WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Whois Privacy Protection Service, Inc. / Domains Secured, LLC
Case No. D2011-1857
1. The Parties
1.1 The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
1.2 The Respondent is Whois Privacy Protection Service, Inc. of Bellevue, Washington, United States of America (“United States”) / Domains Secured, LLC of Parma, Ohio, United States.
2. The Domain Name and Registrar
2.1 The disputed domain name <mycitylego.com> (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2011 against Whois Privacy Protection Service, Inc. At the time that the Complaint was filed, the public WhoIs database for the Domain Name recorded the registrant of the Domain Name as Whois Privacy Protection Service, Inc. Whois Privacy Protection Service, Inc is the “privacy service” provided by the Registrar.
3.2 On October 27, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 31, 2011, the Registrar transmitted by email to the Center its verification response disclosing the registrant to be Domains Secured, LLC, a further domain name “privacy service”. The Center sent an email to the Complainant on November 3, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant, if it so wished, to submit an amendment to the Complaint.
3.3 On November 3 and 4, 2011, the Center received emails from Mr. Schaefer of “BrainHost.com” who, although not included in the list of email addresses to which the Center’s notification has been sent, appeared to challenge the information provided by the Registrar as to the proper registrant of record for the Domain Name. On November 4, 2011, the Center acknowledged receipt of Mr. Schaefer’s emails and invited the Registrar to comment on their content. On the same date, the Registrar sent an email communication which read as follows:
“We have received the notification from Mr. Schaefer, but our understanding of the UDRP policy is that we (as the registrar) are required to lock the domain to maintain the status quo of the domain (no changes are to be made) upon receipt of the verification request.”
3.4 The Complainant filed an amendment to the Complaint on November 8, 2011. The Center verified that the Complaint together with the amendment to 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”).
3.5 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 November 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 5, 2011.
3.6 The Center appointed Matthew S. Harris as the sole panelist in this matter on December 9, 2011. 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.
3.7 On December 16, 2011 the Panel took the unusual but not unprecedented step of issuing an Administrative Panel Procedural Order (“Procedural Order”) directed to the Registrar. It noted that this was not the first occasion on which the proceedings had been begun in relation to a domain name registered with the Registrar in which BrainHost.com appeared to have been involved in the registration and the domain name was registered in the name of Domains Secured, LLC.
3.8 The Procedural Order recorded the Panel’s preliminary view that the Registrar had knowingly permitted users of its registration services to knowingly enter registration details behind its privacy service that it knew or ought to have known are false. It also notified the Registrar that as matters stood, the Panel was likely to make comments in its decision that were critical of the Registrar and might also invite the Center to bring the Registrar’s conduct to the attention of Internet Corporation for Assigned Names and Numbers (ICANN). Therefore, as a matter of fairness to the Registrar, the Procedural Order gave the Registrar the opportunity to file a submission in respect of this issue.
3.9 The full text of the Procedural Order is appended at Annex A to this decision.
3.10 In accordance with the Procedural Order the Registrar filed a submission on December 21, 2011. Given the contents of that submission and in a spirit of openness, that submission is set out in full at Annex B to this decision. The Panel informed the parties that in light of the comments of the Registrar and in order to address the same the Panel would extend the time for issuing a decision in this matter until December 29, 2011.
3.11 On December 22, 2011 the Center received a further email from Mr. Schaefer of BrainHost.com. It read as follows:
“Hello,
We would like to present parties with the most up to date ownership information for the domain, mycitylego.com
Owner Name: Terri Fetzer
Owner Address: […]
Owner Address 2: Santa Rosa, CA 95407 (USA)
Owner Phone: […]
Owner E-mail: […]
Please let us know if any more information is required for the Panel
Thank You.”
4. Factual Background
4.1 The Complainant is very well known. It is a company based in Denmark which for many years has supplied what it calls “construction toys”, but many others would describe as simply “Lego” or “Lego bricks”, under the LEGO brand. The revenue for the Lego group of companies in 2009 was more than USD 2.8 billion. One of the Complainant’s product lines is “Lego City”.
4.2 The Complainant is the owner of a large number of trade marks that comprise or incorporate the term “Lego”. They include:
(i) United States registered trade mark no 1,018,875 filed on September 17, 1974 for the word mark LEGO in class 28; and
(ii) Community trade mark no 39800 filed on April 1, 1996 for the word mark LEGO in classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41 and 42.
