The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services AB, Sweden.
The Respondent is P N S Enterprises of Key West, Florida, United States of America.
The disputed domain names <freelegoporn.com> and <legopornxxx.com> are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2009. On February 6, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On February 6, 2009, GoDaddy.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 February 11, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2009. The Respondent submitted an email message on February 20, 2009, which the Panel regards as the Response.
The Center appointed James A. Barker as the sole panelist in this matter on March 12, 2009. 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.
The Complainant is the owner of registered trademarks for LEGO in over 190 countries, including the United States where the Respondent has its address. That trademark is used in connection with the famous LEGO brand of construction toys and other LEGO branded products. The Complainant's licensees are authorized to exploit the Complainant's intellectual property rights, including its trademark rights, in the United States and elsewhere. The Complainant and its licensees (collectively “the LEGO Group of Companies” or “the LEGO Group”), through their predecessors, commenced use of the LEGO mark in the United States during 1953, to identify construction toys made and sold by them. Their use of the LEGO mark has been extensive, exclusive and continuous since 1953. Sales of LEGO construction toys, in the United States alone, far exceeds USD $1 billion over the last 10 years.
The Complainant is also the owner of more than 450 domain names containing the term LEGO.
The trademark LEGO is among the best-known trademarks in the United States and around the world, due in part to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials.
The LEGO Group has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. The LEGO Group also maintains an extensive web site under the domain name <lego.com>.
The Complainant has been successful in a number of previous cases under the Policy, including most recently LEGO Juris A/S v. David Palmer, WIPO Case No. D2008-1826. The essential facts accepted by the panel in that case are similar to those set out above.
The Respondent registered the disputed domain names on October 12, 2008.
The Complaint attaches evidence that (at a date not identified) the disputed domain names reverted to websites displaying photographs of lego figurines in pornographic poses. The case file also indicates that (at February 11, 2009) the disputed domain names reverted to essentially the same websites.
The following is summarized from the Complaint.
The dominant part of the disputed domain names comprises the word LEGO, which is identical to the Complainant's registered mark. The disputed domain names are also confusingly similar to that mark. The addition of the suffixes “pornxxx” and “porn” and the prefix “free” is not relevant and will not have any impact on the overall impression of the dominant part of the name. There is a considerable risk that the public will perceive the Respondent's domain names either as domain names owned by the Complainant or that there is some kind of commercial relation with the Complainant. The trademark also risks being tarnished by being connected to a website with this kind of content.
The Complainant has not found anything that would suggest that the Respondent has been using LEGO in any other way that would give it any legitimate rights in the names. No license or authorization of any other kind, has been given by the Complainant to the Respondent, to use its trademark LEGO. The Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. Instead the Respondent has intentionally chosen domain names based on a registered trademark in order to generate traffic to the web sites and through this procedure generate income.
The trademark LEGO has the status of a well-known trademark with a substantial reputation throughout the world. The considerable value and goodwill of the mark LEGO is most likely a large contribution to this and also what made the Respondent register the disputed domain names here.
In relation to the domain name <legopornxxx.com>, the Complainant first tried to contact the Respondent on January 13, 2009 through a cease and desist letter, sent by email. On January 17, 2009 the Respondent replied (as evidenced in the Complaint), stating that he would consider transferring the domain name to the Complainant provided he would get a “reasonable amount” for the domain name. He stated that he expected the domain name to “produce a large amount of traffic and revenue in the future” and added that he is also the owner of domain name <freelegoporn.com>. The Complainant replied on January 21, 2009, restating the trademark rights the Complainant has in LEGO. The Complainant emphasized that the disputed domain names and their content are particularly unfortunate in light of LEGO being a trademark that focuses on children and that the LEGO Group would not hesitate to take legal actions in this matter unless the disputed domain names were transferred with immediate effect. On January 23, 2009 the Respondent replied, suddenly very cooperative, stating that they were “more than willing to transfer the domain names”. This email was followed by a reply from the Complainant that same day, asking the Respondent to unlock the domain names and provide the authorization codes so that the disputed domain names could be transferred. No reply was ever received from the Respondent. It has become apparent that the Respondent has no intention whatsoever to willingly transfer the disputed domain names to the Complainant. (Just before the Complaint was filed, a reply was received from the Respondent, stating that the Respondent would consider selling the disputed domain names but that he would not otherwise transfer them to the Complainant.)
