WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Kirkbi AG v. This Domain for Sale/Steve Morsa

Caso No. D2003-0826

 

1. The Parties

The Complainant is Kirkbi AG, Baar, Switzerland, represented by Cantor Colburn LLP, United States of America.

The Respondent is This Domain for Sale/Steve Morsa, Thousand Oaks, California, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names <legosysems.com>, <legosystem.com> and <legosystems.com> (hereinafter referred to as "domain names") are registered with Register.com

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 17, 2003. On October 17, 2003, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain names at issue. On October 21, 2003, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 October 24, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was November 13, 2003. The Response was filed with the Center on November 14, 2003.

On November 11, 12 and 13 there was an exchange of email messages between the Respondent, the Center and, the content of which was duly examined and is acknowledged by the Panel. The Panel also acknowledges that a supplemental filing was addressed to the Center on November 17, 2003.

The Center then appointed Luca Barbero as the Sole Panelist in this matter on November 25, 2003. 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. The Sole Panelist finds that the Administrative Panel (hereinafter referred to also as the Panel) was properly constituted and appointed in accordance with the Rules and Supplemental Rules.

 

4. Factual Background

The Complainant is the owner of a number of trademark registrations for LEGO and other trademarks used in connection with the LEGO brand of construction toys and other LEGO branded products. The Complainant and its licensees, through their predecessors, commenced use of the LEGO mark in the U.S. during 1953, to identify construction toys made and sold by them.

The dispute concerns three domain names: <legosystems.com>, <legosystem.com> and <legosysems.com>, all of which were registered by the Respondent on March 8, 2003.

According to WHOIS printouts for <legosystems.com>, <legosysems.com> and <legosystem.com>, the Respondent is listed as "This Domain Name for Sale/Steve Morsa."

 

5. Partiesí Contentions

A. Complainant

The Complainant notes that the use of the LEGO trademark has been extensive, exclusive and continuous since 1953. Over the years, the business of making and selling LEGO brand toys has grown remarkably sales in the United States alone of LEGO construction toys which exceeds $1 billion over the last 10 years.

The Complainant provided the Panel with copies of a number of national registration for the trademark LEGO and LEGO and Design in the US including the following: No. 1,018,875 of August 26, 1975, in class 28, No. 1,026,871 of December 9, 1975, in class 28, No. 1,535,046 of April 18, 1989, in class 9, No. 2,065,901 of May 27, 1997, and others. A copy of the Community Trademark No. 000039800 of April 1, 2003, in classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41, 42 was also submitted to the Panel.

The Complainant underlines that these marks were registered much before than Respondentís registration of the Disputed Domain Names and that the trademark LEGO is among the best-known trademarks in the U.S. and around the world. The Complainant also owns numerous registrations for its LEGO marks in more than 100 countries throughout the world, including registrations in countries throughout Europe, South America, Asia and Africa.

Furthermore, the Complainant points out that the LEGO trademark and brand have been recognized as being famous, quoting and annexing an extract from the book The Worldís Greatest Brands, published by MacMillan Business in 1996, showing that LEGO is considered one of the most famous trademarks and brands in the world. The LEGO Group has expanded its use of the LEGO trademark to computer hardware and software, books, videos and computer controlled robotic construction sets.

Since 1973, Complainant has used LEGO Systems, Inc. as the name of its corporate entity in the United States, which includes its LEGO mark as part of the name. Additionally, starting in 1992, Complainant has used the mark LEGO SYSTEM for many of its construction toy products and, through the LEGO Group, exclusively advertised and promoted its LEGO SYSTEM products throughout the United States and the world. The Panel was provided with examples of packaging Complainantís LEGO SYSTEM products and a description of the LEGO System published on the website "www.lego.com" and informed that the LEGO Group spent at least several million dollars to promote and advertise its LEGO SYSTEM products.

According to the complainant, the Respondent cannot claim or show any rights or legitimate interest in the domain names that are superior to Complainantís rights. Since Complainantís Marks are well-known marks, the Complainant asserts that the Respondent cannot demonstrate that it was unaware of Complainantís Marks at the time of registration of the domain names. Respondent has no rights in these marks, and according to the Complainant the only reasons why the Respondent could have wanted to register domain names is the intention to trade upon the fame of the Complainantís Marks by selling the Disputed Domain Names for substantial commercial gain.

