The Complainant is LEGO Juris A/S of Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Reginald Hastings Jr of United States of America.
The disputed domain name <legosaurusrex.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2009. On May 25, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On May 25, 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 May 29, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 18, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 19, 2009.
On June 24, 2009, the Center received an e-mail from Ms. S. Hastings in relation with the case at issue and stating as follows: “The website was deleted months ago. We should not be contacted anymore and we have no way to contact you back because you are international. Please remove the issue and tell Cecilia that it was already taken care of. Thank you”.
The Center appointed Angelica Lodigiani as the sole panelist in this matter on July 2, 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 owns many LEGO trademarks worldwide, used in connection with construction toys and other LEGO branded products, such as, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. The Complainant also owns numerous domain names containing the term “lego”.
The use of the LEGO mark commenced in the United States (“US”) in 1953 to identify construction toys. Said use has been extensive, exclusive and continuous since then. Over the years, the business of selling and making LEGO brands toys has grown remarkably. Sales of LEGO construction toys in the US alone, far exceeds USD 1 billion over the last 10 years.
Trademark LEGO is among the most widely known trademarks in the US and around the world also due to extensive advertising. The US media advertising expenditures by the Lego group during the past ten years exceeded USD 50 million.
Two publications, the book “The World's Greatest Brands”, published by Mac Millan Business in 1996 and the book “Famous Brands”, published by Markgraaf BV in 1985 have recognized trademark LEGO as famous.
The Domain Name is connected to a website containing sponsored links.
On January 23, 2009, the Complainant sent a cease and desist letter to the Respondent, asking for the transfer of the domain name <legosaurusrex.com> (the “Domain Name”), but received no reply. A reminder was sent in February 2009, but still went unanswered. The Complainant made a third attempt and this time the Respondent answered that he was only 11 years old, and therefore had to wait for his parents to help him solving this matter. The Complainant replied asking for the transfer of the Domain Name in exchange of the reimbursement of the out-of-pocket expenses. Nevertheless, the Respondent did not revert to the Complaint who, after a last reminder, decided to file the Complaint.
After the Center notification of the Complaint to the Respondent, the Respondent indirectly replied, by sending an e-mail to the Center stating that the website had been removed months ago and that this issue had already been taken care of (see Ms. S. Hastings' e-mail of June 24, 2009 mentioned under paragraph 3 above).
(1) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Complainant affirms that the Domain Name is confusingly similar to the Complainant's mark LEGO due to the following circumstances:
- the dominant part of the Domain Name lies in the term “lego”, which is identical to the registered trademark LEGO;
- the addition of the suffix “saurusrex” is not relevant and will not have any impact on the overall impression of the dominant part of the LEGO mark, instantly recognizable as a world famous trademark;
- the addition of the top-level domain “.com” does not have any impact on the overall impression of the dominant portion of the Domain Name and is therefore irrelevant to determine the confusing similarity between the trademark and the Domain Name at issue;
- anyone who sees the Domain Name is bound to mistake it for a name related to the Complainant. The likelihood of confusion includes an obvious association with the Complainant's trademark. There is a considerable risk that the trade public will perceive the Domain Name as a domain name owned by the Complainant, or will consider that there is some kind of commercial relation with the Complainant;
- by using the LEGO mark as the dominant part of the Domain Name, the Respondent exploits the goodwill and the image of the LEGO mark, which may result in dilution and other damage for the Complainant's trademark. Persons seeing the challenged Domain Name, even without being aware of the content are likely to think that the Domain Name is in some way connected to the Complainant (“initial interest confusion”).
(2) The Respondent has no rights or legitimate interests in respect of the Domain Name
The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the Domain Name. The Complainant has also not found anything that would suggest that the Respondent has been using the LEGO mark in any other way that would give them any legitimate rights in the name. Thus, the Respondent cannot claim any legitimate rights established by common usage.
Moreover, no license or authorization of any kind to use the LEGO mark has been given to the Respondent. The Respondent is not an authorized dealer of the Complainant's products and has never had a business relationship with the Complainant.
The mere registration of the Domain Name, which occurred on October 29, 2008, does not give the owner a right or a legitimate interest in the Domain Name.
