WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kirkbi AG v. Company Require / Karlina Konggidinata and P, Inc.
Case No. D2004-0359
1. The Parties
The Complainant is Kirkbi AG, Baar, Switzerland, represented by Cantor Colburn LLP, United States of America.
The Respondents are Company Require / Karlina Konggidinata, San Francisco, California, United States of America, and P, Inc., Nepean, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name is registered with Transecute (I) Pvt Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May�13,�2004. On May�14,�2004, the Center transmitted by email to the Registrar indicated in the Complaint, Direct Information Pvt Ltd., a request for registrar verification in connection with the domain name at issue, followed by two reminders on May 19 and May�24,�2004. On May�27,�2004, Transecute (I) Pvt Ltd, which already appeared in the Complaint as “sister concern” of the Registrar, transmitted by email to the Center its verification response, stating that the registrant of the disputed domain name was not P, Inc., as identified in the Complaint, but Company Require / Karlina Konggidinata, and providing the contact details for the administrative, billing, and technical contact of the latter. Thus, on May�27,�2004, the Center notified the Complainant of the above deficiencies regarding the Registrar and the Respondent. On May�28,�2004, Company Require / Karlina Konggidinata, notified of the Complaint deficiency, replied that the disputed domain name had been illegally transferred to their account by P, Inc. and that they did not order nor paid for it. In response to the notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June�1,�2004, reserving the right to reflect also the former registrant, namely P, Inc., as Respondent, and noting that the disputed domain name had been transferred in violation of paragraph 8(a) of the Uniform Domain Name Dispute Resolution Policy not only once, from P, Inc. to Company Require / Karlina Konggidinata, but even a second time, as resulted from a Whois search conducted on June�1,�2004 , from Company Require / Karlina Konggidinata to Flora Marlina. The Complainant therefore requested invalidation of all transfers of the disputed domain name from P, Inc. and, in alternative, invalidation of the most recent transfer to Flora Marlina. Since the change of registrant from P, Inc. to Company Require / Karlina Konggidinata seems to have occurred between the filing of the Complaint and the formal commencement of the proceeding, the Center requested the Registrar to reverse the domain name registration to reflect as registrant Company Require / Karlina Konggidinata and therefore cancel the second transfer to Flora Marlina. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June�3,�2004. In accordance with the Rules, paragraph 5(a), the due date for Response was June�23,�2004. The Response was filed with the Center on June�23,�2004.
The Center appointed Edoardo Fano as the sole panelist in this matter on June�29,�2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The language of the proceeding is English, being the language of the Registration Agreement.
4. Factual Background
The Complainant is Kirkbi AG, the owner of many registrations in the U.S., Canada and in more than 100 countries around the world for the LEGO trademark, among which:
• U.S. registration for LEGO No. 1,018,875;
• U.S. registration for “LEGO and Design” No. 1,026,871;
• U.S. registration for LEGO No. 1,535,046;
• U.S. registration for LEGO No. 2,189,528;
• U.S. registration for LEGO No. 2,065,901;
• U.S. registration for “LEGO and Design” No. 2,060,284;
• Canadian registration for LEGO No. TMA106457;
• Canadian registration for LEGOLAND No. TMA185262;
• Canadian registration for LEGOVILLE No. TMA267689;
• Canadian registration for LEGO No. TMA275461;
• Canadian registration for “LEGO and Design” No. TMA210501
The Complainant and its licensees (collectively “the LEGO Group of Companies” or “the LEGO Group”), through their predecessors, commenced use of the LEGO mark in the U.S. during 1953 to identify construction toys made and sold by them.
The use of the LEGO trademark has been extensive, exclusive and continuous in the United States since 1953. The LEGO Group adopted and began using the mark in Canada in 1954, where the use has been extensive, exclusive and continuous since that time.
Over the years, the business of making and selling LEGO brand toys has grown remarkably and sales in the United States alone of LEGO construction toys far exceeds US$1 billion over the last 10 years, while sales last year in Canada alone exceeded US$30 million.
The trademark LEGO is among the best-known trademarks in North America 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.
U.S. media advertising expenditures by the LEGO Group during the past ten years exceed US$50 million, while in Canada advertising figures for the past ten years approach US$15 million.
The LEGO trademark and brand has been recognized as being 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 Website under the domain name .
The Respondent’s domain name was registered on May�11,�2004.
The first Respondent’s only use of the domain name, according to the Complainant, has been to sell it to third parties in an auction setting.
