NATIONAL ARBITRATION FORUM

 

DECISION

 

LEGO Juris AS v. Teera Chotpongsathonkul

Claim Number: FA1101001369811

 

PARTIES

Complainant is LEGO Juris AS (“Complainant”) represented by Anna Mejlerö, of Melbourne IT Digital Brand Services AB, Sweden.  Respondent is Teera Chotpongsathonkul,  (“Respondent”), Thailand.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <legoharrypotter.us>, registered with GoDaddy.com, Inc.

 

PANEL

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.

 

Honorable Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 27, 2011; the Forum received a hard copy of the Complaint on January 28, 2011.

 

On January 27, 2011, GODADDY.COM, INC. confirmed by e-mail to the Forum that the <legoharrypotter.us> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On February 1, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 21, 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 Forum transmitted to the parties a Notification of Respondent Default.

 

On March 1, 2011, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

1.      Respondent’s <legoharrypotter.us> domain name is confusingly similar to Complainant’s LEGO mark.

 

2.      Respondent does not have any rights or legitimate interests in the <legoharrypotter.us> domain name.

 

3.      Respondent registered and used the <legoharrypotter.us> domain name in bad faith.

 

B. Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, LEGO Juris AS, is the owner of the LEGO mark which Complainant uses in connection with toy building blocks.  Complainant asserts that its LEGO mark is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,018,875 issued August 26, 1975).  Complainant states that since March 2010, Complainant and Warner Bros Consumer Products Inc. have had a license agreement concerning the use of the Warner Bros’s HARRY POTTER mark incorporated in the LEGO product line. 

 

Respondent, Teera Chotpongsathonkul, registered the disputed domain name on June 26, 2010.  The disputed domain name resolves to a website that displays sponsored links to third-parties related to, and in competition with, Complainant.

 

DISCUSSION

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 the Complainant's undisputed representations pursuant to Paragraphs 5(f), 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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or 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.

 

Identical and/or Confusingly Similar

 

Complainant asserts rights in its LEGO mark based on its registration of the mark with a federal trademark authority, the USPTO (Reg. No. 1,018,875 issued August 26, 1975).  The Panel finds that Complainant’s USPTO registration is conclusive evidence that Complainant has rights in the LEGO mark pursuant to Policy ¶ 4(a)(i).  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of [UDRP] ¶ 4(a)(i).”).  The Panel also finds that it is irrelevant, for the purposes of Policy ¶ 4(a)(i), whether Complainant has registered its mark in the country where Respondent resides.  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). 

 

Complainant argues that Respondent’s <legoharrypotter.us> domain name is confusingly similar to Complainant’s LEGO mark.  Previous panels have held that the addition of another mark to a mark of Complainant renders a disputed domain name confusingly similar.  This confusingly similarity is likely increased where, as here, the added mark has a relationship to Complainant.  See G.D. Searle & Co. v. Paramount Mktg., FA 118307 (Nat. Arb. Forum Sept. 27, 2002) (holding that the addition of other well-known pharmaceutical drug brand names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the capacity of the disputed domain name to confuse Internet users, but actually “adds to the potential to confuse”).  Complainant also argues that the addition of the country-code top-level domain (“ccTLD”) “.us” does not have any impact on the overall impression of the disputed domain name and is therefore irrelevant to the determination of confusing similarity.  The Panel agrees.  See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).  Therefore, the Panel finds that Respondent’s <legoharrypotter.us> domain name is confusingly similar to Complainant’s LEGO mark under Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent does not have any rights or legitimate interests in the <legoharrypotter.us> domain name.  The burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) when the Complainant makes a prima facie case in support of its allegations.  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).  The Panel finds that Complainant has made a sufficient prima facie case.  Due to Respondent’s failure to respond to the Complaint, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain name.  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint).  Nevertheless, the Panel will examine the record in light of the factors contained in Policy ¶ 4(c) to make a determination as to whether Respondent has any rights or legitimate interests in the disputed domain name. 

 

Complainant asserts that it has not discovered any registered trademarks or trade names registered by Respondent corresponding to the disputed domain name.  The Panel therefore finds that Respondent does not have rights or legitimate interests in the <legoharrypotter.us> domain name 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 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)). 

 

Respondent has offered no evidence, and there is no evidence in the record, suggesting that Respondent is commonly known by the <legoharrypotter.us> domain name.  Complainant asserts that Respondent is not authorized to use the <legoharrypotter.us> domain name.  The WHOIS information identifies Respondent as “Teera Chotpongsathonkul.”  Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the <legoharrypotter.us> domain name pursuant to Policy ¶ 4(c)(iii).  See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under UDRP ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). 

 

Respondent registered the disputed domain name on June 26, 2010.  The disputed domain name resolves to a website that displays sponsored links to third-parties offering products in competition with those offered by Complainant under its LEGO mark.  The Panel presumes that Respondent profits through the receipt of click-through fees.  The Panel finds that Respondent’s use of the disputed domain name for such a purpose is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv).  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under [UDRP] ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under [UDRP] ¶ 4(c)(iii).”); see also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute a bona fide offering of goods or services under UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). 

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration or Use in Bad Faith

 

The Panel finds that Respondent’s registration and use of the disputed domain name to redirect Internet users to Complainant’s competitors is evidence of bad faith under Policy ¶ 4(b)(iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under UDRP ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iii).”).

 

Complainant indicates that the disputed domain name resolves to a website displaying sponsored links from which Respondent presumably profits.  Complainant argues that Respondent registered, and is using, the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the resolving website, by creating a likelihood of confusion with Complainant’s LEGO mark as to the source, sponsorship, affiliation, or endorsement of the resolving website and disputed domain name.  The Panel agrees and therefore finds Respondent to have engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See 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); see also 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)(iv) 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). 

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <legoharrypotter.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Honorable Karl V. Fink (Ret.), Panelist

Dated: March 3, 2011

 

 

 

 

 

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