4.3 The Complainant has what it describes as a “strict policy” that all domain names containing the word “Lego” should be owned by the Complainant. It is presently the owner of more than 1,000 such domain names.
4.4 According to the publically available WhoIs database detail for the Domain Name, the Domain Name was registered on 25 April 2011. If the recent email from BrainHost.com is to be believed, the person who ultimately controls the Domain Name in one “Terri Fetzer”. However, as is discussed in greater detail in the procedural history section of this decision and under the heading “Registrar Conduct” below, it would appear that behind the privacy service of the Registrar an additional privacy service was recorded as the registrant of the Domain Name.
4.5 Since registration the Domain Name has been used in connection with a website used to represent product offers taken from eBay. Those entries appear to be in relation to genuine Lego products, but the page also carries advertisements that are unconnected to those products. The Complainant refers by way of example to a side banner advertisement for a pet care pharmacy.
4.6 The webpage operating from the Domain Name contained no disclaimer and at the bottom carried the words:
“© 2011 Privacy Policy | Web Hosting proudly provided by Brain Host”
4.7 More recently that webpage has been replaced by a page with the words “This Account Has Been Suspended”.
5. Parties’ Contentions
A. Complainant
5.1 The Complaint is lengthy but the way the Complainant constructs its case is straightforward. So far as confusing similarity is concerned, it claims that the dominant part of the Domain Name is the Complainant’s LEGO trade mark and that the fact that the Domain Name includes the words “city”, which is used by the Complainant in relation to its products, adds to the likelihood of confusion.
5.2 On the issue of rights or legitimate interests it states that the Respondent’s use of the Domain Name is not authorised by the Complainant. It claims that although the products promoted from the website operating from the Domain Name are new and used Lego products, the use of the Domain Name in this case does not satisfy the conditions set down in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (the “Oki Data” case), as summarised in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition.
5.3 So far as the Oki Data conditions are concerned, the Complainant calls into question whether the Respondent can be classed as a reseller at all, and suggests that its real interest is in repacking eBay activity with a view to profiting from sponsored links unrelated to Lego that are also presented on the page (relying, inter alia, in this respect upon the decision in LEGO Juris A/S v. Andrew Vierling, WIPO Case No. D2010-1913). Further it contends that there is a failure in this case by the Respondent to include any form of disclaimer or other information on the website that sufficiently describes the relationship (or in this case the lack of relationship) that the Respondent has with the Complainant.
5.4 So far as bad faith is concerned, the Complainant summarises its case as follows:
“... LEGO is a famous trademark worldwide. It is highly unlikely that the Respondent was not aware of the rights the Complainant has in the trademark and the value of said trademark, at the point of the registration. There is no connection between the Respondent and the Complainant. By using the Domain Name the Respondent is not making a legitimate non-commercial or fair use without intent for commercial gain but is misleadingly diverting consumers for his own commercial gain.”
B. Respondent
5.5 The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of any person to lodge a Response.
6.2 Notwithstanding this default, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
6.4 Before addressing each of these requirements, the Panel will address the reasons for issuing a Procedural Order in this case and the Registrar’s response in relation to the same.
A. Registrar Conduct
6.5 This is yet another case that highlights the difficulties that domain name “privacy services” cause for the Policy. It is frequently said that the reason why such services are problematic is that the Policy was devised before privacy services became a common part of the domain name landscape and that the Policy does not adequately provide for them. However, strictly this is not a problem in the drafting of the Policy. It primarily lies in the fact that the Registration Accreditation Agreement (the “RAA”) between ICANN and each registrar fails to describe to what extent and in what circumstances such services can be legitimately provided. Consequentially there is no direct guidance in the RAA or the Rules as to a registrar’s obligations in relation to domain names that become subject to the Policy.
6.6 There is an argument that privacy services are inherently illegitimate given a registrar’s obligations under paragraphs 3.3 , 3.7.7 and 3.7.8 of the RAA to maintain a publically accessible database in which the name and contact details of the registered holder of a domain name is maintained. Further these services can be misused to mask cybersquatting conduct.
