The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is L, Frank Schuermans of Emmen, Netherlands, internally represented. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2011. On September 16, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On September 16, 2011, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 September 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2011. The Response was filed with the Center on October 13, 2011.
The Center acknowledged receipt of the Complainant’s request for suspension on October 21, 2011, and notified that the administrative proceeding was suspended until November 18, 2011. On November 16, 2011, the Center acknowledged receipt of the Complainant’s request to reinstitute the administrative proceeding.
On November 16, 2011, the Center received the Respondent’s supplemental filings. On November 17, 2011, the Center received a supplemental filing from the Complainant.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on November 29, 2011. 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.
On December 5, 2011, the Panel issued Administrative Panel Procedural Order No. 1 (“Panel Order No.1”) seeking clarification of matters arising in the Complaint and the supplemental filings. Following the issue of Panel Order No. 1, later that day the Complainant submitted a copy of the trademark details said to be the omitted Appendix 6B to the Complaint. On December 6, 2011, the Respondent submitted (in response to Panel Order No. 1) English translations of the appendices to the Respondent’s proposed supplemental filing. The Complainant advised the Center that it did not intend providing any comments about the translations provided by the Respondent. 4. Factual Background
The Complainant and its predecessors have been manufacturing and selling construction toys under the trademark LEGO for many years. For example, sales under the LEGO trademark in the United States of America (USA) commenced in 1953. The range of products and services it provides has expanded over time. These days products branded Lego include computer hardware, software, books, videos and computer controlled robotic construction sets.
In 2010, the annual revenue of the Lego Group exceeded USD3.1 billion. Its Lego products are sold in more than 130 countries including the Benelux region, the USA and the United Kingdom. An organization called Superbrand has ranked the LEGO trademark as the eighth most valuable brand in the world in 2009/2010. The other brands in the “Top 10” included MICROSOFT, ROLEX, GOOGLE, BRITISH AIRWAYS, BBC, MERCEDES-BENZ, COCA COLA, APPLE and ENCYCLOPAEDIA BRITANNICA.
The Complainant has provided a listing of numerous trademark registrations around the world for LEGO. For present purposes, it is sufficient to notice:
- Benelux Trademark No. 54491 for LEGO in respect of goods in class 28 dating from 1971; and
- Community Trade Mark No. 39800 for LEGO in respect of a range of goods and services in International Classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41 and 42 registered on October 5, 1998.
The Respondent appears to conduct a business of hiring out Lego blocks.
According to the Response included in the Respondent’s Supplemental Filing, the Respondent commenced this business in about November 2003 using the disputed domain name. In about November 2008, the Respondent set up his present website, Blokxs, at the domain name . Since then the disputed domain name has redirected to the website at “www.”, although the disputed domain name will still show in the URL if someone does enter the disputed domain name into a web browser.
The website at that URL is in Dutch. So far as one can tell from a Google translation of the text of the website, it appears to relate to a business of hiring out Lego blocks.
According to Google’s translation, “ver huur” is Dutch for “for hire”. 5. Discussion and Findings
Under paragraph 4 of the Policy, the Complainant must prove each of the following three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark to which it has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
The Respondent has requested permission to file a supplemental filing. The Rules do permit panels to request further information. Whether or not unsolicited supplementary materials are accepted into the record however falls within the discretion of the Panel. That discretion is typically exercised in favor of acceptance where the Response raises matters which the Complainant could not reasonably have anticipated or where the supplemental filing is filed to correct factual errors.
In the present case, the initial Response filed by the Respondent did not address the substantive issues in dispute. Instead, it lead to a suspension of the proceeding while the Parties endeavoured to negotiate a solution. The proposed supplemental filing was filed a comparatively short time after the suspension was terminated and the proceeding re-activated. It is in effect the first substantive response by the Respondent to the matters raised in the Complaint.
The Complainant has not objected to acceptance of the Respondent’s proposed supplemental filing, but has filed a supplemental filing of its own addressing some aspects of the Respondent’s document. In the particular circumstances of this case, that was an entirely appropriate approach. Having regard to these matters, therefore, the Panel admits both Parties’ supplemental filings into the record. The Panel also admits into the record the documents submitted by the Parties in response to Panel Order No. 1.
For ease of reference, the Panel will refer to the Respondent’s supplemental filing in what follows simply as the Response and the Complainant’s supplemental filing as the Rejoinder. A. Identical or Confusingly Similar
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark, and, if so, the disputed domain name must be shown to be identical or confusingly similar to the proven trademark.
The Complainant has clearly proved ownership of the registered trademarks referred to in section 4 above. In addition, the Panel finds that the Complainant has very substantial rights through use in LEGO mark. The trademark LEGO, at least, is very well-known and famous.
The disputed domain name is confusingly similar to these proven rights of the Complainant. The word “lego” is effectively the distinctive element of the disputed domain name. The addition of the descriptive term “verhuur” does not dispel the potential for association between the disputed domain name and the Complainant’s mark. To the contrary, it reinforces the association. The Respondent does not dispute these conclusions.
Accordingly, the Complainant has proven the first requirement under the Policy. B. Rights or Legitimate Interests
The second requirement that the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
A respondent may have rights or legitimate interests under the Policy in the circumstances set out in paragraph 4(c) of the Policy. They are:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The circumstances set out in paragraph 4(c) of the Policy are examples only, however, and are not an exhaustive numeration in ways in which rights or legitimate interests can be shown.