The current use of the disputed domain name by the second Respondent is as URL of a Javanese Forum Portal.
5. Parties’ Contentions
A. Complainant
The Complaint was originally filed by the Complainant against the first Respondent, namely P, Inc., to which the Complainant added a Request for Entry of a Further Statement by the Complainant requesting that the second Respondent’s email communication dated May�28,�2004, be made part of the Case File.
The disputed domain name is identical or confusingly similar to Complainant’s Marks.
The dominant and distinctive feature of the disputed domain name is Complainant's famous trademark LEGO. The mere addition of the letter “s” does nothing to detract from the instant identification that an Internet user will have with Complainant as a result of the inclusion of the LEGO mark (see Advanced Comfort, Inc. v. Frank Grillo, WIPO Case No. D2002-0762, “where the only difference between the Complainant's mark and the domain name in dispute is the letter 's', there is no question that the Domain Name is confusingly similar to the Complainant's registered mark”, and Kirkbi AG v. Michele Dinoia, WIPO Case No. D2003-0038, where the disputed domain name was considered as confusingly similar to the LEGO trademark).
It is axiomatic that the TLD “.com” does not serve any trademark purposes as it has no source identification.
The Respondent can demonstrate no legitimate interests in the disputed domain name.
There exists 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 disputed domain name, which is identical or confusingly similar to Complainant’s Marks.
The Respondent is not commonly known by the disputed domain name and is not making legitimate non-commercial or fair use of the disputed domain name.
The Respondent's only purpose in registering the disputed domain name was to trade upon the fame of the Complainant's Marks by selling the disputed domain name to the highest bidder for commercial gain.
The Respondent registered the disputed domain name after the Complainant had established rights in the LEGO marks through extensive use, and the Respondent's only use since registration has been to attempt to sell the disputed domain name to third parties in an auction setting (see Fiber-Shield Industries, Inc. v. Fiber Shield LTD, NAF 1000092054, where, as in the present case, the Complainant’s Marks are so well-known and recognized, there can be no legitimate use by the Respondent, and Guerlain S.A. v. PeiKang, WIPO Case No. D2000-0055, Veuve Clicquot Ponsardin v. The Polygenix Group Co., WIPO Case No. D2000-0163, where bad faith is found when a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).
The evidence is clear that the day the Respondent registered the disputed domain name, it did so only for purposes of selling it. This offer for sale is indisputable evidence that the Respondent registered and is using the disputed domain name in bad faith.
In a telephone conference on May�13,�2004, the Respondent, through its customer service agent, admitted that the disputed domain name was owned by the Respondent, and was to be auctioned to the highest bidder in a closed auction, with the auction itself to close May�14,�2004.
The sale of a domain name via auction is routinely held to be illustrative of “bad faith use” by a registrant (see DaimlerChrysler Corporation v. Brad Bargman, WIPO Case No. D2000-0222; Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362; Wal-Mart Stores, Inc. v. Kenneth E. Crews, WIPO Case No. D2000-0580; Jon-Don Products, Inc. v. Marion Johnson, NAF FA0007000095165).
The nature of an auction makes it clear that the Respondent has registered the disputed domain name solely for the purpose of extracting the highest sum of money for it.
Consequently, the Complainant submits that bad faith use of the disputed domain name is quite clear in this case.
Given the fame of the Complainant’s Marks, it is not possible to conceive a use by the Respondent of the disputed domain name that would not constitute an infringement of Complainant’s rights in Complainant’s Marks.
Moreover, these activities demonstrate bad faith registration and use of the disputed domain name in violation of the Policy under paragraph 4(b)(i) which promulgates that bad faith can be found where there is evidence of “circumstances indicating that [Respondent has] registered or [Respondent 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 [Respondent's] documented out-of-pocket costs directly related to the domain name.”
The facts provided above make it clear that the Respondent was and is using the goodwill and fame of the Complainant’s Marks for his own substantial commercial profit and thus in bad faith.
As regards the second Respondent, namely Company Require / Karlina Konggidinata, the Complainant filed a Request for Entry of a Further Statement by the Complainant requesting that the second Respondent’s email communication dated May�28,�2004, (in which Company Require / Karlina Konggidinata declared that the disputed domain name had been illegally transferred to their account by P, Inc. and that they did not order nor paid for it) be made part of the Case File.
B. Respondent
The Response to the Complaint was filed by the second Respondent, namely Company Require / Karlina Konggidinata
According to the Response, in or about May 2004, the Respondent registered the disputed domain name that was bought through Transecute registrar.