6.7 However, there are arguments to the contrary. So far as the terms of the RAA are concerned, this appears to be based on an assumption that privacy service providers can register a domain name and then sub-licence the domain name to the “actual” registrant (see for example para 3.2 of the ICANN Whois Task Force 2 Initial Report). Further, many maintain that these services serve a useful legitimate purpose including protection against spam.
6.8. It is neither useful nor necessary for the Panel to participate in or add to this debate. This is particularly so since as far as this Panel is aware ICANN has never taken action against a registrar offering such as service, and the reality is that such services are now a common place feature of the domain name landscape.
6.9 In any event, a common practice has developed to which reputable registrars offering such services appear to subscribe whereby they disclose the details of the underlying registrant to the Center during UDRP proceedings in response to the Center’s verification request. The information is then provided to a complainant who can if it wishes amend its complainant to take into account such information. It is a practice that is perhaps driven by a wish by registrars to avoid the imposition of liability under sub-paragraph 3.7.3.3. of the RAA. Nevertheless, from a practical perspective it to some extent ameliorates the concern that such services can be used by cybersquatting registrants with complete anonymity.
6.10 It was the practice that was adopted in this case by the Registrar. Initially the publically available WhoIs database for the Domain Name recorded details for the privacy service offered by the Registrar. Further details were then disclosed by the Registrar in response to the Center’s verification request.
6.11 However, for this practice to operate at all, it requires a registrar to control the privacy service in question and/or to have access to accurate underlying registrant data. It can be defeated if behind the registrar’s service there is merely recorded the name of another third party privacy service (the so called “Russian doll” scenario). Further, there appears to be no legitimate justification for such “Russian doll” registrations. Indeed, panels have concluded that a Russian doll registration is evidence of bad faith. This is to be compared with the more nuanced position of panels when it comes to the use of a single domain name privacy service (see, for example the discussion in PepsiCo, Inc. v. Whois Privacy Protection Service, Inc., Abdulah Shmre, WIPO Case No. D2011-0016).
6.12 In Four Seasons Hotels Limited v. Internet bs Corporation/ Private Whois Service, WIPO Case No. D2009-1657, this Panel made the following comments about registrars that refused to disclose the details of the underlying registrant behind their privacy services:
“6.17 From a practical perspective it is important that those who offer WhoIs privacy services operate in this way [i.e. disclose the underlying registrant to the Center in response to a verification request]. A refusal by a registrar to disclose to a requesting Policy provider the underlying owner or holder of a domain name (and their contact details) hidden behind a “privacy service” in proceedings under the Policy, involves a potential threat to the operational integrity of the Policy. Registrars who operates in this fashion potentially provide a tool that enable cybersquatters to conduct their activities in secrecy and to help them avoid the extent of their abusive activities becoming public; thereby depriving complainants, potential complainants and panels with information that is potentially highly relevant to the assessment of abusive behaviour. For a registrar to participate in facilitating or aiding these activities risks undermining the operation of the Policy. For the reasons already given, the Panel considers this to be contrary to the provisions of the Policy. It is undoubtedly contrary to its spirit.”
6.13 These comments about providing a tool and the undermining of the operation of the Policy, equally apply where a registrar allows domain names to be registered in the name of third party privacy services, whether or not behind the registrar’s own privacy service. The situation is perhaps not quite so bad as if the domain name had been registered in a name that is so obviously false as “Mickey Mouse” or “Donald Duck”. Presumably (although this is not always clear) the privacy service is a real legal entity in its own right. Nevertheless, in most cases so far as the potential complaint is concerned there is no practical difference as it cannot establish who is really behind that domain name. Therefore, for a registrar to knowingly allow this to happen, raises a question as to whether it is in compliance with the obligation placed upon it by paragraph 3.7.7.8 of the RAA:
“In the event Registrar learns of inaccurate contact information associated with a Registered Name it sponsors, it shall take reasonable steps to correct that inaccuracy.”
More generally it also calls into raises questions as to a registrar’s commitment to the proper operation of the Policy.
6.14 In the present case it would appear that when the Registrar disclosed the details of the underlying registrant in this case, it provided details of a third party privacy service, Domains Secured, LLC. That this was the case is arguably clear from the very name of the registrant disclosed and could be verified from the briefest of Internet searches. Further, this was not the first occasion in which Domains Secured, LLC has been involved in proceedings under the Policy. In particular, in InfoSpace, Inc. v. Domains Secured, LLC, WIPO Case No. D2011-1529, Domains Secured, LLC was the recorded registrant of the domain name <mydogpile.com>, the domain name in issue in that case.