The disputed domain names are currently connected to web sites that appears to be in the start up phase. As far as sponsored links are concerned, so far, the web sites only contain a few sponsored links from Godaddy.com, Inc. on the top of the sites. The severity of using a product that so clearly targets children to attract visitors and displaying these kinds of pictures cannot be stressed enough.
The Respondent did not submit a formal reply to the Complainant's contentions.
However, in email correspondence to the Center on February 20, 2009, after notification of the Complaint, the Respondent stated that:
“The most important point that I am going to make is the word lego is not what I am using in the domain name. It is LEGOPORN. LEGO is a latin word defined as to study or build. LEGOPORN is the building of comedic stop action animation pornography with dolls and the like. At no point did we even elude that we represented the lego corperation. We have not interest in selling their products and we never used the LEGO mark, as they put it. If you do a search on Google for the word LEGOPORN you will find 37000 hits. We are simply making a location that people can add links for their youtube their are 85 different videos and 844 different videos with the words separated. And they [the Complainant] are right, when that web domain name wasn't taken they had a perfect right to buying the name, but they choose not to. we at P N S enterprises had a perfect right to buy the domain name which we did. And finally this is a website for mature comedic entertainment. It is simply comedy like a southpark, family guy, or simpson T.V. show.”
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith.
These issues are discussed as follows.
There is no dispute that the Complainant has rights in the well-known mark LEGO for the purposes of paragraph 4(a)(i) of the Policy. The question then is whether the disputed domain names are confusingly similar to the Complainant's registered mark.
The Panel finds that the disputed domain names are confusingly similar to the Complainant's registered mark for the following reasons.
Firstly, the Complainant's mark is well-known and distinctive. This much has been found by prior panels: for example, see LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715. Being distinctive, the pairing of that mark with descriptive and non-distinctive terms (respectively, “free” and “porn”; and “pornxxx”) does little to avoid confusing similarity. This is because the Complainant's mark remains clearly identifiable as such in the disputed domain names. This is also because the Complainant's mark is the only distinctive component in the disputed domain names.
Secondly, such a finding is relevantly consistent with previous cases involving the Complainant's LEGO mark. These include the following more recent cases:
- LEGO Juris A/S v. Michael Longo, supra. In this case, the Panel found confusing similarity between the Complainant's mark and the domain name <legonetworks.com>.
- LEGO Juris A/S v. David Palmer, WIPO Case No. D2008-1826. In this case, the Panel found confusing similarity between the Complainant's mark and the domain names <justlegos.com>, <legosonly.com> and <onlylegos.com>.
- Lego Juris A/S v. Synergy Management, Fred Shear, WIPO Case No. D2007-1028. In this case, the Panel found confusing similarity between the Complainant's mark and the domain name <legotable.com>
Each of these cases involved the addition of generic terms to the Complainant's mark. The Respondent advanced no reason to relevantly distinguish those cases. The Panel does not otherwise find reasons to distinguish the conclusions in those cases from this one, in relation to the terms “free” and “porn”; and “pornxxx”, as respectively combined with the Complainant's mark. Those terms appear to the Panel to be as descriptive as those added to the Complainant's mark in the cases cited above (i.e. “networks”, “just”, “only”, and “table”).
