The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is John Davies, Swoyersville of Pennsylvania, United States of America.
The domain name <legofanatic.net> (the “Domain Name”) is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2010. On February 4, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On February 7, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and confirming his contact details as being the same as those set out in the Complaint. 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 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 28, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on March 1, 2010.
The Center appointed Nick J. Gardner as the sole panelist in this matter on March 9, 2010. 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 and the owner of trade mark registrations for the LEGO word and stylised LEGO word trade marks in numerous countries worldwide, including the United Sates (the “Trade Marks”). Such registrations predate the date of registration of the Domain Name.
The Respondent is an individual with an address in the United States. The Respondent registered the Domain Name on September 26, 2009. The Domain Name is, as at the date of the Complaint, being used in relation to a web site “www.legofanatic.com” which is a parking site containing what appear to be automatically generated links, most of which appear to relate to LEGO products (see below) in one form or another (the “Website”). The text entries associated with each link, as displayed on the Website, are not in English – the Panel infers these are probably in Danish.
On November 26, 2009 the Complaint wrote to the Respondent asserting its rights and requesting transfer of the Domain Name in return for reimbursement of out of pocket expenses. Some e-mail correspondence then took place between the Complainant and the Respondent but that did not result in any agreement.
The Complainant has submitted detailed evidence as to the nature and extent of its activities. The main points emerging from this evidence may be summarised as follows.
The Complainant is the owner of the trademark LEGO and various other trademarks used in connection with what it describes as “the famous LEGO brand of construction toys and other LEGO branded products”.
Predecessors to the Complainant and its licensees commenced use of the LEGO mark in the United States during 1953, to identify construction toys made and sold by them. Since then the Complainant and its licensees, or their predecessors, have made extensive, exclusive and continuous use of the LEGO mark. Over the years, the business of making and selling LEGO brand toys has grown remarkably. By way of example, the revenue for the LEGO Group in 2008 was more than USD 1.8 billion. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in the United States.
The Complainant says that the trademark LEGO is among the best-known trademarks in the world. In support of this claim it refers to a list of the top 500 “Superbrands” for 2009/10, provided by Superbrands UK, showing LEGO as number 8 of the most famous trademarks and brands in the world.
The Complainant maintains an extensive Web site under the domain name <lego.com>. The Complainant is also the owner of more than 1,000 domain names containing the term “lego”.
So far as the Policy is concerned the Complainant's main contentions can be summarised as follows.
The Domain Name is confusingly similar to the Trade Marks. The dominant part of the Domain Name comprises the word “lego”, which is identical to the Complainant's registered trade mark LEGO. The addition of the suffix “fanatic” is not relevant and will not have any impact on the overall impression of the dominant part of the name, lego, instantly recognisable as a world famous trade mark. It is a long-established precedent that confusing similarity is generally recognized when well-known trade marks are paired up with different kinds of prefixes and suffixes.
The addition of the top-level domain “.net” does not have any impact on the overall impression of the dominant portion of the Domain Name and are therefore irrelevant to determine the confusing similarity between the trade Marks and the Domain Name.
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 trade marks of the Complainant. With reference to the reputation of the trade mark LEGO there is a considerable risk that the trade public will perceive the Domain Name either as a domain name owned by the Complainant or that there is some kind of commercial relation with the Complainant. The Trade marks also risk being tarnished by being connected to the Website. By using the trademark LEGO as a dominant part of the Domain Name, the Respondent exploits the goodwill and the image of the Trademarks, which may result in dilution and other damage for the Trademarks. Persons seeing the Domain Name at issue, 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”).
The Complainant has not found that the Respondent has any registered trade marks or trade names corresponding to the Domain Name. The Complainant has also not found anything that would suggest that the Respondent has been using LEGO in any other way that would give him any legitimate rights in the name.
No licence or authorisation of any other kind has been given by the Complainant to the Respondent to use the Trade Marks. The Respondent is not an authorised dealer of the Complainant's products and has never had a business relationship with the Complainant.
The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the domain name.