Due to the reputation of the LEGO trademark, it is highly unlikely that the Respondent was unaware of the Complainant's legal rights in the term “lego” at the time of the registration of the Domain Name <legosaurusrex.com>. It is rather obvious that it is the fame of the LEGO trademark that has motivated the Respondent to register the Domain Name. This also proves that the Respondent's interests in the Domain Name cannot be considered as legitimate.
At the time of the filing of the Complaint, the Respondent was not using the Domain Name in connection with a bona fide offering of goods and services. Instead, the Respondent intentionally chose a domain name based on a registered trademark in order to generate traffic to the website and generate income through sponsored links. As such, the Respondent is misleading Internet users to commercial websites and consequently is tarnishing and sponging off the LEGO mark.
(3) The Domain Name was registered as is being used in bad faith
The LEGO mark is well-known worldwide. The awareness of this mark is significant. The number of third parties' registrations comprising the trademark LEGO in combination with other words has skyrocketed the last years. The considerable value and goodwill of the LEGO mark is most likely a large contribution to this and also what made the Respondent register the Domain Name.
At the time of the filing of the Complaint and in the past, the Domain Name was connected to a website containing sponsored links. Accordingly, the Respondent is using the Domain Name to intentionally attempt to attract for commercial gain, Internet users to the websites, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website.
Whether or not the Respondent has influenced what links should be included on the sites is irrelevant for the finding of bad faith in this case. It is also without relevance whether or not the Respondent is actually getting revenue from this page himself. The Complainant makes reference to Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912, in which the panel found that the fact that the Respondent did not receive any money from the website connected to the disputed domain name, did not exclude, per se, the existence of bad faith.
(4) Remedies requested
For all the aforementioned reasons the Complainant requested that the Domain Name be transferred to the Complainant.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant enclosed, as Annex 4 to the Complaint, a list of its LEGO trademarks worldwide. The Panel notes that not all trademarks mentioned in Annex 4 appear to be in the Complainant's name. Most of them are in the name of different entities, such as Kirkbi A/S, Lego Juris A/S, Lego GmbH, etc. As such, Panel has not taken these marks into consideration for the purpose of this case.
Moreover, among the trademarks appearing in the Complainant's name, a certain number of them show a renewal date that already passed. As nothing is mentioned regarding their renewal, the Panel cannot know whether these trademarks are still valid or not. Therefore, the Panel has not take these trademarks into consideration.
The remaining trademarks appear to be in the Complainant's name and their expiry date is far to come. Therefore, the Panel will examine the issue of confusing similarity in relation to these trademarks.
The Domain Name consists of the prefix “lego” and the suffix “saurusrex”.
According to the Complainant, the suffix “saurusrex” is not relevant and does not have any impact on the overall impression of the dominant part of the Domain Name, which lies in the term “lego”. In support of this argument, the Complainant cites Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488, in which the panel made reference to a “long-established precedent that confusing similarity is generally recognized when well-know trademarks are paired up with different kinds of prefixes and suffixes”.
In the instant case, the Panel does not believe that the addition of the suffix “saurusrex” to the prefix “lego” is irrelevant. The addition of a suffix to a third party's trademark is irrelevant only when said suffix is descriptive. Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488, cited by the Complainant in support of its arguments, differs from the one at issue since the Domain Name consisted of the well-known mark PORSCHE followed by the descriptive term “me”, “which designated the Middle East area”. Conversely, to the best of the Panel's knowledge, which is also confirmed by some searches made on English dictionaries, the term “saurusrex” is deprived of any specific dictionary meaning. The Complainant does not argue to the contrary.
Moreover, the term “saurusrex” is much longer than the term “lego” and could be perceived as a shortened version of the term “tyrannosaurus rex,” a species of dinosaur of which many children may be aware. Internet users may likely be attracted by the suffix “saurusrex”, and in theory the term “lego” could blur into this term. Therefore, in the case at issue, this Panel does not consider the term “saurusrex” as irrelevant, without further arguments.
Further considerations are therefore necessary, and in particular that LEGO is a mark enjoying high reputation as construction toys popular with children. In the Panel's view, this popularity in combination with a term that seems to addressing an extinct animal also popular with children is crucial to conclude that indeed there is a confusing similarity between the Domain Name and the Complainant's LEGO trademark.
