LEGO Juris A/S v. Bordin Sribenjarat
Claim Number: FA1103001381318
Complainant is LEGO Juris A/S (“Complainant”), represented by Anna Mejlerö of Melbourne IT Digital Brand Services AB, Sweden. Respondent is Bordin Sribenjarat (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <legocitygames.us> and <harrypotterlego.us>, registered with GoDaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 31, 2011; the Forum received a hard copy of the Complaint on March 31, 2011.
On March 31, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <legocitygames.us> and <harrypotterlego.us> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On April 6, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 26, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 28, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <legocitygames.us> and <harrypotterlego.us> domain names are confusingly similar to Complainant’s LEGO mark.
2. Respondent does not have any rights or legitimate interests in the <legocitygames.us> and <harrypotterlego.us> domain names.
3. Respondent registered and used the <legocitygames.us> and <harrypotterlego.us> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, LEGO Juris A/S, owns the LEGO mark and has used the mark since 1953 in connection with the manufacture and sale of its LEGO branded toys. Complainants holds numerous trademark registrations for its LEGO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,018,874 issued Aug. 26, 1975).
Respondent, Bordin Sribenjarat, registered the <legocitygames.us> and <harrypotterlego.us> domain names on November 26, 2010. The disputed domain names resolve to an <amazon.com> website displaying Complainant’s products for sale, as well as links to third-party sites in direct competition with Complainant’s toy business.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant contends that it has established rights in its LEGO mark. Complainant is not required to register the mark within the country where Respondent operates or resides, as long as the mark is registered in some jurisdiction. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). The Panel finds that Complainant has established its rights under Policy ¶ 4(a)(i) in the LEGO mark through its registration of the mark with the USPTO (e.g., Reg. No. 1,018,874 issued Aug. 26, 1975). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of [UDRP] ¶ 4(a)(i).”; see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Complainant argues that Respondent’s <legocitygames.us> and <harrypotterlego.us> domain names are confusingly similar to Complainant’s LEGO mark. The disputed domain names incorporate the entire mark and differ only by adding the generic words “city games” and “harry potter,” and adding the country code top-level domain (“ccTLD”) “.us.” Previous panels have found that the addition of generic words does not preclude a finding of confusing similarity. See Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it). The Panel also finds that the affixation of a ccTLD does not sufficiently distinguish the disputed domain name from Complainant’s mark. See Basic Trademark S.A. v. Antares S.p.A, FA 1130680 (Nat. Arb. Forum Mar. 4, 2008) (“The <robedikappa.us> domain name is identical to the ROBE DI KAPPA mark. The only difference is the omission of the space between the words and the addition of the ccTLD “.us,” which does not significantly distinguish the domain name from the mark.”). Therefore, the Panel concludes that Respondent’s disputed domain names are confusingly similar to Complainant’s LEGO mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶4(a)(i) has been met.
Complainant claims that Respondent has no rights or legitimate interests in the disputed domain names. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel determined that “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under [UDRP] ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.” The Panel finds that Complainant has made a prima facie case in support of its allegations. Given Respondent’s failure to submit a response to the Complaint, the Panel may interpret this as evidence that Respondent has no rights or legitimate interests under Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). However, the Panel will examine the record to determine whether Respondent has any rights or legitimate interests under Policy ¶ 4(c).
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks reflected in the <legocitygames.us> or <harrypotterlego.us> domain names. The Panel, therefore, finds that Respondent does not have rights and legitimate interests according to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i).
Complainant argues that Respondent is not commonly known by the disputed domain names. The WHOIS information identifies Respondent as “bordin sribenjarat,” which is not similar to the disputed domain names. Additionally, Complainant argues that it has not given any license or authorization to Respondent to use its LEGO mark within the disputed domain name names. The Panel finds that Respondent is not commonly known by the disputed domain names, pursuant to Policy ¶ 4(c)(iii), as nothing in the record indicates otherwise. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Respondent uses the disputed domain names to redirect Internet users to <amazon.com> websites which offer Complainant’s products for sale, as well as displaying links for toys in competition with Complainant’s business. Respondent likely receives click-through fees from these links. The Panel finds that the use of a confusingly similar disputed domain name to sell Complainant’s products and advertise for Complainant’s competitors is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent’s disputed domain names resolves to a website which offers for sale Complainant’s LEGO products and also provides links to Complainant’s competitors in the toy industry. Internet users intending to purchase Complainant’s toys and supplies may instead purchase similar products from a competitor because of Respondent’s confusingly similar disputed domain names. The Panel finds that such use of the disputed domain names disrupts Complainant’s business, which constitutes bad faith use under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to UDRP ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to UDRP ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
The Panel infers that Respondent receives click-through fees from the third-party links mentioned above. Internet users searching online for Complainant may find Respondent’s website and become confused as to Complainant’s sponsorship of, or affiliation with, the resolving website and featured products and links. Respondent attempts to commercially gain from this misconception through the receipt of click-through fees. The Panel concludes that such use of the disputed domain names is evidence of bad faith use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under UDRP ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <legocitygames.us> and <harrypotterlego.us> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: April 28, 2011
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