The Complainant is Legatum Limited, LLC of Dubai, United Arab Emirates, represented by Akin, Gump, Strauss, Hauer & Feld LLP, United States of America.
The Respondent is Joost Bonsen of Cambridge, Massachusetts, United States of America.
The disputed domain names <illegatum.com>, <illegatum.net>, and <illegatum.org> (“the Domain Names”) are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2010. On March 30, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On March 31, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 April 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 21, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 22, 2010.
The Center appointed Dawn Osborne as the sole panelist in this matter on April 28, 2010. The Panel finds that it was properly constituted. 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 Complainant is a global commercial investment company. The Complainant owns registered trade marks for LEGATUM, including a registration in the United States and has used the mark since 2006. The Respondent was engaged in 2007 to provide services to the Complainant and the Domain Names were registered in February 2008 while he was still working for the Complainant. The Domain Names are being used for links to third party businesses not associated with the Complainant.
The Complainant's submissions can be summarised as follows:
1. The Complainant is a global investment company founded in 2006. It has used the mark LEGATUM continuously since that time including in the United States and is commonly known by this name.
2. LEGATUM has no meaning other than as a trade mark and trade name of the Complainant. The Complainant has registered trade marks for LEGATUM including a United States registration. It is a well-known mark.
3. The Complainant is the owner of the domain names <legatum.com>, <legatumcapital.com>, and <legatumventures.com>.
4. The Domain Names are confusingly similar to the LEGATUM trade mark and the Complainant's domain names. The mere addition of “il” to the distinctive trade mark LEGATUM does not obviate any likelihood of confusion.
5. Respondent has no rights in the LEGATUM mark or name and has never been authorised to use it.
6. The Domain Names all resolve to the same click-through advertising page which is unrelated to the Complainant and misleading.
7. In 2007 the Complainant engaged the Respondent to provide services. However, the Complainant terminated its arrangement with the Respondent who has had no relationship with the Complainant since April 2008. In 2009 the Complainant discovered that the Respondent had registered eleven domain names containing LEGATUM. Following correspondence on the issue the Respondent allowed these domain names to expire. Since that time the Complainant discovered that the Respondent had registered the Domain Names in February 2008 while he was still working for the Complainant without its authority. Accordingly the Respondent was aware of the Complainant's rights when he registered the Domain Names. The Respondent registered and used the Domain Names in bad faith.
8. The Respondent did not respond to an invitation to transfer the Domain Names to the Complainant on amicable terms and renewed the Domain Names in February 2010.
The Respondent did not reply to the Complainant's contentions. On March 29, 2010, he merely sent an email to the Complainant's legal representatives upon receipt of notice of the Complaint stating “[m]y interest in those domains ha[s] expired or will soon and I have no ongoing interest in them at all. This is something I have explicitly stated in the past. Please stop harassing me.”
According to paragraph 4(a) of the Policy, the Complainant must prove that:
- The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the Domain Names; and
- The Domain Names have been registered and are being used in bad faith.
The Domain Names consist of the Complainant's LEGATUM registered mark and prefix “il” (plus the generic top level domains “.com”, “.net” and “.org” respectively which are ignored for the purposes of the Policy). LEGATUM has no meaning in the English language or American English. It appears that the prefix “il” has been added as a play on the English words “legal” and “illegal”. Due to the familiarity of English speakers with these two related words and the distinctive quality of LEGATUM in the English language the Panel holds that the Domain Names are confusingly similar to a trade mark in which the Complainant has rights for the purpose of the Policy. The addition of the prefix “.il” is not sufficient to prevent this confusing similarity.
The Respondent has not filed a Response, does not appear to have any trade marks associated with “Legatum”, is not commonly known by this name and does not have any consent from the Complainant to use this name. It is not making non commercial or fair use of the name. Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Names.
The Complainant alleges that the Domain Names were registered while the Respondent was working for the Complainant without the Complainant's knowledge or consent, and the Respondent has not disputed the Complainant's assertions. As such the Panel finds that the Respondent was aware of the Complainant and registered the Domain Names in the light of that knowledge.
Paragraph 4 (b) of the Rules sets out non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including circumstances where, by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
It does appear that the Respondent has intentionally attempted to attract and cause confusion amongst Internet users between the links and content accessed through the Domain Names and the Complainant's trade mark for commercial gain.
Accordingly, the Panel finds that the Domain Names have been registered and used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <illegatum.com>, <illegatum.net>, and <illegatum.org> be transferred to the Complainant.
Dawn Osborne
Sole Panelist
Dated: April 30, 2010