6.15 There are a number of interesting parallels between the current case and the InfoSpace case, not least that both involved allegations of bad faith registration of a domain name by a registrant who has combined the word “my” with the trade mark of a third party. However, for present purposes, what is significant is that in the InfoSpace case, the registrar was the Registrar, the Complainant complained about the underlying registrant’s use of the Domains Secured, LLC privacy service and that Mr. Schaefer of BrainHost.com also engaged in correspondence with the Center in relation to the domain name in issue. In short, following the InfoSpace decision it is difficult to believe that the Registrar was not aware of the nature of Domain Secured, LLC’s activities. And yet it appeared in this case to have allowed a domain name to be registered in that name, even though it should have known that this was not the true underlying registrant and that this fact might prevent the disclosure of that registrant in proceedings under the Policy.
6.16 Therefore, prima facie this was a case where the Registrar’s own conduct was likely to be subject to criticism in the published decision and therefore out of procedural fairness to the Registrar it would be given an opportunity to comment. This was offered to the Registrar in the Procedural Order and the Registrar took advantage of the opportunity to do so.
6.17 There are parts of the Registrars submission that suggest that the Registrar misunderstands the criticism that is levied against it. First, it claims that the Panel is claiming that the Panels has asserted that “there is some form of relationship, between ‘eNom, Brainhost.com and the Registrant.’” However, there is no suggestion in the Procedural Order of any “relationship” that is additional to that of the ordinary registrar-registrant relationship. Second, the Registrar makes various statements throughout its submission that assume that the Panel was likely to criticise the fact that the Registrar offered its own privacy service. However, again this is misconceived. As paragraph (vi) of the recitals to the Procedural Order make clear, it is not the Registrant’s own privacy service that is in issue but whether it has allowed the name of a third party service to be recorded in its own register knowing that name to be false.
6.18 Nevertheless, what does seem to be clear is that the Registrar believes that the issuing of a Procedural Order directed to it and criticisms of it in any decision are not proper under the Policy and that in any event it has done nothing that is worthy of censure.
6.19 In the Four Seasons case identified above and expressly referred to in the Procedural Order, the Panel addressed the question of whether it is appropriate to comment upon registrar conduct and to being that conduct to the attention of ICANN. In particular, it commented as follows:
“6.21 The Registrar appears to contend that the reference to ICANN falls outside of the remit of the Panel. The Panel disagrees. The Panel accepts that a panel has no power to impose its interpretation of the operation of the RAA on either ICANN or registrars. Panels also have no power to impose any form of sanction on a registrar even in the face of the most egregious misconduct. The only positive powers specifically granted to panels are to decide the fate of domain names the subject matter of proceedings under the Policy and under paragraph 10 of the Rules to conduct those proceedings in such manner as they consider appropriate in accordance with the Policy and Rules. Registrar compliance is ultimately a matter for ICANN.
6.22 Nevertheless, both panels and the Center have a clear interest in the effective operation of the Policy that they administer. Should it come to their attention that the actions of specific registrars threaten the integrity of the Policy (regardless of whether or not those actions may ultimately be in breach of its terms), it is appropriate for them to bring this to ICANN’s attention. Insofar as a panel requires the authority of the Policy or Rules to do this, paragraph 10 of the Rules provides it.
6.23 Examples, of past communication between the Center and ICANN in relation to registrar conduct include:
(i) The Center’s letter of December 11, 2009 to ICANN in respect of the activities of the registrar Nameview;
(ii) The Center’s letter of April 9, 2009 to ICANN in respect of the activities of the registrar Lead Networks Domains Pvt. Ltd.; and,
(iii) The Center’s letter of April 16, 2008 to ICANN in respect of various registrar practices.
