The Complainant is LEGO Juris A/S of Denmark, represented by Melbourne IT Digital Brand Services of Sweden.
The Respondent is Seth Landau of Washington, United States of America.
The disputed domain name <newlegokits.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2009. On October 6, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On October 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 October 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 29, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 30, 2009.
The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on November 3, 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 a Danish company that makes and sells the famous Lego brand of construction toys and other Lego branded products.
The Complainant and its associated companies are the owners of many international trademarks for LEGO. In particular, the Complainant is the registered owner of trademark registered No.1018875 registered with the United States Patent and Trademark Office on August 26, 1975, which together with the Complainant's many other international trademarks for LEGO are referred to hereafter as “the LEGO mark”.
The Complainant and its licensees and predecessors commenced use of the LEGO mark in the United States of America (“the United States”) during 1953 and the use of the mark has been extensive, exclusive and continuous since then. Over the years, the Complainant's business of making and selling LEGO branded toys has grown considerably and it is now the most prominent manufacturer of toys and one of the most prominent brands in the world. In 1980 its revenue was more than USD1.8 billion. The Complainant's Lego products are now sold in more than 130 countries, including in the United States where the Respondent is domiciled.
The Complainant and its associated companies have expanded their use of the LEGO mark to include computer hardware and software, books, videos and computer controlled robotic construction sets.
The Complainant is also the owner of more than 1000 domain names containing the term lego and operates its own website.
The domain name was registered on December 5, 2004 and was transferred to the Respondent on September 8, 2007.
The Complainant alleges that the domain name <newlegokits.com> should no longer be registered with the Respondent, but that it should be transferred to the Complainant.
It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain name is confusingly similar to the Complainant's registered LEGO mark, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.
In support of its case on the first of these three elements, the Complainant relies on the registered LEGO mark to which reference has already been made. It then says that the domain name <newlegokits.com> is confusingly similar to the LEGO mark as the domain name incorporates the whole of the LEGO mark and merely adds the two words “new” and “kits” which are generic and which do not detract from or diminish the confusing similarity arising from the use of the LEGO mark in the domain name.
The Complainant then contends, to establish the second element, that the Respondent has no rights or legitimate interests in the domain name because the Respondent has used the famous LEGO mark in his domain name, the facts show an obvious intention by the Respondent to benefit from the reputation of the well-known LEGO mark in an illegitimate manner and the Respondent has not been authorized to use the mark in a domain name or anywhere else.
The Complainant then contends, to establish the third element, that the domain name has been registered and used in bad faith, because the facts show that the Respondent registered the domain name primarily to trade off the Complainant's famous LEGO mark and that the Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the site or location. That is so because the Respondent has linked the domain name to a website that actively promotes goods such as toys, kits, hobbies and robotic construction kits which are goods that the Complainant produces and sells as well as other goods and services. It is also submitted by the Complainant that the whole of the conduct of the Respondent, including the implausible explanations he has given for holding onto the domain name and using it, constitute bad faith both with respect to the registration and the use of the domain name.
The Respondent did not submit a Response, but in reply to communications from the Complainant and the Center sent four emails to the Complainant and one to the Center. The Panel will regard those emails as submissions by the Respondent and take them into account in reaching its decision.
In response to a cease and desist letter dated May 8, 2009, the Respondent sent the following email to the Complainant's representatives dated May 11, 2009:
“This site when it is built will be about a product for people with specific leg problems. It is a medical site that no one will confuse with the block toys. In this case LEGO is short for legometric. Therefore there is no conflict or chance of someone confusing this with your toy blocks. Therefore this name will stay and when we decide, be used for our medical leg products. Which by the way will be geared for hurt veterans. Thank you for your concern. You need have none. Seth D. Landau.”
The Respondent sent another e-mail to the Complainant's representatives on May 18, 2009 as follows:
“Yes you have. I sent you an e-mail a week ago explaining the site will be used for selling a product and process dealing with artificial legs for injured soldiers. The lego toy block will not be confused with this product and process nor is your trademark being violated. When the site is finally up there will be no confusion. We will not be giving up the .com name. Thank you for your concern you need have none. Seth Landau.”
The Respondent sent a further email to the Complainant's representatives on May 19, 2009 as follows:
“There are numerous examples of different business with the same name and no confusion. McDonald's Hamburgers, McDonalds Furniture'.Ford cars.Ford Medical Center, etc.etc. There will be no confusion when we get the actual site up. Thanks for your concern.”
The Respondent sent a further email to the Complainant's representatives, also on May 19, 2009 as follows: “I feel we are totally legal and will stay as we are. In the state of washington you have to suffer damages to gain anything. We will not harm Lego blocks nor will there be any confusion. Get on to something that matters and quit wasting your companies time. Thank you.”
After receipt of the Complaint, the Respondent on 3 November, 2009 sent the following email to the Center:
“Are you a bunch of nitwits? I let this name go weeks ago. Save some money, get a clue.”
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.
For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
(i) The domain name is 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 domain name; and
(iii) The domain name has been registered and is being used in bad faith.
It is to be noted that paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn.
The Panel accepts the evidence submitted by the Complainant that together with its associated companies it owns the registered LEGO trademarks to which reference has been made and therefore has rights in those marks.
The domain name <newlegokits.com> is confusingly similar to the LEGO mark as the domain name incorporates the whole of the LEGO mark and merely adds the two words “new” and “kits” and the gTLD suffix “.com”. The two words that have been added are generic and do not detract from or diminish the confusing similarity arising from the use of the LEGO mark in the domain name. That is so because the evidence shows that the trademarked LEGO goods are by necessary inference new when sold by the Complainant and that some of them are sold in kits.
