WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Leca Trading & Concession A/S v. Care Builder Ltd. (Lecaimport-com-dom)

Case No. D2006-1333

 

1. The Parties

The Complainant is Leca Trading & Concession A/S, Copenhagen, Denmark, represented by Chas. Hude A/S, Denmark.

The Respondent is Care Builder Ltd. (Lecaimport-com-dom), c/o Freddy Hansen, Lillestrom, Norway.

 

2. The Domain Names and Registrar

The disputed domain names <lecaimport.com> and <lecaexport.com> are registered with DSTR Acquisition VII, LLC d/b/a (Dotregistrar.com).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2006. On October 19, 2006, the Center transmitted by email to DSTR Acquisition VII, LLC d/b/a Dotregistrar.com a request for registrar verification in connection with the domain names at issue. On November 13, 2006, DSTR Acquisition VII, LLC d/b/a Dotregistrar.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 November 15, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2006. The Response was filed with the Center on December 5, 2006.

The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on December 28, 2006. 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 a Danish company that makes and sells an eponymous product named Leca, which takes its name from the first initials of its constituent elements, Light Expanded Clay Aggregate and which is a product used in the building and construction industries. The Complainant has manufactured this product since 1939 and it is known and sold worldwide.

The Complainant registered the trademark LECA in Denmark in 1948 and has maintained that registration ever since. It is currently the registered owner of the following trademarks:

(a) Trademark No. VR 1948 01617, registered in Denmark on November 27, 1948 for LECA;

(b) Trademark No. 46295, registered in Norway on June 19, 1954 for LECA;

(c) Community Trademark No. 000207498 registered on August 4, 1998 for LECA; and

(d) numerous other international trademarks registered for LECA.

The Respondent registered the domain name <lecaimport.com> on April 4, 2006, and the domain name <lecaexport.com> on August 9, 2006>.

 

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the contentious domain names <lecaimport.com> and <lecaexport.com> should no longer be registered with the Respondent but that they should be transferred to the Complainant.

It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain names are confusingly similar to the Complainant’s registered trademarks LECA, that the Respondent has no rights or legitimate interests in the domain names and that the domain names have been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain names to the Complainant.

In support of its case on the first of these three elements, the Complainant relies on its registered LECA trademarks and says that the domain names are confusingly similar to all of them, because the Respondent has simply taken the entirety of the trademarks and added the words ‘import’ and ‘export’ respectively, which do not make any distinction between the goods of the Complainant and goods being promoted by the domain names. This, it says gives rise to confusion with the Complainant’s trademarked product.

The Complainant contends, to establish the second element, that the Respondent has no rights or interests in the domain names because the facts show that the Respondent is using the names only for the purpose of selling them, it is not known as “Leca” and has not made any prior use of the word “Leca”.

Finally, the Complainant contends that the domain names were registered and are being used in bad faith. It contends that this is so because the only interpretation that can be put on the known facts is that the Respondent registered the domain name <lecaimport.com> without any authority, tried to sell it to the Complainant and then registered the domain name <lecaexport.com>, knowing that the Complainant objected both to its registering <lecaimport.com> and making any other unauthorized use of its trademarks. This, the Complainant says, is evidence of bad faith registration and use within the meaning of the Policy.

B. Respondent

The Respondent submits that the Complaint should be dismissed essentially for two reasons.

First, the Respondent contends that the Complainant’s trademark LECA is not world wide, whereas the nature of the Internet is world wide, thus giving the Respondent a prior right to the use of the name “Leca” in its domain names.

Secondly, it contends that a representative of the Complainant agreed that the Respondent could import quantities of Leca product from Denmark to Norway and that this agreement gave the Respondent the right to register and use the domain names for the purposes of its business. It maintains that it derives this right from the fact that it got permission to deal in the Leca product before it registered the domain names.

 

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:

A The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

B. The Respondent has no rights or legitimate interests in respect of the domain name; and

C. The domain name has been registered and is being used in bad faith.

The Panel will therefore deal with each of these requirements in turn.

A. Identical or Confusingly Similar

The Panel finds that the domain names <lecaimport.com> and <lecaexport.com> are each confusingly similar to the trademark LECA, which as a whole has been incorporated into the domain names, which further consist of the gTLD suffix ‘.com’.