The Respondent registered the domain name at issue for her company which is located in Java, Indonesia, and is owned by a Javanese person, who speaks and writes in Javanese language.
The word “lego” is a word in Javanese language, therefore the Complainant cannot trademark the word “lego” in Indonesia.
Javanese is the spoken language in central and eastern part of island of Java, in Indonesia. According to Ethnologue, it is spoken by approximately 75,500,000 people.
The Javanese language is part of the Malayo-Polynesian (or Austronesian) family of languages, and is therefore related to Bahasa Indonesia and Malay. Many speakers of Javanese also speak Bahasa Indonesia, which they use primarily for official and business purposes.
Javanese is also spoken in Suriname and New Caledonia.
The word “lego” in Javanese has many different meanings:
“bimbang” in Indonesian = “vacillate in English”,
“enggan” in Indonesian = “reluctant in English”,
“lega” in Indonesian = “relief” in English,
“lapang” in Indonesian = “big/open room” in English
Javanese language has been used in Java from the 9th century, that is long before the Complainant’s use of its trademark in 1953.
The owner of the domain name is from the island of Java island in Indonesia and has a head office and place of residence in Java. When you speak Javanese to Javanese people and say “lego” in a sentence, their understanding is that “lego” means relief, big/open room, vacillate, and reluctant. Approximately 80 to 100 million people in Indonesia speak Javanese and use the “lego” word in daily conversation.
Since is going to be used as Javanese forum portal, there is no confusion about the website with the Complainant’s mark.
Thus, the owner as a Javanese speaking person and a Java company reserves the right to use since it comes from a word in Javanese language.
The word “lego” can not be trademarked in Indonesia where the office and residence of the owner of are located.
The Respondent plans to build a Javanese language forum portal moderated by volunteers. The Respondent has spent hours and money to build the website.
The name L which means “relief” will be used for Javanese speaking people forum for many useful topics. This forum site will be a non-profit forum.
The Respondent’s forum service is not similar to the product offered by the Complainant.
The Respondent Has Acted in Good Faith.
The Respondent acquired the domain name exclusively for her own use. It was not obtained primarily to sell, rent, or otherwise transfer the domain name. The Respondent never tried to sell the domain name to the Complainant.
The Respondent has and will never offer the domain name for sale to any person or company.
The Respondent did not register the domain name in order to prevent the Complainant from registering it, and it was not registered to disrupt the Complainant’s business.
There are other LEGOS domain names that are available or for sale so the Complainant actually can buy other TLD.
The Complainant never advertised or promoted its product as LEGOS.
When people go to the website, they know instantly that it is not the Complainant’s website. There is nothing in the website that suggests that it has any affiliation with the Complainant. Since the website will be used as a non-profit portal forum for Javanese-speaking people and the language will be in Javanese and Indonesian language, it will be clear that the website is not a Complainant’s site.
The domain name was not registered by the Respondent in an intentional attempt to attract for commercial gain, Internet users to the Respondent’s website 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 Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Respondent respectfully requests that the Administrative Panel make a finding of reverse domain-name hijacking of by the Complainant.
6. Discussion and Findings
Procedural issues
In British Broadcasting Corporation v. Data Art Corporation / Stoneybrook (WIPO Case No. D2000-0683), the Panel decided that a change in registrant of a disputed domain name after notice to the Respondent of the Complaint but before formal commencement did not affect the proceedings:
“The [Registrar] Service Agreement binds the respondent to the provisions of the Policy. In particular, under section 8(a) of the Policy, the domain name holder is bound not to transfer the domain name registration to another holder during a pending administrative proceeding. (…)
To interpret section 8(a) of the Policy in such a way as to permit transfers of registration after notice of the complaint to the respondent but before official commencement of the proceedings by way of notification from the provider would not do justice to complainants who have initiated complaints in accordance with the Policy and the Rules. Moreover such an interpretation would appear to permit, if not encourage the phenomenon cyberflying, where a registrant of a domain name, when named as the respondent in a domain name dispute case, systematically transfers the domain name to a different registrant to disrupt the proceeding.”
The Panel is conscious of the potential for prejudice to a Complainant if a transfer to a new registrant occurring after the filing of a Complaint is not cancelled under paragraph 8(a) of the Policy and condems the so-called “cyberflying” conduct by means of which a quick-witted Respondent might seek to escape the jurisdiction of the Panel by trasferring the disputed domain name to a new holder (or to a new registrar) after receipt of the copy of the Complaint but before the formal commencement of the proceeding.
