World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. (FAST-12785240) / Steve Malcolm

Case No. D2010-1898

1. The Parties

The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.

The Respondent is (FAST-12785240) of Utah, United States of America / Steve Malcolm of Bloomfield, New Jersey, United States of America, self represented.

2. The Domain Name and Registrar

The disputed domain name <legocufflinks.com> is registered with FastDomain, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2010. On November 9, 2010, the Center transmitted by email to FastDomain, Inc. a request for registrar verification in connection with the disputed domain name. On November 10, 2010, FastDomain, Inc. transmitted by email to the Center its verification disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 11, 2010 providing the registrant and contact information disclosed by FastDomain, Inc. and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 12, 2010. The Center verified that the Complaint together with the amendment to 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”).

On November 11, 2011, an email was received from the Respondent requesting information regarding the Complaint. The Center transmitted its reply to the Respondent on November 12, 2010. 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 November 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2010. The Response was filed with the Center on November 28, 2010.

The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on December 28, 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.

4. Factual Background

The Complainant is the owner of LEGO brands used for construction toys and other LEGO branded products.

The Complainant has registered numerous trademarks and domain names comprising the word “LEGO” in many countries of the world.

Beside the list of world-wide LEGO trademarks, copies of the following registrations have been submitted with the Complaint:

- United States Registration No. 1018875 on August 26, 1975;

- CTM Registration No. 39800 on October 5, 1998.

According to the WhoIs database, the domain name <legocufflinks.com> was registered on June 12, 2010, for a website that sells bricks shaped cufflinks that, according to the Complainant, are not LEGO trademarked goods.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- The awareness of the trademark LEGO has been confirmed in numerous previous UDRP decisions and neither the addition of the suffix “cufflinks” nor the addition of the top-level domain “.com” have any impact on the overall impression of the disputed domain name which dominant part consists in the word “LEGO”. Therefore, the disputed domain name is confusingly similar to the Complainant’s LEGO trademark;

- The Respondent registered the disputed domain name <legocufflinks.com> without the permission of the Complainant and it does not have a right or legitimate interest in the disputed domain name;

- The Respondent has registered and is using the disputed domain name in bad faith:

- Since LEGO is a famous worldwide trademark, the Respondent was aware of the Complainant’s rights;

- The Respondent did not reply to the cease and desist letter of July 16, 2010, which has been considered relevant in a finding of bad faith in previous UDRP decisions (citing; News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598 and America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460).

- On the website connected to the disputed domain name, the Respondent uses the LEGO trademark followed by a “r” symbol and the cufflinks have a brick design. 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;

- The Complainant requests the Panel to issue a decision that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent contends that:

- Since the Complainant is not a jewellery supplier and does not produce cufflinks, there is no risk of confusion between the products sold by the Respondent and the LEGO products;

- By adding to the bottom of every page of the website that “LEGO (with “r” symbol) is a trademark of the LEGO Group of companies which does not sponsor, authorize or endorse this store”, the Respondent is in good faith;

- Other stores sell LEGO cufflinks and the Respondent uses the term “Lego” only to describe the cufflinks;

- The Respondent did not receive the cease and desist letter.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must convince the Panel of three elements if it wishes to have the disputed domain name transferred. It is incumbent on the Complainant to show:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark (“mark”) in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is the registered owner of the LEGO trademark in many countries of the world and of many registered domain names incorporating the word LEGO.

In comparison with the Complainant's trademark, the disputed domain name bears the additional word "cufflinks". However, the word "cufflinks" is a generic term and the Panel finds that the dominant term in the disputed domain name is LEGO. It is a well-established principle that the addition of descriptive or non-distinctive terms to a complainant’s trademark in a domain name does not dispel confusing similarity. In Research in Motion Limited v. WG/Shahbaz Khan, WIPO Case No. D2008-0165, the panel, in ordering the transfer of the domain name <blackberryaccessories.com> to the complainant, held that the addition of “accessories” did nothing to diminish confusing similarity. Similarly, in Research in Motion Limited v. Nicholas Stewart, WIPO Case No. D2008-0262 and in Research in Motion Limited v. Blackberry World, WIPO Case No. D2006-1099, the panels held that the domain names <blackberrytunes.com> and <blackberryworld.com> were confusingly similar to the BLACKBERRY trademark.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the LEGO trademarks in which the Complainant has rights and continues to have rights.

B. Rights or Legitimate Interests

The Policy outlines in paragraph 4(c) circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:

(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) 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 trademark or service mark at issue.

The LEGO trademarks have been registered by the Complainant before the registration of the disputed domain name and no evidence was provided regarding the registration of a trademark by the Respondent. Nothing suggests that the Respondent has priority rights on the disputed domain name which includes the Complainant’s trademark LEGO.

Furthermore, there is no evidence that the Respondent is affiliated with the Complainant or otherwise authorized to use the Complainant’s trademarks. On the contrary, the Complainant asserts that no license or authorization of any other kind, has been given by the Complainant to the Respondent, to use the trademark LEGO.

Finally, even if the bricks used for the cufflinks displayed on the Respondent’s website appear to be similar to the LEGO branded bricks, the Panel finds that the use of the disputed domain name made by the Respondent in this case cannot be considered as a bona fide offering of goods or services.

The Panel thus finds that the Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Policy outlines in paragraph 4(b) circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. These circumstances are:

(i) circumstances indicating that the Respondent have 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 Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) The Respondent have 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 have engaged in a pattern of such conduct; or

(iii) The Respondent have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent have 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 Respondent’s website or location or of a product or service on Respondent’s web site or location.

In connection with bad faith, the Complainant notes that the Respondent did not reply to the cease and desist letter. Nevertheless, it has not provided the Panel with proof that it actually sent the cease and desist letter or that this letter was received by the Respondent. Thus, this contention is inoperative.

While adding to the bottom of the website that “LEGO (with the “r” symbol) is a trademark of the LEGO Group of companies, which does not sponsor, authorize or endorse this store”, the Respondent shows that it knows the Complainant’s rights and this precaution is insufficient to demonstrate its good faith.

Furthermore, as stated in case, Lego Juris A/S v. Synergy Management, Fred Shear, WIPO Case No. D2007-1028 the panel held that “even if visitors, having studied the contents of the website (including the disclaimer in small text), and realize that they are being offered products of the Respondent, their initial confusion has led them to visit the website of the Respondent”.

Even if the bricks used for the cufflinks appear to be similar to the LEGO branded bricks, the Respondent could have chosen a different domain name. Taking as domain name <legocufflinks.com>, the Respondent intended to profit of the Complainant’s reputation. The Panel considers that the disputed domain name, which contains the whole of the LEGO trademark, is likely to confuse potential consumers in believing that the Respondent is somehow affiliated with, or endorsed by, the Complainant.

In addition, the Complainant commenced the use of the trademark LEGO in the toy manufacturing area since 1953 and the Complainant’s trademarked products are sold worldwide. By using LEGO bricks style and selling the cufflinks on <legocufflinks.com>, the Respondent intended to stand in the wake of the Complainant.

Accordingly, in the view of this Panel, these elements characterize the intention to attract, for commercial gain, Internet users to one’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of one’s website or location of a product or service on one’s website or location.

The Panel finds that the Complainant has established that the Respondent has registered and used the disputed domain names in bad faith and has met the requirements of paragraph 4(a)(iv) of the Policy.

7. Decision

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 <legocufflinks.com> be transferred to the Complainant.

Christiane Féral-Schuhl
Sole Panelist
Dated: January 10, 2011

 

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