6.24 Examples of references to ICANN by panels in cases under the Policy include:
(i) Loders Croklaan B.V. v. Loderscroklaan.Com/ Loders Croklaan, Paul Bakker, WIPO Case No. D2009-1216;
(ii) Funix B.V. v. Domain Administrator, WIPO Case No. D2009-1048;
(iii) Société Anonyme des Eaux Minérales d’Evian (SAEME) v. Private Whois Escrow Domains Private Limited and Pluto Domain Services Private Limited, WIPO Case No. D2009-0080;
(iv) FOSS A/S, FOSS NIRSystems INC v. fossnirsystems.com c/o Whois IDentity Shield /Admin, Domain, WIPO Case No. D2008-1256;
(v) General Electric Company v. Marketing Total S.A, WIPO Case No. D2007-1834;
(vi) Weyerhaeuser Company v. Eurobox Ltd., Parallam, DP Manager / “Weyerhaeuser Company”, WIPO Case No. D2007-1792;
(vii) Mrs. Eva Padberg v. Eurobox Ltd., WIPO Case No. D2007-1886;
(viii) NAF NAF v. Hostmaster Hostmaster, WIPO Case No. D2007-1175; and
(ix) Therapro, Inc. v. Administrator, Domain/ Therapro, WIPO Case No. D2006-0883;”
6.20 Since that case there have been many other examples of panels suggesting that registrar conduct be brought to the attention of ICANN. Some have involved this Panel, but there are other cases where differently constituted panels have adopted a similar course. They include:
(i) Ezeego One Travels and Tours, Ltd. v. Domain Admin, WIPO Case No. D2010-1346;
(ii) Onduline v. Private Registration Do, WIPO Case No. D2011-1129;
(iii) Petroleo Brasileiro S.A - PETROBRAS v. Private Registration, WIPO Case No. D2011-1250; and
(iv) Tyson Foods, Inc. v. Bargin Register, Inc. - Client Services, WIPO Case No. D2011-1622.
6.21 In short, this now appears to be a widely accepted and adopted practice when panels come across registrar practices that threaten the integrity of the Policy.
6.22 The Registrar objects to the Panel in the present case potentially “using his position to admonish non-party Registrars as well as the privacy services that they offer and to advance novel propositions”. There are a number of separate claims mixed up in this single sentence. First, the Registrar appears to reject the proposition that registrars can or should be the subject of criticism in panel decisions. However, there is little or no reasoning to support that claim. Also as is clear from the many cases cited in this decision, this Panel (and many other differently constituted panels) fundamentally disagree with the Registrar in this respect. Second, the sentence assumes that its own provision of privacy services is being criticised when, as already has been explained, this misunderstands the nature of the Procedural Order.
6.23 The Registrar also seems to be object as a non-party to being on the receiving end of a Procedural Order in this case. It is difficult sensibly to address this aspect of the Registrar’s submission as it seems to merge into a generalised attack on the Panel. For example it complains about an “agenda” on the part of the Panel, but what that alleged “agenda” is supposed to be is not explained. Further, there is a complaint about lack of legal authority for proposition expressed in the Procedural Order, but again those alleged improper propositions are not identified.
6.24 However, for the avoidance of doubt the Panel agrees with the Registrar (if that is what the Registrar contends) that the Registrar’s position as a non-party to the proceedings is of some significance. In particular, a panel has no express power under the Policy or the Rules to require a registrar or any third party to submit a submission in proceedings under the Policy. Paragraph 12 of the Rules expressly empowers a panel to request further submissions, but this only applies to parties to the proceedings. It is for this very reason that paragraph (ix) of the recitals of the Procedural Order made it clear that the Registrar was not obliged to respond to the Procedural Order and the operative provisions of the Procedural Order were expressed in permissive and not mandatory terms.
6.25 Nevertheless, to publically criticise a registrar for conduct that potentially undermines the operation of the Policy and to invite a UDRP service provider to refer that conduct to ICANN are serious matters. It is for that very reason that the Panel was of the view that as a matter of procedural fairness that the Registrar should be provided an opportunity in this case to address those criticisms in advance. It is also that very seriousness that might lead a panel to draw an adverse inference from a third party’s decision not to take advantage of that opportunity.
6.26 So far as the factual points put to the Registrar in the Procedural Order are concerned, apart from confirming the obvious fact that initially the Domain Name was registered with the Registrar’s own privacy service, the Registrar contentions in this respect are to be found in just two sentences as follows:
(a) “The Registrant [i.e. Domains Secured] may or may not be a privacy service on its own”; and
(b) “The nature of the Registrant’s business is unknown to the Registrar”
To this the Registrar then adds the statement that the “Registrar has no duty to investigate the nature of [the Registrant’s] business”.