However, in the present case the Panel, after having reviewed the case and the position of both the first and the second Respondent in connection with the disputed domain name, deems that the Complainant will suffer no prejudice as a consequence of the transfer to the second Respondent and therefore did not request the Center to seek cancellation of the change in registrant and did admit the Response of the second Respondent, even though, in accordance with several WIPO decisions, the relevant registration must be that shown as at the date of filing of the Complaint and subsequent transfers of disputed domain names or transfers of registrant’s business should be ignored.
Paragraph 4(a) of the Policy lists three elements which a Complainant must satisfy in order to succeed:
i. the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
ii. the Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
As far as the first of these elements is concerned, the Panel finds that the Complainant is the owner of the trademark LEGO both by registration and acquired reputation.
The disputed domain name is confusingly similar to the trademark LEGO, the mere inclusion of an additional letter, in the present case the letter “s”, is not a distinctive feature and the Complainant’s trademark is entirely contained in the disputed domain name (apart from the precedent indicated in the Complaint, see also Compass Bancshares, Inc., Compass Bank v. BV, WIPO Case No. D2003-0387; Deutsche Telekom AG v. Vision Computer S.L., WIPO Case No. D2001-1240; Advance Magazine Publishers, Inc. v. Svanity Group, WIPO Case No. D2003-1020; Easy Heat, Inc. v. Shelter Products, WIPO Case No. D2001-0344; Wal-Mart Stores, Inc. v. G.W. and Mm Mmmm, WIPO Case No. D2001-0277; A, Inc. v. Oluseyi Ikhizamah, WIPO Case No. D2002-1168).
The Complainant has therefore met its burden of proving that the domain name at issue is confusingly similar to Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant asserts that there exists no relationship between the Complainant and the Respondent (namely the first Respondent) that would give rise to any license, permission, or authorization by which the Respondent could own or use the disputed domain name.
This is enough to shift the burden of proof to the Respondent to demonstrate that such a right or legitimate interest exists.
As far as the first Respondent is concerned, its activity consists of trying to find a buyer for the disputed domain name by offering it for sale on an auction. Such activity is not and has not been directed to the use of the domain name for the bona fide offering of goods and services, other than the domain name itself.
Moreover, there is no evidence that the first Respondent has been commonly known by the domain name itself, nor is there any evidence that the Respondent is making a legitimate, non-commercial or fair use of the domain name (see EMI Plc v. Jason Mace, WIPO Case No. D2000-0712; Caterpillar, Inc. v. Roam the Planet, Ltd, WIPO Case No. D2000-0275)
As far as the second Respondent is concerned, it has provided information that “lego” is a common word in Javanese, meaning “relief, big/open room, vacillate, and reluctant” and without providing any proof asserts that the website “www.” will be a non-profit Javanese Forum Portal, as it appears to be right now.
According to the second Respondent’s opinion, since the word “lego” has a meaning in the Javanese language, the Complainant would be prevented from using its trademark LEGO in Java.
The Panel rejects the allegations found in the Response filed on this issue.
The fact that a trademark corresponds to an existing word in a given language does not prevent that trademark from being a valid trademark, unless it is used in a country where that language is spoken and it exactly applies to the products and/or services indicated by the word in question, although even in this latter case an extensive use of the trademark at issue could lead to the so-called “secondary meaning” of the trademark itself that should be therefore considered as valid anyway.
Otherwise there are many valid trademarks that correspond to existing common words, like for example the very famous trademark NIKE (that means “victory” in old Greek, that is long before the owner’s use of its trademark, and still is the root of the word “victory” in modern Greek), as well as other famous trademarks like PUMA and CAMEL, meaning “puma” and “camel” in English, or the vodka trademark ABSOLUT, which is widely considered as a distinctive trademark with reputation (see V&S Vin&Spirit AB v. Mattias Nordin, WIPO Case No. DNU2002-0001).
It is out of question that the trademark LEGO is among the most famous trademarks.
In a previous WIPO Case (Onkyo Corp. v. Pluggedln Software, WIPO Case No. D2002-0785), the Panel stated:
“(…) Respondent has provided information that ONKYO is a common word in Japanese, meaning "sound, noise", and has provided proof that the corresponding website "" at least at some point has been used as a web-site for Japanese music. The Panel must therefore consider whether this use of the contested domain name can constitute fair or noncommercial use for the purpose of these proceedings.
