A right or legitimate interest in a domain name which contains someone else’s trademark.

A claim for transfer of a domain name can be lodged via a so-called UDRP (Uniform Dispute Resolution Policy) procedure. This is an arbitration procedure for resolving disputes on .com, .org and .net domain names. The advantage of the UDRP procedure is that it is reasonably inexpensive, results in a decision relatively quickly and its outcome is applicable worldwide. Lego brought this kind of procedure against the holder of the domain name legoverhuur.com.

The rules on grounds of which the transfer of the domain name can be ordered in the UDRP proceedings are:
1. The domain name is identical or confusingly similar to a trademark of the complainant; and
2. The domain name holder does not have any rights or legitimate interests in respect of the domain name; and
3. The domain name has been registered and is being used in bad faith.

In this UDRP procedure the well-known company Lego (maker of the children’s blocks) challenged the registration and use of the domain name legoverhuur.com by a Dutch party (to be referred to below as ‘the respondent’). The respondent had been using the domain name since 2003. Since 2008, the domain name legoverhuur.com links through to the respondent’s own website, blokxs.nl. On the website accessed by the domain name legoverhuur.com, lego blocks are offered for hire.

The panel found as follows concerning the points cited above:

Re 1: The domain name is confusingly similar to Lego’s trademarks
Lego clearly proved ownership of the trademark rights and that the disputed domain name is confusingly similar to these rights. The word LEGO is the most distinctive element in the domain name. Moreover this is an extremely well-known and famous trademark, the panel found. The addition of the descriptive term “verhuur” (which means “rental”) does not dispel the potential for association between the domain name and the LEGO trademark. To the contrary, the panel found that it reinforced the association.

Re 2: The domain name holder has legitimate interests in respect of the domain name
The second point did not work out so well for Lego. Lego stated that it did not give any licence or other authorisation for registration of the domain name. The party hiring out the Lego blocks is not an authorised dealer in Lego products and has never had a business relationship with Lego. Lego claims this is sufficient to rule out legitimate use of the domain name.

The respondent referred to the history between the parties. The parties exchanged correspondence in 2003 and 2008 concerning the use of the domain name. At the time, the respondent suspended use of Lego’s logo and linked the website through to its own website, blokxs.nl.

The panel then noted that a reseller or distributor can, under certain circumstances, be justified in offering particular products and services whereby it too can have a legitimate interest in the domain name in which another party’s trademark appears. This kind of circumstance may be the case if a reseller or distributor makes an actual offer of the goods and services, uses the domain name to sell only the trademarked goods and accurately and prominently discloses on the website its relationship with the trademark holder (also if there is no relationship therefore).

Despite the fact that it was not clear in this case whether the respondent’s website contained an explicit disclaimer of any relationship between itself and Lego, it was found that the respondent satisfied the aforementioned circumstances and consequently was making legitimate use of the domain name. The panel decided that a reasonable viewer of the website would not think that he/she was looking at Lego’s official website. It is also important here that the respondent does not use the LEGO logo on its website, nor does it wrongly suggest in any other way that it has a relationship with the trademark holder, or that the website is an official website.

Lego therefore failed to establish that the respondent has no right or legitimate interest in respect of the disputed domain name.

Re 3: No bad faith use of the domain name
In view of the above, there was no case of the respondent making use of the domain name in bad faith.

The claim for transfer of the domain name was denied.

Lot Nelissen