According to the Complainant, Internet users are likely to believe that the Disputed Domain Names are related to, associated with, or authorized by Complainant and because of this association with Complainantís Marks, that Respondent saw the value in the Disputed Domain Names and registered them for purposes of selling them.

Furthermore, there exists no relationship between Complainant and Respondent that would give rise to any license, permission, or authorization by which Respondent could own or use any of the Disputed Domain Names, which are identical or confusingly similar to Complainantís Marks.

The Complainant also points out that the Respondent is not commonly known by the Disputed Domain Names and is not making legitimate non-commercial or fair use of the Disputed Domain Names. Indeed, Respondentís only purpose in registering the Disputed Domain Names was to trade upon the fame of Complainantís Marks by selling the Disputed Domain Names for commercial gain.

The Complainant asserts that both at the time of registration and continuing to the present, the Respondent has sought to profit from an unauthorized association with Complainantís Marks by selling the Disputed Domain Names for substantial commercial gain. As an indication to the intention to sell the domain names at the time of registration, the Complainant draws the Panelís attention also to the fact that under the heading "Organization" for each of the Disputed Domain Names the Respondent advertises: "This Domain for Sale."

In addition to registering the Disputed Domain Names in bad faith, according to the Complainant the Respondent has used the Disputed Domain Names in bad faith since he has offered to sell the <legosystems.com> and <legosystem.com> domain names for $10,000 each to Complainant as a response to a cease and desist letter sent on June 4, 2003. The Panel was provided with the copy of the relevant correspondence.

The Complainant makes reference in particular to the Respondentís email of June 18, 2003, where it is stated that the domain names were not in use, which - according to the Complainant - shows that Respondentís only purpose in registering the Disputed Domain Names was and is to sell them. In the same email the Respondent stated: "We are at this time in the process of identifying the 25 - 50 largest current and likely future online and offline sellers of LEGO ® Systems and products, including the large retailers and catalog companies Wal-Mart, Toys R Us, K-Mart, Amazon.com, et. Upon completion of our research in the next few days, Invitations to Bid (ITBs) for LegoSystem.com and LegoSystems.com will go by Express mail and e-mail to these identified targets." Respondent further admits his belief that outside of <lego.com>, the Disputed Domain Names <legosystems.com> and <legosystem.com> are "likely the two most critically important and valuable ĎLEGO®í Internet addresses in the world."

The Complainant further points out that Respondentís bad faith use of the domain names is not limited to its offer to sell them to Complainant and/or other third parties such as "large retailers and catalog companies." Respondent is in the business of registering domain names for purposes of selling the domain names for substantial commercial gain. As of August 26, 2003, Respondent has over 550 domain names for sale on <afternic.com>. These include two of the domain names: <legosystems.com> and <legosystem.com>.

Respondent opines on <afternic.com> that both <legosystems.com> and <legosystem.com> have an actual value of "$50,000+," but offers to sell each of these two Disputed Domain Names for $15,000, which includes a minimum offer of $5,000. On these pages, the Respondent advertises the value of the Disputed Domain Names based upon the inclusion of the famous LEGO mark describing the purchase of both of the domain names <legosystems.com> and <legosystem.com> as a "rare, excellent, affordable opportunity to profit from huge $1.2 BILLION+ Inter/National markets for popular Lego [sic] (1,000,000+ Google hits!) products." The Complainant highlights that the offering for sale of the two domain names is clear evidence that Respondent is using the Disputed Domain Names in bad faith.

Amongst the domain names offered for sale by the Respondent, the Complainant quotes <pbschannel.com>, <intelchips.com>, <amexstocks.com>, and <amexcards.com>. In doing so, as he did with the two Disputed Domain Names set forth supra, Respondent touts that value of the domain names based upon the inclusion of the respective well-known registered trademarks.

According to the Complainant, further evidence of Respondentís bad faith can be seen in the registration of the misspelled Disputed Domain Name <legosysems.com>. Respondent explained in the June 18, 2003 e-mail to Complainant that the domain name <legosysems.com> was "a misspelled registration error" and thus would be transferred to Complainant should Complainant purchase the other two Disputed Domain Names for the combined amount of $20,000.