In that regard, it has been held many times that the addition to a trademark of a term which does no more than describe some aspect of the trademarked goods will not negate a finding of confusing similarity that is otherwise present on the evidence. Thus, in Dr. Ing. h.c.F. Porsche AG v. Gary Charles Brown, a k a Gary Brown, a k a Charlie Brown, a k a Gary Charlie Brown, WIPO Case No. D2001-0919, it was held that the domain name <porscheimporter.com> was confusingly similar to the trademark PORSCHE because, as the Panel said:

“… Respondent has combined Complainant’s well-known mark with term “importer/s” that describes an activity (that is, the transportation into a country of products from another country or territory) that would commonly be associated with a producer or dealer in automobiles. The combination “Porsche Importer” uses Complainant’s mark as the principal identifier of a business that engages in trade of Complainant’s products. Although it is possible that some members of the public, in viewing the disputed domain names, will conclude that persons other than Complainant are acting as importers of Porsche automobiles, there is nevertheless a likelihood that the public, viewing the domain names, will draw that conclusion that Complainant is the enterprise that is undertaking to provide the subject products. The public (in this case Internet users) will be confused as to the source of the products or sponsorship of the activities.”

Likewise, in the present case, at least some members of the public would conclude that it was the Complainant that was undertaking to import and export the LECA goods referred to in the domain names, which of course it is not. There is therefore a confusion added to the similarity already there by virtue of the use of the entire trademark in each domain name.

It has also been held many times that suffixes such as ‘.com’ may not be used to negate a finding of confusing similarity that is otherwise present on the evidence.

The Complainant has therefore established that there is a confusing similarity between the domain names and the trademarks referred to above. The Respondent maintains, however, that the Complainant cannot rely on those trademarks, as they are not ‘world-wide’. That, however, is not a requirement under the Policy, for a complainant need only establish rights in ‘a trademark’, a requirement that the Complainant in the present case has more than amply satisfied, for it has an international range of registered trademarks, including one in Norway, the domicile of the Respondent. It is therefore entitled to rely on the trademarks it has demonstrated and has consequently made out the first of the three elements that it must establish.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain names.

But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable 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; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Thus, if the Respondent proves any of these elements or indeed anything else that shows it has a right or interest in the domain names, the Complainant will have failed to discharge its onus and the complaint will fail.

The Respondent says in effect that it has a legitimate interest in the domain names because when it conceived the idea of importing the LECA product from Denmark to Norway, its Director, Mr. Hansen, spoke over the telephone with a Mr. Eriksen on behalf of the Complainant who said that this would be ‘no problem’ and that ‘he should give us prices’. On the basis of this conversation, Mr. Hansen then went and registered the domain name <lecaimport.com> and apparently at a later stage the domain name <lecaexport.com>. When Mr. Hansen informed him of this event, Mr. Eriksen ‘lost it’ and terminated whatever arrangement existed between the parties.

On the basis of this history, the Respondent contends in effect that it comes within paragraph 4(c)(i) of the Policy, on the ground that before notice of the dispute it had used or made demonstrable preparations to use the domain names ‘in connection with a bona fide offering of goods and services’.

Notice of the dispute was given to the Respondent by a letter from the Complainant’s Norwegian attorneys dated July 20, 2006.

With respect to the domain name <lecaexport.com> the Respondent clearly had neither used it to offer LECA product for sale or made any preparations to do so by the date that it was notified of the dispute, as it did not register that domain name until August 9, 2006. So the Panel finds that the facts relied on cannot establish a legitimate interest with respect to that domain name.

The Respondent had, however, registered the domain name <lecaimport.com> on April 4, 2006, i.e. before the notice of dispute. The question therefore arises whether, by that date, the Respondent had either used that domain name to make a bona fide offering of LECA product or made demonstrable preparations to do so.

No evidence was put forward by the Respondent to show that before August 9, 2006, the Respondent used the domain name <lecaimport.com> for any purpose at all, either for offering LECA product for sale, or preparing to do so. For example, there is no evidence of whether the Respondent had a business plan or had made any arrangements at all to set up a business selling LECA products.

