Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services AB, Sweden.
Respondent is Stichting RIBW ZWWF of Purmerend, The Netherlands, represented by Abma Schreurs Advocaten Notarissen, The Netherlands. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with SIDN through Uniserver Internet B.V. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2011. On June 15, 2011, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On June 16, 2011, SIDN transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Complainant filed an amendment to the Complaint on June 16, 2011. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 16, 2011. In accordance with the Regulations, article 7.1, the due date for Response was July 6, 2011. The Response was filed with the Center on July 5, 2011.
On July 6, 2011, SIDN commenced the mediation process. On July 7, 2011, Complainant filed a further submission with the Center. On July 22, 2011, SIDN informed parties that the dispute had not been solved in the mediation process.
As a result of a potential for conflict of interest, the appointment process in this case was extended, and on September 12, 2011, the Center appointed Tjeerd F.W. Overdijk as the panelist in this matter. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2. 4. Factual Background
The Domain Name was registered on June 16, 2003. Respondent became the registrant of the Domain Name on May 26, 2010, through a change of ownership.
Complainant and its licensees are commonly known as the LEGO Group, which is famous for the manufacture and distribution of LEGO brand toys with a turnover in 2009 of USD 2,8 billion. In that year the Superbrands survey revealed that LEGO is the most powerful toy brand.
Complainant is the owner of an extensive portfolio of LEGO trademarks, including inter alia the following:
1. Community trademark registration (no. 39800) for the LEGO word trademark;
2. Benelux trademark registration (no. 54491) for the LEGO word trademark.
Both trademarks are hereinafter referred to as the “Trademarks”.
In addition, Complainant is the holder of more than 1,000 domain names containing the word “lego”.
Respondent is an organization in the mental health care area. It offers assisted living with daytime activities in The Netherlands in the regions Zaanstreek, Waterland and West-Friesland. One of the activities involves the “LEGO Formula”, established for people with ASD (Autistic Spectrum Disorder). LEGO models are made from second hand LEGO pieces and then sold i.e. via the web shop under the Domain Name. 5. Parties’ Contentions A. Complainant
The Complaint is entirely based on the Trademarks. According to Complainant, with reference to numerous decisions under the Uniform Domain Name Dispute Resolution Policy (UDRP), the Trademarks are
well-known trademarks.
According to Complainant the Domain Name is confusingly similar to the Trademarks, as the most distinctive element of the Domain Name is “lego”. The addition of the generic suffix “gebruikt” (meaning “used” in Dutch) and the country code top-level domain “.nl” do not detract from the overall impression, and the Domain Name must therefore be considered to be confusingly similar with the Trademarks.
Complainant states that Respondent does not have a right or legitimate interest in respect of the Domain Name. Firstly, Respondent has no legitimate rights, licenses or authorization to use the trademark LEGO in the Domain Name. Secondly, the Domain Name has not been used for the bona fide offering of goods or services. Respondent has chosen a domain name based on a registered trademark in order to generate traffic to a website where LEGO products are sold. Using the trademark and connecting it to a website, Respondent is misleading Internet users and is tarnishing the trademark LEGO. Thirdly, Respondent failed to meet the requirements for a bona fide offering of goods, because Respondent does not disclose any information in relation to its non-existent (commercial) relationship to Complainant. Fourthly, Respondent does not use the name LEGO as company name nor has any other legal right to this name. Therefore Respondent is trying to “sponge off” the famous LEGO trademark, which does not create “rights or legitimate interests” to use that name.
Complainant argues that Respondent has registered and/or is using the Domain Name in bad faith. According to Complainant, the Trademarks have repute throughout the whole European Union and throughout the world and Respondent must have been aware of the Trademarks at the point of registration of the Domain Name. The Domain Name is currently connected to a website where Respondent’s products are sold, thus Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s Trademarks as to the source, sponsorship, affiliation or endorsement of its website. This constitutes evidence of both bad faith registration and bad faith use. Furthermore Respondent did not respond to the cease and desist letters and reminders from Complainant. This also supports an inference of bad faith. B. Respondent
Respondent states that the income from the sold LEGO models, made by people who have a psychiatric history of psychosocial problems, do not generate any profit. The income is solely used to cover the costs for this health care service, thus this use has a noncommercial purpose.
According to Respondent the public will not become confused with the LEGO brand, since the prefix “gebruikt” explicitly prevents confusion. This typical prefix prevents anyone that sees the Domain Name to mistake it for a name related to LEGO. It is obviously another kind of prefix than in . The fact that Respondent is the holder of the Domain Name does not damage or affect the LEGO brand. Also the distinguishing difference between the LEGO brand and the services offered by Respondent through its website is evident.