However, the fact that all of the Disputed Domain Names were registered on the same day suggests that the Respondentís registration of <legosysems.com> was not done in error but was instead registered for purposes of selling it, as was Respondentís intent with the other two Disputed Domain Names. Also, the Complainant underlines that the Disputed Domain Names are confusingly similar enough so that Respondent could either use or offer this confusingly similar misspelled Disputed Domain Name for sale to a third party for purposes of diverting unwary Internet users to another site, which is also a bad faith use of the Disputed Domain Name.

B. Respondent

The Respondent asserts that while the Complainant has made an adequate case for their rights in and to the trademark LEGO," according to his understanding it has no legal or other rights to "Lego System/s" since two trademark registrations in US in the name of the Complainant have expired, also providing the Panel with the Respondentís interpretation of the "legal principle of estopel" (rectius "Trademark Action Estoppel").

According to this interpretation the Complainant "has no rights any greater than anyone else to Lego System/s, Complainant has in no way satisfied the first element of the Policy that the Disputed Domain Names are either identical or confusingly similar to Complainantís Marks. In fact, Complainantís reckless and unsupportable actions towards Respondent are clearly an act of attempted reverse domain name hijacking."

Furthermore, in view of the Respondent it is impossible for Internet users to believe that the domains are in any way related to, associated with, or authorized by Complainant, since there has never been any website of any type associated with any of the domain names.

With reference to the rights and legitimate interest, the Respondent indicates that since the Complainant itself has no legitimate interest or rights to these domains, Respondent does not need any license, permission, or authorization in order to own said domains and has also the absolute legal right to sell these domains for commercial gain.

The Respondent informs the Panel that he is a California State Licensed Real Estate Broker 13 and given their pervasive use in commerce nationally and internationally, Internet domain names are legally and factually business opportunities (as even the "www.lego.com" site itself confirms) has the full, complete, and unquestioned legal right to buy, list, advertise, market, negotiate, and sell domains for both its clients and for its own account.

The Respondent further states, with reference to the fact that he is engaged in the sale of domains, that such brokering and selling of domains is as legal and as honorable as the Complainantís own business.

Referring to the offer for sale on Afternic, the Respondent states that the marketing the domain names in this manner "is normal and usual practice" and no trading on the fame of trade/service marks occurs in such advertising/marketing efforts. The Respondent informs the Panel that absolutely none of the entities (PBS, Intel, Amex) - and no other company but the Complainant - has ever indicated that they have a problem with Respondentís registrations.

The Respondent concludes that "only good faith exists, has existed, and will continue to exist at all times with regard to Respondentís actions concerning these domains and therefore it is clearly evident that Complainant has in no way met any of the requirements of the Policy for a transfer of the said domains from Respondent to Complainant."

 

6. Discussion and Findings

According to paragraph 15(a) of the Rules: "A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and

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

(iii) that the domain name has been registered and is being used in bad faith.

6.1. Domain name identical or confusingly similar

The Complainant has provided evidence of ownership of several trademark registrations in different classes for LEGO and LEGO and design in Unites States, including the registration No. 1,018,875 of August 26, 1975, in class 28, No. 1,026,871 of December 9, 1975, in class 28, No. 1,535,046 of April 18, 1989, in class 9, No. 2,065,901 of May 27, 1997, and the Community Trademark registration No. 000039800 of April 1, 2003, in classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41, 42.

The Panel acknowledges that the name LEGO Systems, corresponds to a trademark that has been used by the Complainant since 1992 as per documents attached to the Complaint and that - as of 1973 - LEGO Systems Inc has been the name of the Complainantís Corporate entity in United States. The Panel finds that the mere addition by the Respondent of the words "system," "systems" and "sysems" to the LEGO well-known trademark, notwithstanding the relevant prior use of an identical trademark and company name by the Complainant, would anyway not be sufficient to exclude the confusingly similarity of the signs. See Kirkbi AG v. Michele Dinoia, WIPO Case No. D2003-0038 (<legoclub.com> confusingly similar to LEGO mark); see also Disney Enterprises, Inc. v. John Zuccarini, et. al., WIPO Case No. D2001-0489 and Nokia Corporation v. Nokiagirls.com, WIPO Case No. D2000-0102 (disputed domain name is confusingly similar to the trademark of the complainant despite addition of generic words).

Furthermore the suffix "com" is to be considered immaterial in the evaluation of the confusingly similarity between the Complainantís trademark and the domain names, since is instrumental to the use in Internet.