6.27 The difficulty with these assertions of fact is that although they might have been understandable had this been the first case involving Domains Secured and the Registrant, they come across as implausible following the InfoSpace, Inc. decision. The Vice President of Business and Legal Affairs of the Registrar has provided a statement of truth in relation to the assertions made in the Registrar’s submission and so the Panel accepts that these statements have been honestly made. However, if this is so, it suggests that the Registrar has decided to take little or no notice of decisions in which it is involved as a registrar (other than implementation of the decision). The Panel does not think it reasonable for a registrar can turn such a blind eye as to what is going on in its own registry in this manner. The Registrar may well object to any suggestion that it is under a duty to investigate the nature of the many businesses operating from domain names registered with it. However, expecting a registrar to have knowledge of cases under the Policy where it was the registrar, does not remotely approach the imposition of such a duty.
6.28 In short, although the Panel has carefully considered the Registrar’s submissions in this matter, there is nothing in those submissions that lead it to change its initial view that the Registrar in this case has allowed users of its registration services to enter registrant details (i.e. Domains Secured, LLC) that it knew or ought to have known are false. This prima facie appears to be contrary to the Registrar’s obligations under paragraph 3.7.7.8 of the RAA. Whether that is actually the case will be for ICANN to determine. Further, regardless of ICANN’s view as to whether the Registrar’s stance is worthy of censure, there is a more general question as to whether the “Russian doll” scenario of privacy services hiding behind privacy services, should be knowingly be permitted by registrars given the threat to the operation of the Policy that this involves. In the circumstances, the Panel invites the Center to bring this decision and the Registrar’s conduct to the attention of ICANN.
6.29 The Panel now turns to the substantive issues in this case. These can be dealt with far more rapidly.
B. Identical or Confusingly Similar
6.30 The Panel accepts the Complainant’s contention that the Domain Name is confusingly similar to the Complainant’s LEGO trade mark. It accepts that the Domain Name can only be sensible understood as comprising that mark with the world “my” and “city” added at the beginning and the “.com” Top Level Domain at the end. The LEGO trade mark is the dominant element of the Domain Name and as a consequence the Domain Name is “confusingly similar” to the Complainant’s mark as the term “confusingly similar” is understood under the Policy. The Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
6.31 There is no suggestion that the Respondent has any trade mark that corresponds to the Domain Name or that the Respondent registered or has used the Domain Name with the Complainant’s consent.
6.32 The Panel accepts that if the Respondent were to have any legitimate interest in this case it would arise by reason of being able to satisfy the Oki Data condition. However, there are a number of reasons why the Oki Data conditions are not engaged in this case.
6.33 First, the onus is on a Respondent to bring forward a case on this basis (see Owens Corning v. NA, WIPO Case No. D2007-1143). It has not done so.
6.34 Second, it is questionable whether those principles apply in a case where it is not clear from the domain name does not so distinguish the Domain Name (see, the discussion in Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227).
6.35 Third, the Panel accepts the Complainant’s contention in line with the reasoning in LEGO Juris A/S v. Andrew Vierling, WIPO Case No. D2010-1913 that in this case as the Respondent in repackaging sales taking place through eBay it is not a reseller at all (see also the comments of this Panel in Sanofi-aventis v. Rx World, Nils Bor, WIPO Case No. D2007-1773.
6.36 Further even if the Oki Data case is engaged, the Panel accepts that the Oki Data conditions are not satisfied. There are two reasons why this is the case. The website operating from the Domain Name does not adequately disclose the relationship (or to be more exact, the lack of relationship) with the Complaint. The website is also being used for a commercial purpose unrelated to the Complainant’s goods, i.e. to display third party advertisements.
6.37 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
6.38 The Panel accepts the Complainant’s contention that given the form of the website operating from the Domain Name since registration, the most plausible explanation of events is that the Respondent registered the Domain Name with a view to using the Complainant’s trade mark to draw Internet users to its website with the intention of generating revenue (either for itself or third parties) through the display of advertisements. In the circumstances, it accepts that the Respondent’s activities fall within the scope of paragraph 4(b)(iv) of the Policy and that the Domain Name was registered and has been used in bad faith.
6.39 Although this is not relied upon by the Complainant and therefore does not form the basis of the Panel’s conclusions in this case, the “Russian doll” use of privacy services by the Respondent also suggests bad faith registration.