As extensively explained in the Complaint, and not objected to by the Respondent, LEGO is a well-known trademark, due to its longstanding and widespread use and to the high amount of promotional investments made on this mark. Therefore “lego” is a highly distinctive term, which Internet users will immediately recognize in the Domain Name, even if “lego” is shorter than the “saurusrex” suffix and even if the term “saurusrex” is not necessarily immediately recognizable as a dictionary term.
For the reasons mentioned above, the Panel is satisfied that the Domain Name is confusingly similar to the Complainant's LEGO mark.
According to the Complainant, the Respondent is not an authorized dealer of LEGO goods and was never authorized to use the LEGO mark. Moreover, nothing suggests that he is commonly known by the Domain Name or the term “lego” per se.
The Respondent failed to submit any Response and did not demonstrate any of the circumstances mentioned in Article 4(c) of the Policy, which would have proved that he owned rights or legitimate interests in the Domain Name.
Therefore the Panel believes that the Complainant has provided sufficient evidence to make a prima facie determination that the Respondent lacks rights to, and legitimate interests in, the Domain Name to which the Respondent has not rebutted. As such, the Panel finds for the Complainant under this element.
The Panel believes that the Complainant has successfully proved that the Domain Name has been registered and is being used in bad faith.
As far as registration in bad faith is concerned, the Complainant has provided evidence of the reputation of the LEGO trademark due to its longstanding and widespread use and to the relevant amount of promotional investments made on the trademark. The reputation of the LEGO mark is in part supported by written evidence (see Annexes 7 and 8, relating to two publications on famous trademarks worldwide). Although this evidence is quite old (1985 and 1996), there are no circumstances that could make the Panel believe that the situation has meanwhile changed. On the contrary, the Complainant has supported the reputation of the LEGO mark with additional information referring to the last 10 years, such as the US media advertising expenditures amounting to USD 50 million, and the sales of LEGO construction toys in the US alone, far exceeding USD 1 billion. Finally, the Respondent did not object to the reputation of the LEGO trademark.
As a consequence, the Panel agrees with the Complainant's statement that “[I]t is highly unlikely that the Respondent would not have known of the Complainant's legal rights in the name at the time of the registration”. This is even more so if the Respondent were only 11 years old as stated in his correspondence with the Complainant. As a matter of fact, the principal users of the LEGO products are children.
Under certain circumstances, the registration of a domain name containing a well-known and highly recognizable trademark constitutes a bad faith registration, even if accompanied by another term, as it is highly likely that at the time of the registration of the domain name, the registrant knew that the well-known trademark he/she was including in the domain name, belonged to a third party.
As to use in bad faith, the Complainant proved that at least at the time of the filing of the Complaint, the Domain Name was used to connect to a website containing sponsored links (see Annex 10 to the Complaint).
The fact that the sponsored links are placed on a parking page of the Domain Name provider is irrelevant. Indeed, the Respondent had the control of the website at any time, and the full power to decide its content and prevent third parties from using the Domain Name for illegitimate purposes. The Respondent's stated ability to control the website is confirmed by Ms. Samantha Hastings' e-mail sent to the Center on June 24, 2009, where she says that “[T]he website was deleted months ago. We should not be contacted anymore and we have no way to contact you back because you are international. Please remove the issue and tell Cecilia that it was already taken care of. Thank you”. Contrary to this statement, despite the Respondent's ability to avoid illegitimate sponsored links from the “www.legosaurusrex” website, the Respondent failed to take any action, including after having received the Complainant's letter pointing out its rights over the LEGO trademark and the illegitimate registration of the Domain Name.
In addition, the Complainant proved that it offered to reimburse the out-of-pocket costs directly related to the Domain Name in exchange of the Domain Name assignment. However, the Respondent did not accept this offer, nor did he adduce any reason for refusing to assign the Domain Name in exchange of the documented out-of-pocket expenses. By doing so, the Respondent implicitly admitted that his maintenance and use of the Domain Name was not in good faith, and that he registered the Domain Name primarily for the purpose of selling, renting or otherwise transferring it to the Complainant for valuable consideration in excess of his documented out-of-pocket costs directly related to the Domain Name.
In the light of the above, the Panel concludes that the Domain Name was not only registered, but also used in bad faith.
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 name <legosaurusrex.com> be transferred to the Complainant.
Dated: July 14, 2009