Thirdly, it might be argued that there is no confusing similarity because no one could reasonably believe there to be an association between the Complainant's mark and the terms “free” and “porn”; and “pornxxx”. However, such an argument, in circumstances also involving sexual-related terms, has been rejected by previous Panels: see e.g., Arizona Board of Regents for and on behalf of Arizona State University v. Value Holdings, Inc., WIPO Case No. D2001-0445; General Electric Company v. Basalt Management, WIPO Case No. D 2000-0925 and Microsoft Corporation v. S.L., Mediaweb, WIPO Case No. D2003-0538. It is an argument that rests on the whole public being aware of all the associations of the Complainant's mark. There is no reason to think that the whole public would have that level of awareness in this case. Further, it is possible that the mere incorporation of those terms in the disputed domain names itself creates confusion about the association of the Complainant's mark. For these reasons, the Panel considers that there is a risk of confusion, at least in a part of the public that might encounter the disputed domain names.
For these reasons, the Complainant has established this first element.
There is no evidence in this case that would demonstrate any of the circumstances set out in paragraph 4(c) of the Policy, which might illustrate the Respondent's rights or legitimate interests for the purpose of paragraph 4(a)(ii) of the Policy.
The arguments made by the Respondent in its email to the Center dated February 20, 2009, suggest that the Respondent has a legitimate interest because “lego” is a latin term meaning “to study or build” and that the Respondent is using it in that connection. In other words, the suggestion is that the Respondent is using the term “lego” in connection with its meaning in latin, rather than because of its value as the Complainant's trademark.
The Panel finds this unconvincing. Latin is spoken by very few. As such, any meaning of the term in Latin would be lost on the vast majority of Internet users. As noted above, the Complainant's mark has been accepted by a number of previous Panels, and this one, to be well-known and famous. The Respondent's explanation also is at odds with the contents of its own websites which feature LEGO branded figurines, and no content that suggests any natural connection with the act of “building”.
The Respondent also argues that it has a legitimate interest because it is using the disputed domain names in connection with “mature comedic content”. Even if that were so, that purpose alone does not confer on the Respondent a right to use the Complainant's trademark in a domain name in the circumstances of this case. The Respondent's websites are not obviously a parody or similar website, in relation to which the Respondent might rely on paragraph 4(c)(iii) of the Policy. That paragraph provides that a legitimate interest might be demonstrated where the Respondent is making a “fair use of the domain name, without intent for commercial gain”. But here, the Complainant provides evidence of email correspondence to it from the Complainant claiming that “We would be willing to consider a reasonable price for the domain name and website. Please take into consideration that we have put in quite a bit of money, time and energy into this business already and we do expect it to be able to produce a large amount of traffic and revenue in the future.” As noted by the Complainant, such statements indicate that the Respondent intentionally registered the disputed domain names for commercial gain.
Finally, the Respondent suggests that the Complainant had an opportunity to register the disputed domain names but chose not to. It should be self-evident that the Complainant would not naturally want to register the domain names now in dispute (even if only for defensive purposes), which the Complainant stresses are at risk of tarnishing its mark. Regardless, the Respondent's argument is, in essence, that the first to register a domain name has a right to it. Such an argument ignores the effect of the Policy, which is designed to prevent a “first-come, first-served” approach, where there is unfair exploitation of a complainant's mark in the circumstances set out in paragraph 4(a) of the Policy.
For these reasons, the Panel finds that the Complainant has established this second element.
The Panel finds that the Respondent registered and has used the disputed domain names in bad faith. The facts of this case readily suggest that the Respondent was aware of the Complainant's registered mark, and sought to exploit its trademark value by including it in the disputed domain names.
Factors that support this conclusion are the fame of the Complainant's mark; it's prominent and entire inclusion in the disputed domain names; the content of the Respondent's own websites (which self-evidently includes LEGO figurines); the Respondent's claimed commercial intention reflected in the email correspondence mentioned above and the failure of the Respondent to provide evidence to the contrary.
For these reasons, the Panel finds that the Complainant has established this third element.
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, <freelegoporn.com> and <legopornxxx.com>, be transferred to the Complainant.
James A. Barker
Dated: March 26, 2009