World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Andrew Vierling

Case No. D2010-1913

1. The Parties

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

The Respondent is Andrew Vierling of Jersey City, New Jersey, United States of America, pro se.

2. The Domain Name and Registrar

The disputed Domain Name <mylegostore.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2010. On November 10, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed Domain Name. On the same day, 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 November 17, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 7, 2010.

The Response was filed with the Center on December 8, 2010. On December 10, 2010, the Center acknowledged receipt of the filing of the late Response and informed the Respondent that the Panel (when duly appointed) would decide whether to accept the late Response.

On December 8, 9 and 26 2010, the Center received the supplemental filings from the both parties respectively. On December 10, 2010, the Center acknowledged receipt of the parties’ supplemental filings and informed the parties that, “It will be in the sole discretion of the Panel to determine whether to consider and/or admit the Supplemental Filing in rendering its decision, and whether to order further procedural steps, if any.”

The Center appointed Ugur G. Yalçiner as the sole panelist in this matter on January 5, 2011. 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 Panel subsequently found it necessary (and so informed the Parties) to extend the decision due date.

4. Factual Background

The Complainant, LEGO Juris A/S, is a Danish corporation widely recognized worldwide for its construction toys and other LEGO branded products.

The Complainant commenced use of the LEGO mark in the United States (the “U.S.”) in 1953 and has been recognized as being famous. LEGO is listed at the official top 500 super brands for 2009/2010 as number 8 of the most famous trademarks and brands in the world.

The revenue for the LEGO Group in 2009 was more than USD 2.8 billion.

LEGO products are sold in more than 130 countries with its subsidiaries and branches.

The Complainant is also the owner of more than 1000 domain names containing the term “Lego”.

The LEGO Group has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. The LEGO Group maintains an extensive web site under the Domain Name <lego.com>.

The disputed Domain Name <mylegostore.com> was registered on August 27, 2008 and is still active. Further, the web site of the disputed Domain Name includes the following disclaimer at the bottom and top of the page (which appear from the dated screen shots provided as evidence in the filed pleadings to have been added following commencement of the present dispute):

“Certain Trademarks are property of LEGO. mylegostore.com is not affiliated with the LEGO companies.”.

It also uncontested that the majority of products listed at the main page of the web site under the disputed Domain Name are genuine LEGO products (which can be purchased on a third party web site, being Amazon.com). It appears that in order to purchase such listed items, the Internet user must click on a link that redirects the user to a “check out” process at “www.amazon.com” (Amazon.com being an authorized retailer of LEGO products).

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

With respect to paragraph 4(a)(i) of the Policy and paragraph 3(b)(viii) and (b) ix)(1) of the Rules Complainant contends that:

The disputed Domain Name is confusingly similar to the Complainant’s world famous trademark LEGO despite the prefix “my” and the suffix “store” that is not relevant and does not have any impact on the overall impression of the dominant of the disputed Domain Name.

The likelihood of confusion includes an obvious association with the trademark of the Complainant and there is also considerable risk that the public will perceive the Respondent’s Domain Name either as a domain name owned by the Complainant or that there is some kind of commercial relation with the Complainant. Besides using the trademark as a dominant part of the Domain Name, the Respondent exploits the goodwill and the image of the trademark, which may result in dilution and other damage for the Complainant’s trademark.

Rights or Legitimate Interests

With respect to paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules, the Complainant contends that:

The Respondent does not have any trademarks or trade names corresponding to the Domain Name and also has made no other usage of LEGO which would give it any rights or legitimate interests in the disputed Domain Name. The mere registration of a domain name does not give the owner a right or a legitimate interest.

The Respondent is not authorized or licensed to use the trademark LEGO by the Complainant.

LEGO is a famous trademark worldwide and as stated in Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314, any use of a trademark in a domain name would violate the rights of the trademark owner.

Some goods sold at the web site connected to the disputed Domain Name are not LEGO trademarked goods, or licensed by LEGO as evidenced in Annex 11 of the Complaint where “Bestsellers” are ranked.

Accordingly, the Respondent is using the LEGO trademark and misleading Internet users to commercial web sites for own commercial gain and consequently, the Respondent is tarnishing the trademark LEGO.

Registered and Used in Bad Faith

With respect to paragraph 4(a)(iii), 4(b) of the Policy and paragraph 3 (b)(ix)(3) of the Rules the Complainant contends that:

The Respondent’s failure in replying both to the cease and desist letter dated August 24, 2010 and to the reminder dated October 4, 2010 is evidence of bad faith. Thus the Complainant asserts that the failure of a respondent to respond to a cease and desist letter, or a similar attempt at contact has been considered relevant in a finding of bad faith as in the News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623.

Connecting to a web site with sponsored links is not a bona fide use of the disputed Domain Name. So the Respondent is using the Domain Name intentionally attempting to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the web site.

