WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Ogilvy Group, Inc. d/b/a The Lacek Group v. Tony Y. Jackson

Case No. D2010-2015

1. The Parties

The Complainant is The Ogilvy Group, Inc. d/b/a The Lacek Group of Minneapolis, Minnesota, United States of America, represented by Davis & Gilbert LLP, United States of America.

The Respondent is Tony Y. Jackson of Marquette, Michigan, United States of America.

2. The Domain name and Register

The disputed domain name <lacekgroup.com> is registered with Todaynic.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2010. On November 23, 2010, the Center transmitted by email to Todaynic.com, Inc. a request for register verification in connection with the disputed domain name. On November 25, 2010, Todaynic.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 December 6, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 26, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 29, 2010.

The Center appointed Thomas P. Pinansky as the sole panelist in this matter on January 13, 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.

4. Factual Background

The Complainant is the Ogilvy Group, Inc., d/b/a The Lacek Group, a corporation organized and existing under the laws of the State of New York. The Lacek Group was formed in 1992 in Minnesota. In 2000, The Lacek Group was acquired by The Ogilvy Group, one of the world’s largest advertising and promotions agencies. The Complainant has continuously conducted business under the name of “The Lacek Group” and/or its company website located at “www.lacek.com”.

The domain name takes the full name of the company, less the “[t]he” at the beginning. It also just adds “group” to the company’s primary URL at “www.lacek.com”. The Respondent is using the domain name to conduct schemes aimed at online media companies to deceive these companies by convincing them that they are dealing with the Complainant. The Respondent is using names such as “Peter Brennan”, one of the original founders of the Lacek Group. Peter Brennan subsequently obtained a temporary restraining order to enjoin the further use of his name and identity in connection with this scheme and to order the immediate shutdown of the email address “[ ]@lacekgroup.com” and a Minnesota-based telephone number.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights.

The Complainant has significant protectable rights in this unregistered trademark.

The Respondent has no rights or legitimate interests in the domain name. The Complainant has never authorized the Respondent to use its mark, either through a license agreement or otherwise and the Complainant has no relationship with the Respondent.

The Respondent is using the domain name to attract, for commercial gain, online entities who are confused as to the person or persons behind the domain name.

The domain name was registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Substantive Elements of the Policy

Paragraph 4(a) of the Policy requires the Complainant to prove each and all of the following three elements in order to prevail in these proceedings:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

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

The fact that the Respondent has not provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint.” Under paragraph 14(a) of the Rules, in the event of such a “default” the Panel is still required “to proceed to a decision on the complaint,” and under paragraph 14(b), the Panel shall “draw such inferences therefrom as it considers appropriate.”

Consequently, the Panel must proceed with an assessment of the Complaint on its merits.

B. Identical or Confusingly Similar

The Complainant must establish that it has rights in a trade or service mark, and that the disputed domain name is identical or confusingly similar to the mark. The question is whether a non-registered name in which the Complainant claims common law trademark rights can be protected under the Policy. It should be noted that the Policy does not require that a trademark be registered in order to be invoked under the Policy. Common law trademark rights can be vested in names and signs on the basis of the use which is made thereof, even in the absence of a trademark registration (see Ribel International Limited v. Ribbel Medizintechnik GmbH, WIPO Case No. D2005-1183, Jones Apparel Group v. jonesapparelgroup.com, WIPO Case No. D2001-0719, citing several cases such as Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235 and Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210). Common law rights have been the basis now for many UDRP decisions, for example, Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235, Frederick M. Nicholas, Administrator, The Sam Francis Estate v. Magidson Fine Art, Inc., WIPO Case No. D2000-0673, Bill Withers v. Robert Dominico et al., WIPO Case No. D2000-1621, Marty Rodriguez Real Estate, Inc. v. Lancaster Industries, WIPO Case No. D2000-1468.

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions (the “WIPO Overview”) indicates at paragraph 1.7 that in order to assert such rights successfully the Complainant must show that the name has become a distinctive identifier associated with the Complainant or its goods or services.

The Panel has no hesitation in finding that in relation to the Complainant’s mark THE LACEK GROUP, used by the Complainant for 18 years, this test has been satisfied. The Complainant has provided services and conducted business under its mark since its founding. Through the Complainant’s many years of consistent and continuous advertising, marketing and extensive use, the Complainant’s mark has gained a secondary meaning and has come to be associated with the Complainant’s services. Customers identify the Complainant’s mark specifically with the Complainant’s services, as demonstrated by many instances that the media companies have contacted the Complainant to seek payment, after the online advertising campaigns have been completed.

The domain name wholly incorporates the Complainant’s distinctive trademark less the “[t]he” at the beginning, and as such creates sufficient similarity to be confusingly similar (see paragraph 4(a)(i) of the Policy).

Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark pursuant to the Policy, paragraph 4(a)(i).

C. Rights or Legitimate Interests

The Respondent has not replied to the Complainant’s contentions and has not therefore displaced the assertion on the part of the Complainant that the Respondent does not and cannot possibly have any right or legitimate interest in the domain name under paragraph 4(c) of the Policy.

The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its mark; the Panel further notes that there is nothing in the record to suggest that the Respondent is, or has ever been, commonly known by the disputed domain name. The Panel’s view is that these facts must be taken as proven in the circumstances of this case provided that they have not been denied by the Respondent.

The Respondent has not submitted a response to the Complainant’s contentions. Therefore, it has failed to invoke any circumstances that could have demonstrated any right or legitimate interest in the domain name under paragraph 4(c) of the Policy.

The Panel finds that the Respondent has no right or legitimate interest in the domain name.

D. Registered and Used in Bad Faith

Both under past UDRP decisions (see for instance Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397; and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806) and under the Policy (see paragraph 2), a well-established principle is that when someone registers a domain name, it represents and warrants to the registrar that, to its knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Complainant’s mark is widely known, it is unlikely that the Respondent, at the time of registration of the domain name or thereafter, was not aware of the Complainant’s trademark rights.

Bad faith can be inferred based on the fame of the Complainant’s marks, such that the Respondent was aware or should have been aware of the Complainant’s mark and claims of rights thereto.

The Complainant notes that the Respondent, in using the domain name, intentionally attempted to attract, for commercial gain, online entities who are confused as to the person or persons behind the domain name. The Respondent is using bad faith business practices to take advantage of this public trust. The intent is to deceive companies and people by falsely implying that the Respondent is the Complainant. The mere fact of diverting users in this misleading manner is further evidence of bad faith (see Big Dog Holding, Inc. d/b/a Big Dog Sportswear v. Frank Day, Red River Farms, Inc., NAF Claim No. FA 93554, at paragraph 8).

The conduct described above falls squarely within paragraph 4(b)(iv) of the Policy and accordingly, the Panel concludes on the record before it that the Respondent registered and is using the domain name in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <lacekgroup.com> be transferred to the Complainant.

Thomas P. Pinansky
Sole Panelist
Dated: January 31, 2011