LEGO is a famous trade mark worldwide and an extremely valuable asset. It is highly unlikely that the Respondent would not have known of the Complainant's legal rights in the name at the time of registration. It is rather obvious that it is the fame of the trade mark that has motivated the respondent to register the Domain Name. That is, the Respondent cannot claim to have been using LEGO, without being aware of the Complainant's rights to it. This, among other facts, proves that the Respondent's interests cannot have been legitimate.
The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. Use which intentionally trades on the fame of another can not constitute a bona fide offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy. The Respondent cannot plausibly argue that he did not intentionally adopt his website so as to benefit from the goodwill of the LEGO mark.
The Complainant first tried to contact the Respondent on November 26, 2009 through a cease and desist letter, both by e-mail and postal mail. On the same day, the Complainant received a reply stating that the Respondent was willing to transfer the Domain Name in exchange for “transfer fees as well as registration the fee”. The Complainant replied on December 1, 2009 that it assumed registration costs did not exceed USD 10, and asked the Respondent to confirm this. After that, the Complainant has not heard from the Respondent. A reminder was sent on December 9, 2009 and then a final reminder on January 27, 2010, but no reply was ever received. It would appear the Respondent was expecting to get more money for the Domain Name and was not willing to transfer it anymore. Since the efforts of trying to solve the matter amicably were unsuccessful, the Complainant chose to file a complaint according to the UDRP process.
The Domain Name is currently connected to a web site containing sponsored links. Consequently, the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the website. Whether or not the Respondent has influenced what link 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 the pages himself. In Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912, the respondent claimed that the web site was created by the registrar, that he had no knowledge of the content and that he had actually not received any money from the web site. The panel then stated that “these facts do not exclude bad faith under paragraph 4(b)(iv) for the following reasons: (i) paragraph 4(b)(iv) requires the Respondent to intend to attract Internet users ‘for commercial gain', but this gain does not need to be derived by the Respondent himself. The Respondent cannot infringe the Complainant's rights with impunity on the basis that it is allowing a third party to reap the profits of its wrongful conduct; (ii) the Respondent has at all times been in contractual control of the content of the website at the disputed domain name, and had the power to instruct the Registrar to remove the parking page.” These circumstances apply in this case as well.
In summary LEGO is a famous trade mark world wide. There is no doubt that the Respondent was aware of the rights the Complainant has in the Trade Marks and the value of the Trade Marks, at the point of the registration. There is no connection between the Respondent and the Complainant. By using the Domain Name the Respondent is not making a legitimate non-commercial or fair use without intent for commercial gain, but is misleadingly diverting consumers for the Respondent's own commercial gain.
The Respondent should be considered to have registered and to be using the Domain Name in bad faith.
The Respondent did not reply to the Complaint.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(1) The Domain Name is identical with or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(3) The Domain Name has been registered and is being used in bad faith.
The Panel finds that the Complainant has rights in the Trade Marks acquired through registration and use. The evidence clearly establishes the LEGO brand and the Trade Marks as being well known. The Panel notes that numerous previous panels have reached a similar conclusion (see Lego Juris A/S v. Hu Liang/Dolego, WIPO Case No. D2009-0848; LEGO Juris A/S v. Whois Privacy Protection Service, Inc./ Stop2Shop, G V, WIPO Case No. D2009-0784; LEGO Juris A/S v. Private, Registration / Dohe Dot, WIPO Case No. D2009-0753; LEGO Juris A/S v. EcomMutual, WIPO Case No. D2009-0685; LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680; LEGO Juris A/S v. Deng Yi Xia, WIPO Case No. D2009-0644; LEGO Juris A/S v. Mohamed Ouattara / Integral Assets Ltd, WIPO Case No. D2009-0564; Lego Juris A/S v. Gioacchino Zerbo, WIPO Case No. D2009-0500; LEGO Juris A/S v. Mike Morgan, WIPO Case No. D2009-0438; LEGO Juris A/S v. Bladimir Boyiko, WIPO Case No. D2009-0437; LEGO Juris A/S v. Domainproxyagent.com and Compsys Domain Solutions Private Limited, WIPO Case No. D2009-0381; LEGO Juris A/S v. Zhijun Guo, WIPO Case No. D2009-0184; LEGO Juris A/S v. P N S Enterprises, WIPO Case No. D2009-0170; LEGO Juris A/S v. David Palmer, WIPO Case No. D2008-1826; LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715; and LEGO Juris A/S v. Level 5 Corp., WIPO Case No. D2008-1692.)