The Respondent intentionally chose the disputed Domain Name, based on a registered well-known trademark in order to generate more traffic to his own business. The usage of LEGO’s color and brick pattern on the web site is most likely to mislead a visitor into believing that the site in some way is affiliated with the Complainant. Correspondingly there is no doubt that the Respondent was aware of the rights the Complainant has in the trademark and the value of said trademark, at the point of the registration. As such the Respondent has registered and is using the trademark LEGO in bad faith.

B. Respondent

Identical or Confusingly Similar

The Respondent contends that there is no likelihood of confusion between the trademark of the Complainant and the disputed Domain Name since in all advertising and usage seen globally that the Complainant refers to itself as LEGO in all capital letters whereas the usage in the disputed Domain Name <mylegostore.com> is in all lower case and any usage on the site for the phrase "mylegostore" is in either mixed case or all lower case.

The Respondent further contends that LEGO is used in a variety of contexts including commercially by a band called “Sadist” since 2000 in all over the world. However, the Complainant has chosen not to initiate proceedings against this product, which clearly is antithetical to the LEGO brand, shows that their trademark case is tenuous at best. Furthermore LEGO Group use the band’s record to promote is own products evidenced in Annex 1 which shows that search results for “Lego by Sadist” are greeted with advertising for the Complainant’s site.

The Respondent also claims that “lego” is a commonly used word in American English, as a contraction of the term “let go” and consist of four letters L-E-G-O whereas the disputed Domain Name consist of ten letters including prefix and suffix to LEGO. Accordingly these prefix and suffix no reasonable person would infer that the disputed Domain Name is owned by someone other than the Complainant.

Rights or Legitimate Interests

The Respondent adduces Annex 5 and Annex 6 of the Response as evidence that LEGO is the largest advertiser on the site and is profiting from the operation of the disputed site1. Correspondingly the Respondent claims that this situation indicates an implicit trust and acceptance of the disputed Domain Name, site and of the way the site is operated on the side of the Complainant. The Respondent also indicates that the argument about <mylegostore.com> harms LEGO’s business while at the same time providing monetary support to the site is not understandable.

The Respondent also claims that the Complainant could have put filters or exclusions at any time even after they launched the UDRP complaint in order to prevent their advertisments from being displayed on the web site under the disputed Domain Name, but the Complainant failed to do it.

The Respondent further asserts that <mylegstore.com> is an affiliate of an authorized LEGO dealer, “www.amazon.com”. Therefore the Complainant could chose to block Amazon.com from allowing third parties from selling their products, but has chosen not to do so.

Also Respondent indicates that the Complainant repeatedly confuses the affiliate relationship with an advertising relationship, and cites precedent only related to advertising. Further, the Complainant cannot at the same time base its entire case around whether advertising represents a bona fide use of their trademark, and also be the main advertiser on the site.

Regarding the claim that the non-LEGO goods are being sold on the site, the Respondent claims that 99% of the products listed on the web site for sale are LEGO products. Any non-LEGO products that are listed for sale on the site are caused by errors in the data feed provided by Amazon.com, which is an authorized agent of LEGO, while the pages are automatically populated with products from “www.amazon.com”.

Referring to the Complainant’s following claim, “Another criterion is that the registrant shall disclose the registrant’s relationship with the trademark owner, which is not done in this case.”, the Respondent contends that as is evidenced in ANNEX 6 of the Response, the last line of every page of the web site clearly indicates that the web site is not affiliated with the LEGO Group which serves to clear up any possible misconception.

The Respondent claims that the disputed Domain Name <mylegostore.com> is helping the Complainant to sell more of its product by partnering with an authorized reseller of the LEGO product line. Further, LEGO Juris A/S v. Jan Cerny, WIPO Case No. D2010-0707 does not apply because <mylegostore com> has an affiliate relationship to an authorized reseller, when people are sent to the “www.amazon.com” (Amazon.com site) for order fulfillment not an advertising relationship.

Registered and Used in Bad Faith

The Respondent contends that the Complainant’s claim of bad faith with regards to failure to respond to cease and desist letter and reminder is inconsistent. The Respondent indicates that it can be clearly seen in Annex 12 of the Complaint that notification of the Complaint was made to “Domains by Proxy, Inc.” not to the Respondent yet the Complainant’s Annex 2 clearly indicates that in the “WhoIs” database of the concerned Registrar, the registrant appeared to be “Andrew Vierling”.

The Respondent asserts that once the Complainant commenced the UDRP proceedings and notified him of the Complaint, he attempted to communicate with the Complainant in order to transfer ownership of the disputed Domain Name for less than the cost of a WIPO UDRP proceeding in spite of the effort and cost of creating and marketing <mylegostore.com>. Nevertheless the Respondent states that he did not receive any response to these communications.