6.40 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
7. Decision
7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <mycitylego.com> be transferred to the Complainant.
Matthew S. Harris
Sole Panelist
Dated: December 28, 2011
ANNEX A
ADMINISTRATIVE PANEL PROCEDURAL ORDER NO. 1
WHEREAS the Panel has reviewed the case file and, without prejudice to any subsequent findings of fact or law or any decision on the interpretation of any aspect of the Uniform Dispute Resolution Policy (the “Policy” or “UDRP”) or the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), notes as follows:
(i) The domain name in issue in these proceedings is <mycitylego.com> (the “Domain Name”).
(ii) The Registrar for the Domain Name is eNom Inc (the “Registrar”).
(iii) The publically available WhoIs record for the Domain Name as at the date of the filing of the Complaint herein recorded “Whois Privacy Protection Service Inc.” as the registrant of the Domain Name. “Whois Privacy Protection Service Inc” is the name of a privacy service offered by the Registrar.
(iv) In response to the registrar verification request from the World Intellectual Property Organization (the “Center”), the Registrar revealed the “underlying” registrant of the Domain Name to be Domains Secured LLC.
(v) Domains Secured LLC would appear not to be the true “underlying” registrant of the Domain Name. In particular:
(a) BrainHost.com has sent emails to the Center in which it has suggested that some other person or entity is the “owner” of the Domain Name but does not disclose the name or identity of that person or entity;
(b) Domains Secured LLC would appear to be the name of a further domain name privacy service; and
(c) there have been previous domain name proceedings involving the Registrar, BrainHost.com and Domains Secured LLC in which “Domains Secured LLC” was the registrant and the domain name was held, inter alia, to have been registered and used in bad faith (see InfoSpace, Inc. v. Domains Secured, LLC, WIPO Case No. D2011-1529 in respect of the Domain Name <mydogpile.com>).
(vi) As matters currently stand, the Panel is likely to make comments critical of the Registrar in its decision. In particular, it would appear that the Registrar has permitted users of its registration services to enter registrant details (i.e. Domains Secured LLC) that it knew or ought to have known are false.
(vii) The Panel may also invite the Center to bring this decision to the attention of ICANN for such further investigation or action in relation to the Registrar’s activities and business practices as ICANN considers appropriate1.
(viii) In light of this, the Panel is of the opinion that as a matter of fairness the Registrar should first be given an opportunity to respond to the issues set out in this Order2.
(ix) Whilst the Registrar is not obliged to file a submission as provided for in this Order, it should be aware that any failure to do so may result in adverse inferences being drawn against it.
The Panel, pursuant to paragraphs 10 of the Rules for Uniform Domain Name Dispute Resolution Policy, HEREBY MAKES THE FOLLOWING ORDER:
(1) The Registrar shall, if it so wishes, by no later than 6:00 pm GMT on Wednesday, December 21, 2011 file a submission in these proceedings together with supporting documents or evidence addressing the issues identified in the recitals to this Order.
(2) Any submission filed pursuant to paragraph (1) of this Order:
(i) must be forwarded to the Center by email in accordance with paragraph 3(b) of the WIPO Supplemental Rules.
(ii) must include a declaration signed by a named individual as follows:
“The Registrar certifies that the information contained in this submission is to the best of the Registrar’s knowledge complete and accurate, that this submission is not being presented for any improper purpose, such as to harass, and that the assertions in this submission are warranted under the Policy and the Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.”
(iii) must explain the relationship to the Registrar of the named individual giving the declaration in accordance with sub-paragraph (ii) above and explain how it is that he or she has knowledge of the matters set out in the submission.
(iv) must either be in a form that is text searchable (for example, a .doc Word document or a text searchable .PDF document) or be accompanied by a copy that is text searchable.
Matthew S. Harris
Sole Panelist
Dated: December 16, 2011
ANNEX B
ENOM INC.’S RESPONSE TO ADMINSTRATIVE PANEL PROCEDURAL ORDER NO.1
eNom, Inc (“eNom”) is the second largest ICANN accredited registrar and operates its domain registration services in accordance with the Registrar Accreditation Agreement (“RAA”) by and between eNom and ICANN. The Panelist in the present case is correct that eNom is the domain name registrar for the disputed domain <mycitylego.com> (the “Domain Name”). The Panelist is also correct that “Whols Privacy Protection Service, Inc” is a privacy service offered by eNom to its domain name registrants. Short of these two assertions, the panelist has made several unfounded allegations in the order issued in these proceedings soliciting this response (the “Order”).