This is a difficult issue in which several factors must be considered.
On the one hand words that carry a meaning can function as trademarks as long as they are not descriptive of the goods and services for which the mark applies. On the other hand such words can also be used in their generic sense, and such use will not be considered as infringing any trademark rights in the word. The exceptions to this effect that the various trademark laws contain, does however not permit the possible fair user to use the said words as a "business identifier", i.e. as a sign that is used to identify the users activities. In view of the Panel, a domain name that is used as a name for a corresponding website is to be regarded as a "business identifier".
In this case the Respondent claims that he registered the contested domain name to set up a website containing information on Japanese music in general. As mentioned above, Respondent is free to use the word "onkyo" in its generic sense on such a website, but not necessarily free to use the word as the domain name for such a site. The Panel is not entirely convinced by Respondent's explanation on why the contested domain name was chosen. In the view of the Panel a natural domain name to choose for a website in such instance could be the Japanese word for music (音楽) transcribed to Latin letters or for instance or a domain name of similar nature and not . This is true even if there is a specific musical genre called the Onkyo Movement.”
In another WIPO Case (Swatch AG v. Stefano Manfroi, WIPO Case No. D2003-0802) it is said that:
“The Respondent asserts that the word "swatch" is a generic term, commonly used in the English language, meaning "a sample of cloth or other material" or "a specimen or distinguishing sample of anything" (…)
The Respondent asserts that a common generic term in principle cannot be registered as a trademark (…)
The Respondent further asserts that the generic term "swatch" is commonly used which is evident by an Internet search, the result of which is provided by the Respondent. The Respondent also contends there are more than 1660 domain names containing the word "swatch". (…)
The Panel notices that even though the term "swatch" has a meaning from the linguistic point of view in the English language, the term is likely to be meaningless in most other languages. It is therefore probable that some of the 600 registrations worldwide by the Complainant are of the word mark "swatch". However, the Complainant has failed to produce evidence of any such registrations. Nevertheless, there is no doubt in the Panels opinion that the trademark "SWATCH" is a very famous trademark throughout the world. The trademark "SWATCH" has acquired extensive distinctiveness and therefore a wide scope of protection. (…)
To conclude, the Panel finds it established that the trademark "SWATCH" is very famous, throughout the world. The trademark has acquired extensive distinctiveness and therefore a wide scope of protection. Even though the Complainant has failed to produce evidence of ownership of trademark registrations of the word mark "SWATCH", the Complainant has proven ownership of the device mark "SWATCH". The Panel further accepts the Complainant’s assertion of more than 600 trademark registrations and moreover finds it likely that the Complainant in fact owns trademark registrations pertaining to the word mark "Swatch". However, the existence of any such registrations is not of crucial importance in this matter. The Panel finds that a famous device mark such as "SWATCH", which is a stylized writing of a pronounceable word, is identical to the distinctive word of the disputed domain names. Considering the addition of the words "news", "research" and "discovery" to the distinctive feature in the disputed domains name, the Panel finds the disputed domain names confusingly similar to the trademark in question. (…)
The Panel has concluded that the domain names are confusingly similar to the Complainant’s mark. The Panel finds it established that the Respondent has selected the word "Swatch" to be a distinctive part of the domain names domain names because it is a famous trademark, and not due to the word’s meaning in the English language. (…)
Finally, the Respondent claims he is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at use Paragraph 4(c)(iii). One of the inherent characteristics of the Internet is that anyone may publish information, which may be interesting for other people. There is no doubt that scientific research in many ways have benefited from the opportunity to share results through the Internet. In this respect, the Panel finds that the Respondent therefore makes a legitimate noncommercial use of the domain names. However, the Panel must also conclude whether this use is "without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue" (see Paragraph 4(c)(iii)). When reviewing the content of the website, as presented by both parties, there is no evidence of the Respondent’s intention of gaining financially of the disputed domain names. Nevertheless, the information on the Respondent’s research, which is published on the website to which the disputed domain names are resolved, whether valid or not, must be considered to be information which tarnishes the Complainant’s mark. Any potential customer who whishes to find information on, or purchase a Swatch, is likely to end up on the Respondent’s website and as a result may be affected by the information contained therein in a way which proves negative for the Complainant. It is the Panel’s opinion that any Internet user who wishes to find information on electromagnetic fields are unlikely to search for such information on any domain containing the trademark "SWATCH". Therefore, the Panel concludes that the Respondent intends to tarnish the "SWATCH" brand.”