Furthermore it is not the trademark LEGO itself, but the actual activities of Respondent, consisting of working with used LEGO have given rise to the registration and use of the Domain Name. This does not constitute registration or use in bad faith.
Respondent has a legitimate interest in the Domain Name, since it has become well known to the visitors of the web shop and it is depending on the visitors to continue its activities.
The complaint that Respondent did not respond to the cease and desist letters and reminders from Complainant is not justified. Respondent was unable to respond because the letters had been sent to a former director of Respondent who failed to forward these letters to Respondent. 6. Discussion and Findings
Based on article 2.1 of the Regulations, a claim to transfer a domain name must meet three cumulative conditions:
A. The domain name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which the complainant has rights, or other name mentioned in article 2.1 (a) under II of the Regulations; and
B. The respondent has no rights to or legitimate interests in the domain name; and
C. The domain name has been registered or is being used in bad faith. A. Identical or Confusingly Similar
Complainant has sufficiently demonstrated that is the owner of the Trademarks. It therefore has a property right over the LEGO mark. It may also be noted that LEGO is contained in the corporate name of Complainant.
The Domain Name is not identical to the Trademarks. However, the Panel is of the opinion that the Domain Name can be said to be confusingly similar to the Trademarks, because within the Domain Name, there is no doubt that the predominant element is “lego” which is distinctive and eligible for protection per se and can be clearly distinguished within the combination . The Domain Name incorporates the Trademarks in its entirety. One may reasonably suspect that the public, when reading or hearing the Domain Name, will at first be lead to believe that the Domain Name is owned by, or related to, Complainant, pointing towards a website where used or second hand LEGO toys are shown and offered for sale.
In this respect, the Domain Name would be associated in the public’s mind with the Trademarks so that a risk of confusion is likely. The addition of the generic term “gebruikt” does not prevent confusion (Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002; Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206; France LEGO Juris A/S v. M. Moench,WIPO Case No. DNL2009-0052). It should be noted in this connection that in assessing whether this criterion has been met, the actual content of the website is irrelevant. See, e.g., Mejeriforeningen Danish Dairy Board v. Cykon Technology Limited,WIPO Case No. D2010-0776.
It is also established case law that the top level domain “.nl” can be disregarded in assessing the similarity between the Trademarks on the one hand and the Domain Name on the other hand (Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008).
Therefore, the Panel finds that the Domain Name is confusingly similar to the Trademarks pursuant to article 2.1 (a) of the Regulations. B. Rights or Legitimate Interests
In the present case the issue of rights or legitimate interests and bad faith can be more conveniently dealt with together (see also in this respect Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227).
Respondent is using a domain name that incorporates Complainant's LEGO mark predominantly to sell used LEGO toys. For these toys the trademark rights have been exhausted. In the Panel's view the outcome to this case depends upon the answer to the question to what extent an entity can resell genuine trademarked goods for which the trademark rights are exhausted and use a domain name that incorporates an unauthorised use of such trademark for that purpose. In such case the questions of rights and legitimate interests and bad faith will usually be just the opposite sides of the same coin1. If the registrant is found to have a legitimate interest in the use of a domain name for such purpose, then it is not likely to have registered the domain name in bad faith. The converse is also the case.
This question is addressed in some detail in paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), which is relevant to this case as the Regulations are for the most part based on the Uniform Domain Name Dispute Resolution Policy (UDRP). According to the majority view, a reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use meets certain requirements, also known as the Oki Data criteria (see in this respect Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903). These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant's relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark.
The predominant view amongst panelists is that the Oki Data criteria are capable of applying regardless of whether or not a respondent is an authorised distributor (Volvo Trademark Holding AB v. Auto Shivuk,WIPO Case No. D2005-0447; Daimler AG v. William Wood,WIPO Case No. D2008-1712; IVECO S.p.A. v. Zeppelin Trading Company Limited,WIPO Case No. D2008-1725; ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments, Inc.,WIPO Case No. D2008-0936; Magma Products Inc. v. Herb Halling,WIPO Case No. D2007-0995; Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227).
The Domain Name does not only comprise the Trademarks, but also the additional element “gebruikt”. It is a term that distinguishes and is intended to distinguish Respondent from Complainant (see also in this respect Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign,WIPO Case No. D2004-0206; and Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227). As a consequence it is necessary to look at the use actually made of the Domain Name and the nature of the website that operates from it to see whether the registration and/or use is abusive.