On October 27, 2011 as well as on October 31, 2011, eNom promptly submitted a response to the registrar verification request from the World Intellectual Property Organization (the “Center”) revealing the underlying registrant information in accordance with the rules for a registrar’s obligations under the Uniform Dispute Resolution Policy (the “Rules”). eNom’s responses are attached hereto as Exhibit A. The underlying registrant information revealed to the Center shows the current registrant for the Domain Name to be Domains Secured, LLC (the “Registrant”).
eNom is not aware of Brainhost.com’s relationship with the Registrant. The only relationship eNom has with the Registrant is that of a domain name registrar that offers domain name registration services and legitimate privacy services to its customers. The Registrant mayor may not be a privacy service on its own, but that is irrelevant to eNom’s relationship with it. The nature of the Registrant’s business is unknown to eNom and eNom has no duty to investigate the nature of its business. The Panelist seems to assert that there is some relationship between eNom, Brainhost.com and the Registrant because of previous domain name proceedings involving Brainhost.com and the Registrant in which eNom was the domain name registrar. As the Panelist is surely aware, as a domain name registrar, eNom was not a party to previous domain name proceedings and is not a party in the present proceeding.
Section G of the Center’s Guide to the Uniform Dispute Resolution Policy (the “UDRP”) attached hereto as Exhibit B clearly defines a registrar’s role in the administrative proceeding. The registrar’s role is to provide the requested information to the Center, confirm that the domain name in dispute is registered using its registration services, confirm the registrant information to the Center and provide the Center with the contact details of the registrant. Further, the registrar is required to prevent the transfer of a domain name registration to a third party once a proceeding has commenced. eNom has fully complied with its obligations.
The Panelist appears to be issuing the Order in the present case to assign blame where the applicable rules and regulations find none. Based on the Panelist’s own comments and findings in prior domain name disputes similar to the present case, including those which he cites in his Order, it appears that the Panelist is using his position as a Panelist to publicly admonish individual non-party registrars as well as the privacy services they may offer and to advance novel policy prescriptions. Privacy services such as Whois Privacy Protection are legal and legitimate services, widely offered to domain name registrants as an industry standard amongst registrars and are in compliance with all lCANN policies and rules.
The Panelist has kindly given eNom the opportunity to respond to the Order, and indicates that to not respond may result in adverse inference being drawn against eNom as the Domain Name registrar. However, it is clear from prior decisions issued by this Panelist that even though eNom is not a party to the current proceeding, and even though the Panelist provides no evidence or legal authority to support his own claims in the Order, the Panelist is likely to make negative inferences about eNom and its privacy service anyway to further his own agenda against these services in the final decision he issues in this matter. The UDRP is an administrative proceeding to be administered by an impartial panelist. The UDRP is not the forum for a panelist’s public pronouncements on what he or she personally believes the law or ICANN policy should be.
eNom certifies that the information contained in this submission is to the best of eNom’s knowledge complete and accurate, that this submission is not being presented for any improper purpose, such as to harass, and that the assertions in this submission are warranted under the UDRP and the Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.
I, Rick Danis, as Vice President of Business& Legal Affairs for eNom, Inc., have knowledge of the matters set forth herein.
1 See Four Seasons Hotels Limited v. Internet bs Corporation/ Private Whois Service, WIPO Case No. D2009-1657 and the various cases listed therein
2 As per the procedure adopted in Mrs. Eva Padberg v. Eurobox Ltd, WIPO Case D2007-1886, Aluship Technology SP. Z O.O. v. Belize Domain WHOIS Service, WIPO Case No. D2009-0028, Western Union Holdings, Inc v. Private Whois Escrow Domains Private Limited / COMDOT INTERNET SERVICES PVT. LTD., LAKSH INTERNET SOLUTIONS PRIVATE LIMITED., PLUTO DOMAIN SERVICES PRIVATE LTD., COMPSYS DOMAIN SOLUTIONS PRIVATE LIMITED., WIPO Case D2008-1675, and Four Seasons Hotels Limited v. Internet bs Corporation/ Private Whois Service, WIPO Case No. D2009-1657