The Domain Name is confusingly similar to the Trade Marks. UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
It is established that, where a mark is the distinctive part of a domain name, the domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).
It is also established that the addition of a generic term to the disputed domain name has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
The Panel finds that the addition of the word “fanatic”, being a term simply denoting an enthusiast for the product, as a suffix after the word “lego”, in the Domain Name does little to distinguish the Domain Name from the Trade Marks, and the likelihood of confusion between the Domain Name and the Trade Marks is high.
Accordingly the Panel finds that the Domain Name is confusingly similar to the Trade Marks. Accordingly the first condition of paragraph 4(a) of the Policy has been fulfilled.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(1) before any notice to the Respondent of the dispute, 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
(2) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights; or
(3) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Domain Name or to use the Trade Marks. The Complainant has prior rights in the Trade Marks which precede the Respondent's registration and use of the Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the Domain Name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Domain Name. Accordingly the second condition of paragraph 4(a) of the Policy has been fulfilled.
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of a respondent:
“By using the disputed domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location”.
By virtue of the confusing similarity of the Domain Name to the Trade Marks and the inclusion of links to various LEGO products on the Website, the Panel finds that the public is likely to be confused into thinking that the Domain Name has a connection with the Respondent, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the Website.
Further, the Panel believes that LEGO is a well known trademark that enjoys a worldwide reputation. This has been confirmed by many previous UDRP decisions (see above). In previous UDRP decisions, panels have considered that in certain circumstances when a trademark is well known, the respondent's bad faith could be inferred (AT&T Corp. v. LaPorte Holdings, Inc., WIPO Case No. D2004-1088:
“Bad faith can be presumed based on the fame of Complainant's marks, such that the Respondent was aware or should have been aware of Complainant's well-known marks and claims of rights thereto”.
More particularly, previous panels have asserted, in relation to the LEGO trademark that:
“Given the world-wide fame of Lego, it seems clear that the Respondent was aware of the Complainant and at least the goodwill in the name Lego (and perhaps also the Lego trademark), when it registered the Domain Name”. (LEGO Juris A/S v. Mohamed Ouattara / Integral Assets Ltd, WIPO Case No. D2009-0564).
These findings lead the Panel to conclude that the Domain Name has been registered in bad faith by the Respondent.
So far as use is concerned the Website is a parking page displaying links, most of which appear to relate to various LEGO products. The Website is headed with text which states “This Web page is parked free, courtesy of GoDaddy.com”. It is now well known how these sorts of page operate. A domain name owner “parks” the domain name with a domain name parking service. The service provider then generates a page that incorporates sponsored links or links to sponsored links. When an Internet user clicks on these sponsored links, the entity sponsoring that link will make a payment. This “click-through revenue” typically may be split between the domain name parking service provider and the owner of the domain name (see for example Owens Corning v. NA, WIPO Case No. D2007-1143).
Traffic is attracted to the Website by virtue of the confusing similarity between the Domain Name and the Trademarks (see above). Such confusion is clearly intended to result in commercial gain given the fact that revenue will be earned from the parking site as a result of this “pay per click” traffic to the linked sites. In this case the Panel does not know whether the Respondent earned income himself from this arrangement or whether it was retained by the service provider. That does not matter. As has been pointed out in previous UDRP decisions (See, Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912), it is not relevant to know whether Respondent itself derived income on a pay-per-click basis from the links displayed on the parking site to which the domain name resolved. Paragraph 4(b)(iv) of the Policy requires a respondent to intend to attract Internet users “for commercial gain”, but this gain does not need to be derived by the respondent itself.
As a result, the Panel finds that the Domain Name has been registered and used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <legofanatic.net>, be transferred to the Complainant.
Nick J. Gardner
Dated: March 23, 2010