In view of the above, the Panel finds that the Complainant has proved that the domain name is confusingly similar to the trademark of the Complainant according paragraph 4(a)(i) of the Policy.

6.2. Rights and legitimate interest

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy that:

(a) He has made 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 prior to the dispute;

(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or

(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

In the instant case, the Domain Names are confusingly similar to the Complainantís well-know trademark and identical to one of the Complainantís company names and they are not descriptive of the generic type of goods sold by or the business of Respondent. The Respondent failed to demonstrate that its business, as a whole, is commonly known by the Domain Names at issue.

Furthermore, the Panel finds that the published proposal to sell the domain names on the Afternic website is not to be considered a bona fide offering of goods nor a legitimate non-commercial and fair use of the domain names, since the only aim of the Respondent, as even stated in the Response submitted to the Panel, was to generate a commercial gain.

The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the domain names, according to paragraph 4(a)(ii) of the Policy.

6.3. Registration and Use in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holderís documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holderís website or other online location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holderís website or location.

The Complainantís trademark is well known in the United States and in many countries of the world. Therefore, the Panel finds that the Respondent knew or should have known of the existence of the LEGO well-known trademark at the time of the registration of the domain names. Besides, the conduct of Respondent in registering the domain names and the statements rendered in the Response with reference to the long standing commercial activities of the Complainant are indicative that Respondent registered them in bad faith. See also, e.g., San Rio Co. Ltd v. DLI, WIPO Case No. D2000-0159 (act of registering domain name identical to Complainantís mark led to finding of bad faith).

As decided in Chanel, Inc. v. Buybeauty.com, WIPO Case No. D2000-1126, with reference to a constructive prior knowledge of the trademark by the Respondent "Given this awareness, it is evident that the registration and use of the domain name was in bad faith. See also Cellular One Group v. Paul Bryan, WIPO Case No. D2000-0028. The fact that Respondent proceeded with the registration of a domain name that incorporates the mark in its entirety supports a finding of registration and use in bad faith. Cortefiel, S.A. v. Miguel Garcia Quintas, WIPO Case No. D2000-0140."

The Panel finds the paragraph 4(a)(i) applicable in the present case since the Respondent has requested a "tax-deductible $20,000 total amount for both domains," (<legosystem.com> and <legosystems.com>) which is a consideration clearly in excess of the holderís documented out-of-pocket costs directly related to the domain name notwithstanding the fact that the Respondent has indicated that <legosysems.com> would have been transferred "at no additional cost in the event of their successful purchase."

The Panel finds the paragraph 4(a)(ii) also applicable in the present case since the Respondent is preventing the rightful owner of a trademark from reflecting the mark in a corresponding domain. Respondent is to be considered as engaged in a pattern of such a conduct as it has registered a considerable number of other infringing domain names including <pbschannel.com>, <intelchips.com>, <amexstocks.com>, and <amexcards.com>. In addition to the above, Respondentís actions of registering the three Disputed Domain Names, all of which contain Complainantís Marks, is another significant circumstance evidencing bad faith under paragraph 4(a)(ii) of the Policy. See Disney Enterprises, Inc. v. John Zuccarini, et. al., WIPO Case No. D2001-0489; see also The Price Co. v. Price Club, WIPO Case No. D2000-0664 ("The selection of three domain names that are virtually identical to complainantís famous mark demonstrates that these were abusive registrations contrary to the policy").

Also in light of the fact that LEGO trademark is well-known in many countries, it is not possible for the Panel to conceive any legitimate, actual or contemplated, active use by Respondent of the domain names that would not constitute an infringement of Complainantís rights in Complainantís Marks. See along the lines Veuve Clicquot Ponsardin v. The Polygenix Group Co., WIPO Case No. D2000-0163.

In view of the above, the Panel finds that the Respondent registered and used the domain name in bad faith, according to paragraph 4(a)(iii) of the Policy.

 

7. Decision

In light of the foregoing, the Panel decides that the domain names registered by the Respondent are confusingly similar to the Complainantís trademark, that the Respondent has no rights or legitimate interests in respect of the Domain name and that the Complainant has established that the domain names have been registered and are being used in bad faith.

Accordingly, the Panel concludes that the domain names, <legosystem.com>, <legosystems.com> and <legosysems.com> should be transferred to the Complainant.

 


 

Luca Barbero
Sole Panelist

Dated: December 12, 2003