Indeed, there is no evidence that the Respondent had any ground for believing that it would ever have any LECA product to sell, as no agreement had been reached on the price or the shipping arrangements. In fact, the only evidence on those subjects is that given by the Respondent to the effect that Mr. Eriksen said he would provide prices at some time in the future and that he subsequently said that the price would depend on the size of the cargo.

The evidence shows that the Respondent registered the domain name, not that it did anything with it.

The Panel therefore finds that before the Respondent received notice of the dispute, it was not using and had not made any demonstrable preparations to use the domain name for a bona fide offering of goods or services.

Moreover, the evidence shows that the real intention of the Respondent from the beginning most likely was simply to sell the domain names to the Complainant. That is certainly true with respect to <lecaimport.com> for, after the Complainant’s attorneys sent their cease and desist letter of July 20, 2006, a notice appeared on the Respondent’s website <lecaimport.com> to the effect that the domain name was for sale for 10 million Norwegian Kroner (over United States dollars 1,500,000).

The fact that the other domain name, <lecaexport.com>, was registered a few weeks after the Respondent received the cease and desist letter raises the same suggestion with respect to that domain name. These matters further weaken any argument that the Respondent has any right or legitimate interest in either domain name, and the Panel finds that it does not.

The Respondent has not made any attempt to bring itself within any other of the provisions of paragraph 4(c) of the Policy.

The Complainant has therefore made out the second of the three elements that it must establish.

C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the domain names were registered in bad faith and that they are being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:

(i) circumstances indicating that the respondent has registered or 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 respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.

This case raises the question of when offering to sell a domain name for a sum in excess of its registration costs, which the Respondent has clearly done, may “…support an inference that Respondent registered the Domain Name in bad faith, with the primary purpose of selling it in violation of paragraph 4(b)(i) of the Policy”. Echelon Corporation. v. RN WebReg, a.k.a. Rarenames, LLC, WIPO Case No. D2003-0790.

The Complainant submits that the Respondent registered the first of the domain names <lecaimports.com> before there had been any contact between the parties and that when it asked the Respondent to stop using the domain name and surrender its registration, the Respondent offered it for sale and then suggested a business relationship selling the Complainant’s products. That version of events brings the case squarely within paragraph 4(b)(i) of the Policy, for the inference must be that the Respondent registered the domain name without any authority and then used it primarily with the intention all the time of selling it for a profit. Such conduct is the very essence of bad faith.

Moreover, the inference is confirmed by the fact that the Respondent then posted on its website, to which the domain name resolved, an announcement that the domain name was for sale for 10 million Norwegian Kroner (over United States dollars 1,500,000).

Not only did it do so, but the Respondent followed the same tactic of offering for sale another domain name, <lecaimport.no>, not a domain name involved by this proceeding, but one, nevertheless, that shows the overall intention of the Respondent as being to sell domain names incorporating the Complainant’s trademark.

But even on the Respondent’s version of events, the result must be the same. That is so because, according to the Respondent, it registered <lecaimport.com> before there had been any finality at all reached between the parties on the details of the business relationship it claims it wanted to develop and it did so without telling the Complainant it was using its trademark without permission. When the Complainant objected, the Respondent retaliated by demanding an inordinate price for the domain name. Again, such conduct is clearly bad faith.

With respect to the second domain name <lecaexport.com> the result is the same, as the facts are that the Respondent registered that domain name on August 9, 2006, knowing that the Complainant objected to its using its trademark in unauthorised domain names. The Panel adopts the Complainant’s submission that such conduct only confirms the Respondent’s bad faith, for it tends to show that the real intention of the Respondent from the beginning was in all likelihood to cause as much trouble for the Complainant as possible and to extract money whilst doing so.

Such conduct is clearly conduct within paragraph 4(b)(i) of the Policy and general bad faith conduct.

The Complainant has thus made out the third of the three elements it must establish.

 

7. Decision

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 <lecaimport.com> and <lecaexport.com> be transferred to the Complainant.

The Honourable Neil Anthony Brown QC
Sole Panelist

Dated: January 11, 2007