The requirements referred to in the aforementioned decisions under the UDRP are essentially similar to the limitations of the effect of a trademark pursuant to Articles 6 and 7 of the Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trademarks (Harmonization Directive), as explained in more detail in relevant rulings of the European Court of Justice (ECJ), including the judgment dated February 23, 1999 (Case C-63/97, BMW v. Deenik) and the judgment dated March 17, 2005 (Case C-228/03, The Gillette Company v. LA-Laboratoires Ltd) in which the Court of Justice further explained the meaning of the similar provisions in the earlier version of the Harmonization Directive (Directive 89/104/EEC).
In its judgment in BMW v. Deenik the Court of Justice gave the following answer to one of the questions referred to it for a preliminary ruling:
“3. Articles 5 to 7 of First Directive 89/104 do not entitle the proprietor of a trade mark to prohibit a third party from using the mark for the purpose of informing the public that he carries out the repair and maintenance of goods covered by that trade mark and put on the market under that mark by the proprietor or with his consent, or that he has specialised or is a specialist in the sale or the repair and maintenance of such goods, unless the mark is used in a way that may create to the impression that there is a commercial connection between the other undertaking and the trade mark proprietor, and in particular that the reseller's business is affiliated to the trade mark proprietor's distribution network or that there is a special relationship between the two undertakings.”
The judgment in Gillette v. LA-Laboratoires includes the following in response to the element “honest use” in Article 6 paragraph 1 under c:
“2
The condition of ‘honest use’ within the meaning of Article 6(1)(c) of Directive 89/104, constitutes in substance the expression of a duty to act fairly in relation to the legitimate interests of the trade mark owner.
The use of the trade mark will not be in accordance with honest practices in industrial and commercial matters if, for example:
- it is done in such a manner as to give the impression that there is a commercial connection between the third party and the trade mark owner;
(…)”
The interpretation of these rules given by the ECJ is also relevant for cases concerning the use of a trademark by a reseller for the offering of goods with the trademark and in which the trademark is being used as part of a domain name for the purpose of providing information to the public concerning the nature of an offer relating to goods or services and in relation to which it has to be determined whether or not a legitimate interest exists for such use as required under the applicable domain name policy.
The defense put forward by Respondent is understood by the Panel to basically argue that its use of the Trademarks in the Domain Name conforms to all the requirements for accepting the existence of a legitimate interest which follow from the current majority of panel decisions under the UDRP.
In the opinion of the Panel the Oki Data criteria are being fulfilled in this matter. While it is normally for a respondent to show that its use of the trademark meets the Oki Data requirements, the defense and the nature of Respondent’s use of the Domain Name are quite clear, and Complainant has expressly argued that the Oki Data conditions have not been met in this case. The Panel can and will substantively consider whether the Oki Data conditions have been fulfilled.
According to the Oki Data criteria, a bona fide offering must meet several requirements. These include, at minimum, the following:
- The respondent must actually be offering the goods or services at issue;
- The respondent must use the site to sell only the trademarked goods (otherwise, it could be using the trademark for “baiting” Internet users and then switch them to other goods);
- The site must accurately disclose the registrant’s relationship with the trademark owner;
- The respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
Although Respondent is not an authorized reseller, it is using the web shop under the Domain Name to sell toys for which Complainant’s trademark rights have been exhausted. The website does not disclose any LEGO figurative trade mark.
The Panel notes that the website to which the Domain Name resolves does not contain an express disclaimer which would make it immediately clear that Respondent is not an authorized reseller of LEGO branded products. On the other hand, however, one cannot say that the website and the content provided on the website would somehow create the impression of a (non-existing) commercial connection between Respondent and Complainant, or that Respondent would belong to any official LEGO reseller network, or that a special relationship of any other nature would exist between Complainant and Respondent. The website clearly mentions that Respondent is the owner and that the products are sold by Respondent and not by Complainant. After weighing all these factors the Panel is of the opinion that the website is sufficiently accurate with regard to the relationship between Complainant and Respondent.
Complainant has not presented any other evidence that would undermine the bona fide nature of Respondent’s use. Accordingly, the Panel finds that Respondent has a legitimate interest in the Domain Name. C. Registered or Used in Bad Faith
In light of the above finding of a legitimate interest through bona fide use, it is unnecessary for the Panel to make a separate assessment with regard to the third element. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Tjeerd F.W. Overdijk
Panelist
Dated: November 9, 2011
1 Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227.
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