Legos.com WIPO decision against pool

[sitehq]

The Panel finds that offering the disputed domain name for sale on a commercial website in the business of auctioning domain names amounts not only to registration in bad faith but also in use in bad faith,


furthermore

by saying that “There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, as the proprietor of the auction website used by the Respondent advises its potential clients, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent. In several earlier administrative proceedings conducted under the Policy, this sole panelist has determined that offers to sell to the public at large domain names that are identical or confusingly similar to marks of others may constitute bad faith within the meaning of paragraph 4(a)(iii) of the Policy. This is based on the nonexhaustive character of the express list of bad faith factors in paragraph 4(b) of the policy, and the lack of a justification for awarding financial gain to persons for the mere act of registration of the marks of others. In the instant proceeding, respondent has sought to profit from the mere registration of a well-known trademark (preceded by a common descriptive term) as a domain name. There is no evidence on the record of this proceeding that persuades the Panel that Respondent had a purpose for registering the disputed domain name other than for the purpose of selling it for a price in excess of its out-of-pocket costs directly related to the name. The Panel determines such registration and use to be in bad faith” (Wal-Mart Stores, Inc. v. Kenneth E. Crews, WIPO Case No. D2000-0580).


tough precendent, this is an interesting case becuase pool was actually called the owner of the name...then the owner said they never paid for it and pool transfered it to them illegally.....

http://arbiter.wipo.int/domains/deci...2004-0359.html


page howe

[TopNames.com]

very interesting...

[marzzo]

I remember seeing legos.com on the hotlist, I wouldn't have wanted to touch it.

[dax]

Originally Posted by marzzo

I remember seeing legos.com on the hotlist, I wouldn't have wanted to touch it.

Yes, but the Complainant here is not famous "Lego" company from Denmark (!!!), its some other Lego company from USA (if i got it right)...
So, not only that your move was good, but it was very clever...
This Lego word is potentially very problematic... :-D

[serra]

I own the domain. Too bad I lost the case. Enough said. Life moves on

[dtobias]

I note that this panelist is one of the rare ones who actually cares about the distinction between different TLDs, as the response mentions, with regard to the claims by the respondent that the domain was for a noncommercial site, "the second Respondent could have chosen as an alternative a different TLD, also considering that the .com TLD should not be registered and used for non-profit activities."

[TopNames.com]

"Moreover, these activities demonstrate bad faith registration and use of the disputed domain name in violation of the Policy under paragraph 4(b)(i) which promulgates that bad faith can be found where there is evidence of “circumstances indicating that [Respondent has] registered or [Respondent has] 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 the complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name.”

Legos.com closed on Pool.com for $5,402.00. It seems to read that the panel would have allowed the respondent to ask for a $5,402 sale price. However, he asked for more (I am guessing at this) and then a complaint was filed.

Maybe John or Ari can jump in and give their opinion.

[serra]

Any question please PM me directly. As I mention on my first post, I don't want to discuss this any longer

[stuff]

Originally Posted by serra

Nope. Domain State members reported the auction to before the auction take place. Luckily, I found the thread.
FYI:I pay only $60 registration fee, Pool decided to refund the money after months of frustrating complaint trying to reach their supervisor.
So, the domain was never offerred to the complainant. As I said, not worth discussing $60 domain

'


legos.com for $60 ?

[serra]

Any question please PM me directly. As I mention on my first post, I don't want to discuss this any longer

[TopNames.com]

I show $5,402 on the Pool list and I had bid at least $1,000 on the domain...something does not sound right.

[serra]

Any question please PM me directly. As I mention on my first post, I don't want to discuss this any longer

[clemzonguy]

I emailed the company prior to POOL getting the domain to tell them about the domain dropping. I don't know if this had any effect or not but I am sure they were quite aware about loosing the domain.

[MediaHound]

If TopNames bid $1,000 how on earth did you score it for $60, serra?

[serra]

Any question please PM me directly. As I mention on my first post, I don't want to discuss this any longer. Thanks for your understanding.

[MediaHound]

refund and credit are after the fact.
Did you win the auction for 5K+?

[serra]

Any question please PM me directly. As I mention on my first post, I don't want to discuss this any longer. Thanks for your understanding.

[MediaHound]

OK, have a nice day.

[Garry Anderson]

Surely similar words can be (have been) registered for ANY other goods or services?

Was Serra doing anything illegal with domain?

From USPTO:

Word Mark LEGO
Goods and Services IC 011. US 013. G & S: Irrigation Equipment-Namely, Sprinklers, Drippers and Parts Thereof, Hose Adapters and Connectors, Spike and Slide Bases, Plugs, Caps, Valves, Sprinkler Heads, Nozzles, and Parts Therefor. FIRST USE: 19290000. FIRST USE IN COMMERCE: 19650324

Owner (REGISTRANT) Lego M. Lemelshtrich Ltd. COMPANY ISRAEL 100 Petach Tikwa Rd. Tel Aviv ISRAEL

[serra]

Lego is a word in my spoken language. Please read the case yourself so you are not repeating question on what is already said in the case. Enough said. Again, guys PM me if you have any question. Please understand I cannot talk freely because this is a public forum.

Probably you misunderstood, let me clarify:
The person on the whois is not me. I just said I own the domain. I never said my name was on the case.
If you read the case: "the case was against Pool.com" as the title of this thread.