LEGO Juris AS v. Eylem Culculoglu
Claim Number: FA1301001480732
Complainant is LEGO Juris AS (“Complainant”), represented by Cecilia Borgenstam of Melbourne IT Digital Brand Services AB, Sweden. Respondent is Eylem Culculoglu (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <buylego.us>, registered with Godaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically January 17, 2013; the National Arbitration Forum received payment January 24, 2013.
On Jan 17, 2013, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <buylego.us> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and 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 January 30, 2013, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 13, 2012 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 Police (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 26, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules for usTLD 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 Policy, the 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 name be transferred from Respondent to Complainant.
Complainant makes the following allegations in this proceeding:
1. Complainant and its licensees, through their predecessors, have used the LEGO mark in connection with the manufacture and sale of construction toys since 1953.
2. Complainant registered the LEGO mark in many jurisdictions throughout the world, including registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,018,875 registered August 26, 1975).
3. Respondent registered the <buylego.us> domain name November 10, 2012.
4. The <buylego.us> domain name is confusingly similar to Complainant’s LEGO mark for the purposes of Policy ¶ 4(a)(i).
5. Respondent is not commonly known by the <buylego.us> domain name.
6. Complainant has not licensed or otherwise authorized Respondent’s use of the LEGO mark.
7. Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.
8. The <buylego.us> domain name resolves to a website displaying sponsored links related to Complainant, including links to the online shopping site <amazon.com>.
a. Respondent’s website displays a header ““Buy LEGO – Lego Store By Amazon.”
9. Using the disputed domain name to resolve to a click-through website through which Respondent obtains revenue constitutes bad faith when the domain name intentionally attempts to divert Internet traffic to its website for commercial gain.
10. Respondent was aware of Complainant and its rights in the LEGO mark at the time Respondent registered the disputed domain name.
11. Respondent registered the domain name November 10, 2012.
Respondent did not submit a Response in this proceeding.
Complainant established that it has rights in the mark contained in its entirety within the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s mark.
Respondent has no rights to or legitimate interest in the domain name containing Complainant’s protected mark.
Respondent registered and used the disputed domain name in bad faith.
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."
Paragraph 4(a) of the Policy requires Complainant to 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 to 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 Respondent's failure to submit a response, this 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 will draw such inferences as the Panel 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.”).
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.
Identical to or Confusingly Similar:
Complainant claims rights in the LEGO mark based on its registration of the mark with numerous trademark authorities throughout the world, including registration with the USPTO (e.g., Reg. No. 1,018,875 registered August 26, 1975). The Panel finds that Complainant’s registration with the USPTO is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i), despite the fact that Complainant does not hold a trademark registration in the country in which Respondent operates. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under UDRP ¶ 4(a)(i) through registration of the mark with the USPTO); 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).
Complainant contends that the <buylego.us> domain name is confusingly similar to its LEGO mark for the purposes of Policy ¶ 4(a)(i). Complainant asserts that addition of the country code top-level domain (“ccTLD”) “.us” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant in determining the confusing similarity between the trademark and domain name. Complainant also argues that the prefix “buy” does not detract from the overall impression and the disputed domain name must therefore be considered confusingly similar to Complainant’s mark. The Panel finds that neither alteration removes the disputed domain name from the realm of confusing similarity. See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); see also CDW Computer Ctrs., Inc. v. The Joy Co., FA 114463 (Nat. Arb. Forum July 25, 2002) (finding that the addition of the ccTLD “.us” is inconsequential and does not defeat a claim of confusing similarity). Given the foregoing, the Panel finds that the <buylego.us> domain name is confusingly similar to Complainant’s LEGO mark for the purposes of Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that no evidence in the record suggests that Respondent owns any service marks or trademarks that reflect the <buylego.us> domain name. Therefore the Panel finds that Respondent does not have rights to or legitimate interests pursuant 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 Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sep. 3, 2002) (holding that because 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 contends that Respondent is not commonly known by the <buylego.us> domain name, that Respondent is not an authorized dealer of Complainant’s products, that Respondent has never had a business relationship with Complainant, and that Complainant has not licensed or otherwise authorized Respondent to use the LEGO mark. Complainant notes that the WHOIS information identifies Respondent as “Eylem Culculoglu.” Complainant further notes that Respondent failed to produce a Response in the instant proceeding. Given these matters, the Panel agrees that Respondent is not commonly known by the <buylego.us> domain name for the purposes of Policy ¶ 4(c)(iii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant further contends that Respondent’s use of the <buylego.us> domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). Complainant asserts that Respondent uses the <buylego.us> domain name to resolve to a website displaying sponsored links related to Complainant’s products, including links to the online shopping site <amazon.com>. The Panel finds that Respondent’s use of the disputed domain name to offer only links to commercial sites, rather than offering any goods or services of its own, is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration or Use in Bad Faith:
Complainant contends that Respondent’s website redirects customers to third-party sites such as <amazon.com>, allowing Respondent to obtain revenue from click-through advertising. Complainant argues that Respondent’s use of a confusingly similar domain name to intentionally attempt to divert Internet traffic to its website for commercial gain constitutes bad faith pursuant to Policy ¶ 4(b)(iv). The Panel finds that Respondent’s use of a confusingly similar domain name increases the likelihood that consumers will believe that Respondent’s site is sponsored by or affiliated with Complainant and that this confusion will increase traffic to Respondent’s website. The Panel finds that this increased traffic will presumably increase the click-through revenues collected by Respondent. Accordingly, the Panel finds that Respondent’s creation of confusion with Complainant was intentional and motivated by the prospect of increased economic gain. The Panel finds that Respondent’s registration or use of the <buylego.us> domain name constitutes attraction for commercial gain in bad faith under Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
Complainant alleges that, given the fame Complainant’s LEGO mark has achieved, Respondent must have been aware of Complainant and its rights in the LEGO mark at the time Respondent registered the <buylego.us> domain name. The Panel finds that while mere constructive knowledge is insufficient to support a finding of bad faith under Policy ¶ 4(a)(iii), actual knowledge of a complainant’s mark at registration will demonstrate bad faith. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the [UDRP]."); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). This Panel finds that Respondent had actual knowledge of Complainant’s rights in the LEGO mark at the time Respondent registered the <buylego.us> domain name given the notoriety of Complainant’s mark and Respondent’s use.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <buylego.us> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 12, 2013.
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