The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services AB, Sweden.
The Respondent is Edwin Knight of Osaka, Japan.
The disputed domain name <legosite.com> is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2009. On July 10, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On July 10, 2009, eNom 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 July 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 9, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 10, 2009.
The Center appointed Haig Oghigian as the sole panelist in this matter on August 17, 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.
As there is no submission from the Respondent, the facts are taken from the Complaint and generally are accepted as true.
The Complainant is the owner of the trademark LEGO and all other trademarks used in connection with the LEGO brand of construction toys and other LEGO branded products. The Complainant and its licensees commenced use of the LEGO mark in the United States in 1953 to identify construction toys made and sold by them. The Complainant also owns more than 450 domain names containing the mark LEGO.
The LEGO mark is depicted on all products, packaging, displays, advertising, and promotional materials. The Complainant and its licensees have also expanded their use of the LEGO trademark to computer hardware and software, books, videos and computer controlled robotic construction sets etc. They also maintain a website under the domain name <lego.com>.
The disputed domain name <legosite.com> was first registered on April 20, 2003.
The Complainant requests that the disputed domain name be transferred from the Respondent to the Complainant.
The Complainant asserts that the dominant part of the disputed domain name comprises the word “lego”, which is identical to the trademark LEGO registered by the Complainant all over the world. The addition of the suffix “site”, and the top-level domain “.com” will not have any impact on the overall impression of the dominant part of the name, LEGO. Anyone who sees the disputed domain name is likely to link it to the Complainant. The domain name is therefore confusingly similar to the Complainant's trademark.
The Complainant claims that it has not found that the Respondent has any registered trademark or trade names corresponding to the disputed domain name. Nor has the Complainant found anything that the Respondent has been using LEGO in any other way that would give them any legitimate rights in the name. Further, no license or authorization of any other kind has been given by the Complainant to the Respondent, to use the trademark LEGO.
The Complainant alleges that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Neither is the website a fan site that could give the Respondent rights or legitimate interests to the disputed domain name since the website is clearly commercial as it contains sponsored links. The website at the disputed domain name contains a link to a site where there is a list of products that appears to have been offered for sale. Some of the products there are not official LEGO products. For these reasons, the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant alleges that the disputed domain name was registered and is being used in bad faith as the Respondent is using the disputed domain name intentionally to attract, for commercial gain, Internet users to the websites, by creating a likelihood of confusion with the Complainant's mark. It is irrelevant whether or not the Respondent has influence over what links should be included on the site, or whether the Respondent is actually receiving revenue from this page.
The Respondent did not submit a Response to the Complainant's contentions.
In order to succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and used in bad faith.
Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. In line with such provision, the Complainant must prove that it enjoys the trademark right, and that the disputed domain name is identical or confusingly similar to its trademark or service mark.
It is established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.)
It is clear on the given evidence that the Complainant has a longstanding use of its name “Lego” and that it has registered trademarks that incorporate the name in many parts of the world.
The disputed domain name differs from the Complainant's name and mark only by the addition of the top level domain “.com” and the suffix “site”. The Panel is satisfied that this clearly is identical or confusingly similar to the Complainant's name and mark and the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that can be brought forward by the Respondent in order to demonstrate its rights or legitimate interests. Such circumstances can be:
- (demonstrable preparations to) use the domain name in connection with a bona fide offering of goods or services prior to the dispute;
- an indication that the Respondent has been commonly known by the domain name even if it has acquired no trademark rights; or
- a legitimate noncommercial or fair use of the domain name without intent for commercial gain to divert consumers or to tarnish the trademark.
This case raises the difficult question of whether a fan site constitutes a right or legitimate interest in the disputed domain name as the decisions of previous UDRP panels were not uniform. There are generally two contrasting views on this issue. On the one hand, there were decisions to the effect that an active and clearly noncommercial fan site may have rights and legitimate interests in the domain name (2001 White Castle Way, Inc. v. Glyn O. Jacobs, WIPO Case No. D2004-0001). On the other, some panels were of the opinion that a respondent does not have rights or legitimate interests to express its view, even if positive, on an individual or entity by using an identical or confusingly similar domain name (David Gilmour, David Gilmour Music Limited and David Gilmour Music Overseas Limited v. Ermanno Cenicolla, WIPO Case No. D2000-1459).
The website linked to the disputed domain name clearly indicates in Japanese that it is a community space of LEGO fans. At the bottom of the screen, the website also contains a disclaimer to the effect that “this site has absolutely no relationship with the official LEGO company, and is being administered individually as a LEGO fan for everyone's enjoyment of LEGO” in Japanese.
While the disclaimer accurately discloses the lack of relationship between the website operator and LEGO, the question is whether the website is “clearly noncommercial” as indicated under paragraph 4(c)(iii) of the Policy. In this respect, the Respondent's website contains sponsored links to sites such as “www.amazon.co.jp”. The Respondent's website also contains a link to an on-line membership based market for the purchase and sale of LEGO products, which the Respondent interestingly titled “black market”. It is unclear whether the on-line market is still active or not as it also contains a message “black market has ended”, which dates back to October 2007. Irrespective of whether the on-line market is currently active or not, it does appear that at the least, the Respondent was using the site for commercial purposes at one stage prior to the dispute.
This brings the Panel to the next question, whether the Respondent used the disputed domain name in connection with a bona fide offering of goods or services. In this aspect, the Panel is guided by the decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, which sets out the following requirements for a “bona fide” offering of goods or services:
(a) the Respondent must actually be offering the goods or services at issue;
(b) the Respondent must use the site to sell only the trademarked goods;
(c) the website must accurately disclose the registrant's relationship with the trademark owner; and
(d) the Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
In this case, as observed above, the website seems to offer an on-line forum for LEGO fans. While the site offers or at least offered LEGO goods and accurately discloses the Respondent's relationship with the trademark owner and the Respondent is not cornering the market in all domain names, there is insufficient evidence for the Panel to either affirm or deny whether the Respondent is selling only the trademarked goods. The Complainant alleges that some of the products on the website are not official LEGO products and pointed to the picture of guns at the top of the website (attached as Annex 13 to the Complaint) as an example. However, it is unclear whether the guns are actually parts of the goods being sold.
It is generally accepted that it is more difficult for a complainant to prove that a respondent does not have any rights or legitimate interests in a domain name than for a respondent to prove that such rights or legitimate interests exist (pursuant to paragraph 4(c) of the Policy). Previous UDRP panels have found that once a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent (LEGO Juris A/S v. LogoFusion, WIPO Case No. D2006-0270).
The Panel finds that the Respondent was properly notified of this proceeding. The Panel understands that the Complainant has neither granted the Respondent rights to use its mark to create a fan site nor to use its mark in any other way. The Panel further finds that the Complainant appears to have made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The silence of the Respondent and its failure to present any evidence regarding its rights to or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy leads the Panel to conclude that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name.
Taking into consideration the Panel's findings above, especially in light of the apparently commercial use of the domain name, the Panel is also guided by previous UDRP panels' decision that the presence of pay-per-click links implies the intention to attract, for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's mark, which in turn, signals bad faith.
The Panel therefore finds that the Respondent has registered and is using the disputed domain name 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 <legosite.com> be transferred to the Complainant.
Dated: September 4, 2009