The objective bystander faced with the domain name and the LEGO mark would therefore naturally assume that the domain name is referring to the famous manufacturer and supplier of goods under the LEGO mark and specifically to those of its goods that are new and available in kits.
It has also long been held that suffixes such as the gTLD suffix ‘.com' cannot negate confusing similarity where it otherwise exists, as it does in the present case.
The Panel finds that the Complainant has therefore made out the first of the three elements that it must establish.
Under paragraph 4(a) (ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name. But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Thus, if the Respondent proves any of these elements or indeed anything else that shows it has a right or interest in the domain name, the Complainant will have failed to discharge its onus and the Complaint will fail.
It is also well established that, as it is put in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions:
“…a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
The Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name.
The prima facie case is based on the facts that:
(i) the LEGO mark is one of the most famous in the world;
(ii) it indicates one of the most famous manufacturers of construction toys, computer hardware and software, books, videos and computer controlled robotic construction sets in the world including in the United States where the Respondent is domiciled;
(iii) the original registrant of the domain name and subsequently the Respondent when he acquired it, chose this prominent trademark as part of the domain name and made only minor additions to it so that the resulting domain name emphasised the confusing similarity that automatically arose from using the LEGO mark in the domain name;
(iv) the Respondent then linked the domain name to a website that advertises, among other goods, computer hardware and software, books, videos and computer controlled robotic construction sets, goods that are manufactured and sold by the Complainant as well as other goods and services that are not provided by the Complainant;
(v) the Respondent has not been authorized by the Complainant to use the LEGO mark or name in a domain name or anywhere else.
The Complainant has thus made out a prima facie case and the burden therefore shifts to the Respondent to rebut it.
The Panel does not accept that the Respondent has discharged his burden of proof or otherwise rebutted the prima facie case. That is so for the following reasons.
The Respondent's arguments to justify the registration and use of the domain name have been consistent and to the effect that the domain name does not give rise to confusion with the LEGO mark and the famous LEGO products and that it will be used for products different from those with which the famous LEGO brand is associated, thus lessening any potential for confusion.
The Panel has already found that the domain name is confusingly similar to the LEGO mark.
The Panel does not accept that it has been the intention of the Respondent to use the domain name for his purported product “legometrics” or that even if this had occurred it would have constituted a right or legitimate interest in the domain name. That is so because it must be seriously doubted if “legometrics” is a word at all or that it means any activity that the Respondent could legitimately promote on his proposed new website. Even if “legometrics” is such a word, the Respondent's claim that he would use his website for the promotion of that activity was made in May 2009 and yet at the current time the domain name resolves to a website that does not promote any goods or services claimed to be “legometrics”. Accordingly, the Respondent has not made any demonstrable preparations to use the domain name for a bona fide offering of goods or services. Indeed, the Respondent has linked the domain name to a website that actively promotes through sponsored links toys, kits, hobbies and robotic construction kits which are goods that the Complainant produces and sells. Such a use is not making a bona fide offering of goods or services. The Panel therefore not only finds the Respondent's claim of his proposed use of the domain name an implausible one, but finds that the Respondent has been using the domain name in a manner that shows by itself that he does not have a right or legitimate interest in the domain name.
Accordingly, the Panel finds that the Respondent has not rebutted the prima facie case against him and that the Complainant has made out the second of the three elements that it must establish.
The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or 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 that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent's website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the site or location.
The Complainant relies on paragraphs 4(b)(iv) and also on the general notion of bad faith, which it is clearly entitled to do, for there have been many UDRP panel decisions that have held that bad faith is not limited to the factors set out in paragraph 4(b) of the Policy.
The Panel finds that the evidence submitted by the Complainant makes out a strong case that the domain name was registered and is being used in bad faith. In particular, the facts bring the case squarely within the provisions of paragraph 4(b)(iv) of the Policy. That is so for the following reasons.
The evidence shows that there was incorporated in the domain name when it was registered the Complainant's famous LEGO trademark with additions suggesting that the domain name relates to new examples of the Complainant's famous toy kits and related products. This raises the preliminary assumption that the domain name was registered and has since been acquired by the Respondent and used for some illegitimate purpose. It was open to the Respondent to show that this was not so, but the explanation he has given is implausible and the Panel on the balance of probabilities rejects it.
Secondly, the Respondent has used and is currently using the domain name to provide links to a website. The website to which the domain name <newlegokits.com> resolves contains sponsored links advertising toys, kits, hobbies and robotic construction kits which are goods that the Complainant produces and sells. This enhances the notion that the Respondent is improperly using a well-known trademark to mislead consumers who might be looking for the Complainant's official website to obtain information about and to buy the Complainant's goods. In effect, the Respondent is acting in bad faith to generate Internet traffic created by confusion with the LEGO mark.
That conclusion makes it clear that the facts of the present case bring it squarely within the provisions of paragraph 4(b)(iv) of the Policy.
Moreover the whole modus operandi of the Respondent in acquiring such a famous trademark without any apparent authority or legitimate purpose brings the registration and subsequently the use of the domain name within the general notion of bad faith on which the Complainant also relies.
The Panel therefore finds that the Respondent has registered and used the domain name in bad faith.
The Panel finds that the Complainant has thus made out the third of the three elements that it must establish under the Policy.
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 <newlegokits.com> be transferred to the Complainant.
The Honourable Neil Anthony Brown QC
Dated: November 8, 2009