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Legitimate Noncommercial or Fair Use of Domain Name Identical or Confusingly Similar to Trademark

Lego is one of those trademarks instantly recognizable in the marketplace. The number of UDRP proceedings against Lego infringers runs into the dozens (I’m probably underestimating). Here is a baker’s dozen decided in December 2011: <legodiscounter.com>, <legoninjagofiretemple.com>, <legoverhuur.com>, <legoland florida.com>, <legolandorlando.com>, <legosoft.com>, <legowatches.org>, <lego-fan.net>, <legomen.com>, <legostarwarsgames.org>, <legoharrypotterquidditch match.net>, <legoarmory.com>, <legocitycorner.com>. How can a respondent escape losing a “lego” domain name? The issue in the first instance is how the domain is being used and the purpose for which it was registered. There has to be a match. Even with famous trademarks, complainant can be defeated if the purpose for the domain name is “legitimate noncommmercial” and its use fair under paragraph 4(c)(iii) of the Policy. Complainant was unsuccessful for <legoworkshop.com> in LEGO Juris A/S v. Domain Administrator, Matthew Griffith, D2011-1263 (WIPO October 1, 2011). Why?

The Panel in Velcro Industries B. V. and Velcro USA Inc. v. allinhosting.com/Andres Chavez, D2008-0864 (WIPO July 28, 2008) explained that “it would take an exceptional case to succeed where there was no malicious or exploitative intent directed at the complainant [or its trademark] at time of registration of the domain name.” The Respondent in Velcro was a creative “velcro” artist. In Lego v. Griffith, the Respondent stated that he

registered [the domain name] on behalf of his 15 year old 10th grade son who has been a LEGO enthusiast since he was 3 years old. His intent was to create a website that showed off the creations that he (the son) has built over the years in “both photographs and occasional video while also showing steps to build his creations”.

It was “part of a high school project” and that his son has

chosen this to be his project as it allows his passion for the product, the creativity of building using the product and the programming technology required to create and maintain the site to flourish while helping other kids to build creations that they might not be able to dream up on their own and to share building ideas”.

A 4(c)(iii) defense is credible if the use matches the assertion of noncommercial or fair. In a 2008 case Respondent argued that his registration of <narnia.mobi> was a birthday present for his son who was a fan of the Narnia books, C.S. Lewis (PTE.) Ltd. v. Richard Saville-Smith, D2008-0821 (WIPO July 21, 2008). His sole intent of using the domain name for a child’s e-mail address and with no commercial motivation establishes rights or legitimate interests under the Policy. But, his use (or, rather nonuse) of the domain name gave him away:

the Panel cannot envision any plausible, good faith basis upon which the Respondent could have concluded that he was free to appropriate the Complainant’s distinctive and widely known NARNIA mark for use as a personal email address.

Contrastingly, in the Lego case there was a matching of allegations with use of the website. The Panel “is confirmed in its view that the Respondent has shown that the circumstances specified in paragraph 4(a)(ii) exist. He continues,

In many circumstances, bad faith registration in the face of such knowledge can be readily inferred. However, the record here would suggest that, notwithstanding such knowledge the Respondent and his son did not intend to cause any confusion or diversion of custom and did not, indeed, believe this to be likely, given the nature of their intended website. While the facts of each case will differ, in the present case the Panel accepts that this is sufficient to dispel the inference of bad faith registration that might otherwise arise.

The language of 4(c)(iii) “makes it clear that the operator of a noncommercial fan site can take advantage of this provision unless the operator, with an intent for commercial gain, is misleadingly diverting consumers or tarnishing the mark.” Estate of Francis Newton Souza v. ZWYX.org Ltd, D2007-0221 (WIPO June 18, 2007).

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