While paragraph 4(c) of the Policy states that these are circumstances where the respondent may show rights or legitimate interests, the overall burden of establishing this requirement falls on the Complainant. Nonetheless, in view of the difficulty inherent in proving a negative and because the relevant information is often in the possession of the respondent only, it will be sufficient for the complainant to establish a prima facie case which, if not rebutted, will lead to this ground being established (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)), paragraph 2.1.
The Complainant states that it has not licensed or otherwise authorised the Respondent to register or use the Complainant’s trademarks as part of the Respondent’s domain name. The Respondent is not an authorised dealer in Lego products and has never had a business relationship with the Complainant’s group. So far as the Complainant can establish, the Respondent does not have any registered trademarks corresponding to LEGO or the disputed domain names. Given the fame of the Complainant’s trademarks, the Complainant contends that the Respondent must have known about its trademarks when he registered the disputed domain name. It relies on the decision in Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055 for the proposition that:
“in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent.”
Given the distinctiveness of the Complainant’s trademarks, this is more than sufficient to raise a prima facie cases against the Respondent.
The Respondent in effect advances two arguments to rebut this prima facie case.
First, the Respondent appears to contend that the Complainant has at least acquiesced in and (arguably) authorised his use of the disputed domain name through a series of correspondence in 2003 – 2004 and 2008. As noted above, the Respondent has submitted English translations of this correspondence at the Panel’s request and the Complainant does not appear to dispute the accuracy of those translations.
It is fair to say that the Complainant did expressly forbid the use of its “logo” in the first round of correspondence. The Panel is unable to infer from that correspondence alone, however, that the Complainant has authorised the Respondent’s use of the disputed domain name. The Respondent’s plans in that respect do not appear to have been disclosed to the Complainant, at least in the correspondence on the record.
In the second round of correspondence, the Complainant appears to have asserted its trademarks against the Respondent. The Respondent appears to have attempted to negotiate a commercial resolution on various bases. In the end, the Respondent offered to, and did, change his business or trading name to Blokxs. From the Complainant’s Rejoinder, it would appear that at least some officers in the Complainant’s group took this as an agreement also to stop using the disputed domain name. It is difficult to read that into the correspondence that has been disclosed and the Panel does not read it in that way.
In these circumstances, the Panel does not find that the Complainant has consented to the Respondent’s registration and use of the disputed domain name in a way which disentitles it from complaining at this stage under the Policy.
The Respondent, however, uses the disputed domain name to refer Internet users to his website Blokxs, which, so far as can be ascertained from the record in this case, is a business hiring out Lego products.
The circumstances in which an unauthorized dealer in a trademark owner’s products can use the trademark in a domain name have not finally been settled under the Policy. A very small number of panels have taken the position that this is not legitimate. In the context of resellers which is closely analogous to the present situation, however, paragraph 2.3 of the WIPO Overview 2.0 states:
“Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to ‘corner the market’ in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.”
This is described as the consensus view. The proposition in Guerlain S.A. v. Peikang, supra, relied on by the Complainant, therefore, must be qualified to some extent.
So far as can be ascertained from the record in this case, each of the requirements summarised in paragraph 2.3 of the WIPO Overview 2.0 appear to be substantially satisfied.
The Panel is not able to tell from the record in this case whether or not there is an express disclaimer of association on the Respondent’s website with the Complainant. However, it does not appear to the Panel that any reasonable viewer of the Respondent’s website would think it was an authorised or official website of the Complainant’s group. Moreover, as the learned panelist in Volvo Trademark Holding AB v. Auto Shivuk,WIPO Case No. D2005-0447 explained:
“The Respondent’s website also fulfills the requirement that the Respondent prevents confusion by making clear in its use of the domain name that it is not the trademark owner. Although Respondent’s website does not contain a disclaimer which states that it is not affiliated with Complainant, Respondent on its website accurately discloses that it is a mere distributor of VOLVO auto parts. There are no facts which would suggest that the Respondent intentionally trades on the fame of Complainant and intentionally has adopted his website presentation so as to benefit from the goodwill of the VOLVO mark. The Respondent does not use the Logo of Complainant or otherwise improperly suggests that it is the trademark owner, or that the website is the official site. In fact, the Respondent merely uses a domain name which is descriptive of the business conducted under the domain name. The Panel therefore does not find that Internet users are likely to believe they are dealing with an authorized agent of Complainant or that Complainant sponsors or otherwise endorses the site.”
Auto Shivuk was a case of a reseller. The point made by the learned panelist is equally applicable, mutatis mutandis, in the present circumstances.
Accordingly, the Panel finds that the Complainant has failed on the record in these Policy proceedings to establish that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint.
However, given the Panel’s finding under the second requirement of the Policy, the issue under the third requirement does not strictly arise. The Panel does note that the findings in relation to “rights or legitimate interests” above lead to the conclusion at least that the Respondent has not used the disputed domain name in bad faith on the record in this proceeding.
Given the conclusions reached on the record in this case under the second requirement of the Policy, the Panel would not find that the Respondent either had registered or used the disputed domain name in bad faith. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Sole Panelist
Dated: December 13, 2011
Full & Egal Universal Law Academy