The word “lego/s” could therefore be used by anyone not as a trademark but within a website as a word which is part of a sentence in the Javanese language: in fact the use as URL of the website, that is as domain name, is widely considered use as a trademark (“business identifier”) and so protected.
The Panel finds that the disputed domain name was chosen by the both the Respondents because of its confusing similarity to the famous trademark LEGO and not because of its meaning in Javanese.
If that were not the case for the second Respondent, the Panel is nevertheless considering quite odd that the second Respondent has chosen the domain name instead of , since the Javanese word seems to be “lego” and not “legos”. Should it be because that domain name was already registered by the Complainant, as it is, the second Respondent could have chosen as an alternative a different TLD, also considering that the .com TLD should not be registered and used for non-profit activities.
The Panel therefore finds that also element (ii) of the Policy's paragraph 4(a) has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy, “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating 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 that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that the Respondent has registered 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; or
(iii) that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, the Respondent had intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website 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 Respondent’s website or location or of a product or service on the Respondent’s website or location."
As regards the registration in bad faith of the disputed domain name, the reputation of the Complainant’s Marks has been already established and the Panel finds that both the first and the second Respondent knew or should have known that the disputed domain name was confusingly similar to a very famous trademark of a third party.
As an evidence of the first Respondent’s bad faith, the Complainant states that the Respondent's only purpose in registering the disputed domain name was to trade upon the fame of the Complainant's Marks by selling the disputed domain name to the highest bidder for commercial gain in an auction setting.
There is support in prior Panel decisions that offering a domain name for sale on an auction site is evidence of bad faith (apart from the precedents indicated by the Complainant, see also Harrods Limited v. Robert Boyd, WIPO Case No. D2000-0060; Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001).
The Panel finds that offering the disputed domain name for sale on a commercial website in the business of auctioning domain names amounts not only to registration in bad faith but also in use in bad faith, by saying that “There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, as the proprietor of the auction website used by the Respondent advises its potential clients, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent. In several earlier administrative proceedings conducted under the Policy, this sole panelist has determined that offers to sell to the public at large domain names that are identical or confusingly similar to marks of others may constitute bad faith within the meaning of paragraph 4(a)(iii) of the Policy. This is based on the nonexhaustive character of the express list of bad faith factors in paragraph 4(b) of the policy, and the lack of a justification for awarding financial gain to persons for the mere act of registration of the marks of others. In the instant proceeding, respondent has sought to profit from the mere registration of a well-known trademark (preceded by a common descriptive term) as a domain name. There is no evidence on the record of this proceeding that persuades the Panel that Respondent had a purpose for registering the disputed domain name other than for the purpose of selling it for a price in excess of its out-of-pocket costs directly related to the name. The Panel determines such registration and use to be in bad faith” (Wal-Mart Stores, Inc. v. Kenneth E. Crews, WIPO Case No. D2000-0580).
As an evidence of the second Respondent’s bad faith, the Complainandt filed a Request for Entry of a Further Statement by the Complainant requesting that the second Respondent’s email communication dated May�28,�2004, (in which Company Require / Karlina Konggidinata declared that the disputed domain name had been illegally transferred to their account by P, Inc. and that they did not order nor paid for it) be made part of the Case File.
The Panel had already decided to consider the above communication received also by the Center, since it seems rather odd that within a few days the second Respondent changes its opinion between being not interested at all in the disputed domain name and having “spent hours and money to build the (relevant) website”.
More than odd, it has to be considered as a clear evidence of both registration and use in bad faith, especially together with the above described “cyberflying” conduct.
The second Respondent is not even trying in its Response to provide credible evidence of the legitimacy of the transfer of registration, by saying very vaguely that “in or about May 2004 the Respondent registered the disputed domain name that was bought through Transecute registrar”.
Considering the above, the Panel finds that the Complainant has presented sufficient evidence to satisfy its burden of proof with respect to the issue of whether both the first and the second Respondent have registered and used the disputed domain name in bad faith.
7. Reverse domain name hijacking
Reverse domain name hijacking is defined as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. To prevail on such a claim, the Respondent must show that the Complainant knew of the Respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith. Since the Complainant has shown that it is entitled to relief, the claim for reverse domain name hijacking fails.
8. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Edoardo Fano
Sole Panelist
Date: July�12,�2004
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