 25.
*LEGOLAND
1,184,944
1/5/82
Toys-namely, building blocks and connecting links for the same, household furnishings, doll figures, robots, bushes, trees, signs, vehicular toys and related equipment, and kits for the construction of toy vehicles, houses, buildings and structures, in class 28.
LEGO FRIENDS
2,456,090
5/29/01
Computer games software, software for games and educational software for social development of children, particularly girls; recorded sound and image carriers in the form of CD-ROMs, discs, cassettes, tapes, all for entertaining, teaching and educating children, particularly girls in Class 9.
LEGO MANIA
2,343,077
4/18/00
Magazine for fans of construction toys in class 16.
LEGO CLASSIC
2,419,535
1/9/01
Construction toys; toy construction blocks and connecting links therefor; toy construction kits in class 28.
*LEGO IMAGINATION CENTER
1,828,605
3/29/94
Entertainment services; namely, providing exhibitions of models made of toy building elements in class 41; retail toy store services in Class 42.
LEGO TECHNIC
1,971,387
4/30/96
Construction toys in Class 28.
THE LEGO MANIAC
1,582,760
2/13/90
Construction toys in Class 28.
The registrations listed above are valid, subsisting, and in full effect. Those marked with an asterisk (*) are incontestible within the meaning of Section 33(b) of the Lanham Act, and constitute conclusive evidence of the validity of the registered marks, of the Complainant�s ownership of the marks, and of its exclusive right to use the registered marks in commerce on or in connection with the goods or services identified therein.
These marks were registered long prior to the Respondent�s registration of the subject domain name.
The Complainant also owns numerous registrations for its LEGO marks in more than 100 countries throughout the world, including, but not limited to, registrations in countries throughout Europe, South America, Asia, Africa, and Australia.
In addition, since 1999 the Complainant has used the mark LEGO RACERS for a computer game playable both on its website, , and by means of CD-ROMs marketed by the LEGO Group under that mark for use with personal computers. Since 2001 it also has used LEGO RACERS as a trademark for toy racing cars that the LEGO Group markets and for a LEGO RACERS board game. The Complainant owns the common law trademark rights in the mark LEGO RACERS for computer games, CD-ROMs, and toy racing cars. Information on the LEGO RACERS computer game is available on at, inter alia, www./software/racers/ and www./eng/racers/default.asp.
The Complainant has advertised and promoted its LEGO RACERS products throughout the United States and the world. For example, in the period 1999 to 2001, the LEGO Group spent in excess of $3 million U.S. dollars to promote and advertise its LEGO RACERS products. As a result of such advertising and promotion, sales of LEGO RACERS products have grown significantly. For the period 1999 - 2001 for example, sales of LEGO RACERS products were in excess of $28 million U.S. Dollars.
As a result of the Complainant�s efforts, its Marks have gained wide recognition and have become very well-known and were associated firmly with the Complainant prior to the Respondent�s registration of the subject domain name.
The Respondent registered the subject domain name on January 12, 2000.
The Respondent formerly used the subject domain name as a jump-page that took Internet users to a Web page within its former Web site at .
There is no relationship between the Complainant and the Respondent that would give rise to any license, permission, or authorization by which the Respondent could own or use the subject domain name.
The Respondent is not known commonly by the subject domain name. It is in the business of providing Web design and Internet marketing services.
The Respondent previously registered several other domain names containing trademarks belonging to third parties, including , , , and . It used the domain names and (and perhaps other domain names containing trademarks belonging to third parties) to bring additional Web traffic to its Web site. These Web sites advertised the Respondent�s services. In addition, when an Internet user clicked on the words "MICORE STUDIOS" on the site or the words "MICORE INTERNET" on the site, the Internet user was taken to the Respondent�s site, where the Respondent could derive additional commercial benefits from the increased traffic drawn to its site. The Respondent�s modus operandi has been to register domain names containing trademarks belonging to others and to use them to lure Internet users into visiting its site.
Currently, the Respondent is no longer using the subject domain name for a Web site.
On March 19, 2001, the Complainant�s attorney sent to the Respondent a letter demanding that the Respondent transfer the subject domain name to the Complainant. The Complainant�s attorney sent another copy of that letter to the Respondent on July 12, 2001. The Respondent did not reply.
The Respondent filed no material in this proceeding.
5. Parties� Contentions
A. Complainant
The Complainant relies on its registrations of the word "lego" and its common-law rights to the mark "legoracers". It says that the subject domain name is identical or confusingly similar because the addition of ".com" is inconsequential.
Noting the facts that the subject domain name was registered after the Complainant had established its name, mark and business, the lack of any connection between the Respondent and the Complainant or any authorization by the Complainant to use its mark, the Complainant says that the Respondent does not have a legitimate interest in the subject domain name.
Bad faith is said to be shown by some of the facts relied on to support the other ingredients of the Complainant�s case and by the course of conduct of the Respondent.
B. Respondent
The Respondent made no submission in this proceeding.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the domain name is identical or confusingly similar to a service mark in which the Complainant has rights;
(ii) the Respondent has no legitimate interest in respect of the domain name;
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:
(i) circumstances that indicate that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent�s documented out-of-pocket costs directly related to the domain name;
(ii) registration of the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;
(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the 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 the web site or location or of a product or service on it or a location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
The Complainant refers to a number of previous domain name dispute decisions. While these are neither controlling nor binding on this Administrative Panel, reference to them is often of assistance.
The resolution of this dispute takes place in the context of a consideration of the requirements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
Although the Complainant asserts that the subject domain name is identical or confusingly similar, the two concepts are not the same.
It is clear that the Complainant has rights to the words "lego" and "lego racers". The subject domain name differs from the latter only by the addition of .com. That is of no consequence. It is identical to the mark "lego racers".
The subject domain name is similar to the mark "lego". The addition of "racers" to the word "lego", which has considerable notoriety and identification with the the LEGO Group makes it confusingly so.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).
B. Respondents Legitimate Interest
The Respondent apparently used the subject domain name to attract customers to its Web site. In some circumstances this would support a conclusion that it has a legitimate interest in the subject domain name, but where a domain name is identical to the mark of another, it is per se legally offensive. In some cases, it is apparent that a respondent has a potential right to the use of a mark because it has ongoing activities that use the mark, which may distinguish its use and rights from those of a complainant. There is no such information in this case. On the information in this case, there is no basis for a legitimate interest.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).
C. Bad Faith
Findings that a Respondent does not have a legitimate interest in a domain name that is identical and confusingly similar to the mark of another, do not necessarily lead to a conclusion of bad faith, but the facts that lead to those findings may be relevant to the bad faith issue.
In this case, it is clear that the Complainant�s name and mark were well known and well established before the Respondent registered the subject domain name. It used the subject domain name not itself for commerce, but to attract customers to its own Web site. It has a history of undertaking such conduct.
These facts lead to an inference of bad faith. The Respondent had the opportunity to supplant that inference when the Complainant�s attorney twice wrote to it and by participating in this proceeding. It did neither.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).
7. Decision
Based on the information provided to it and on its findings, the Administrative Panel concludes that the Complainant has established its claim.
The Complainant asks that the subject domain name be transferred to it. The Administrative Panel so orders.
Edward C. Chiasson, Q.C.
Sole Panelist
Dated: June 20, 2002
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