Against the Complainant’s claims regarding the colors used on the web site for the disputed Domain Name <mylegostore.com>, they are most likely used to mislead Internet users into believing that the web site in some way is affiliated with the Complainant, the Respondent contends that the colors used are the most basic found in the color spectrum: red, green, blue and the Complainant in no way provides any evidence that they own the right or have any claim to any of the colors. Further, the Respondent claims that LEGO knows very well that they have no rights to the design that they use in their blocks as held in Kirkbi AG and Lego Canada Inc. v. Ritvik Holdings Inc., 2005 SCC 65 (now operating as Mega Bloks Inc.).

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(i) the domain name registered by the Respondent 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 in respect of the domain name; and

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

A. Identical or Confusingly Similar

It is undisputed that the Complainant is the owner of the well-known trademark LEGO.

The Complainant has submitted evidence demonstrating that it is the owner of the registered trademark LEGO. The Complainant has submitted evidence of the trademarks registered on its behalf in Annex 6 of the Complaint. The Complainant has also submitted evidence in Annex 8 of the Complaint which indicates that there are more than 1,000 domain names containing the term LEGO.

The disputed Domain Name contains the Complainant’s mark LEGO in its entirely with the addition of the prefix “my” and the suffix “store”. The Panel is un-persuaded by the Respondent’s claim that the term “lego” in the disputed Domain Name serves as an abbreviation of the phrase “let go”, or that it would likely be seen by Internet users as anything other than a reference to the Complainant’s trademark. The Complainant’s trademark LEGO is plainly the dominant element of the disputed Domain Name, and such impression is unlikely to be dispelled by the Respondent’s use thereof. The Panel is of the view that the addition of the suffix and the prefix does not distinguish the disputed Domain Name from the Complainant’s trademark.

Therefore, the Panel finds the disputed Domain Name, <mylegostore.com>, to be confusingly similar with the Complainant’s trademark LEGO. Correspondingly, the first criterion, as per paragraph 4(a) of the Policy, is established.

B. Rights or Legitimate Interests

It is uncontested that the Respondent lacks authorization from the Complainant to use its trademark. The Respondent claims that it has an affiliation with a third party (Amazon.com) to these proceedings which is an authorized retailer of the Complainant’s products. No dispositive evidence of such claim has been provided by the Respondent. Even if it had been, it is not clear to this Panel that this would necessarily have established the Respondent’s right under the Policy (as distinct from any right that Amazon.com may have as an authorized retailer) to profit from use of the Complainant’s trademark in a domain name (and indeed on a corresponding web site) without appropriate permission from the Complainant.

It is uncontested that any purchase of the LEGO products referred to on the Respondent’s web site at the disputed Domain Name occurs via a third party web site, “www.amazon.com.” The Respondent suggests it is not merely advertising LEGO products (in the sense of a pay-per-click or landing page), but because of its claimed affiliation with Amazon.com is actually engaged as a legitimate reseller in a genuine bona fide offering of the Complainant’s branded goods for sale. The Panel accepts that Amazon.com may be engaged in such offering via its own <Amazon.com> domain name, but this case concerns the question of whether the Respondent has rights and legitimate interests to use the disputed Domain Name in connection with an offering of goods made via a third party re-direct. In the present case, there is no dispute that the web site under the disputed Domain Name displays LEGO goods where Internet users are invited to view offers for the purchase of LEGO products. The key issue before the Panel, then, is whether the Respondent is a genuine reseller and if so, whether the Respondent’s use of the disputed Domain Name may be characterized as bona fide under the Policy.

The Panel doubts on the provided record that the Respondent could fairly be described as a genuine reseller of the Complainant’s goods within the meaning of the Policy. Rather it seems to the Panel that if there would be a relevant reseller here it would be Amazon.com, and that the Respondent (by its use of the disputed Domain Name) could at best be described as an intermediary or middle man, profiting from the unauthorized use of the Complainant’s trademark in a domain name to re-direct Internet user to a location at which LEGO products may purchased from a third party. This does not strike the Panel as the type of activity that would qualify for description as a genuine reseller as that term has been interpreted by numerous previous UDRP panels under the Policy.

However, even if the Panel was to give the Respondent the benefit of the doubt in this respect, would the Respondent’s use of the disputed Domain Name qualify as bona fide?

The Panel is assisted in this inquiry by paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, which notes two views as follows:

(1) ”Majority view: A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant’s relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark”; and

(2) “Minority view: Without the express permission of the trademark holder the right to resell the trademark holder’s products does not create a right to use the trademark as the basis for a domain name.”

It seems to the Panel, that whichever of these views would be applied, the Respondent’s case must fail. Under the minority view, on the present record the Panel finds express permission of the trademark owner to be lacking.

In regards to the majority view, the Panel refers to the cited decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, which laid down four requirements that should be met before it may be said that a reseller of goods or services is making a bona fide offering of such good or services in connection with a disputed domain name:

1. “[r]espondent must actually be offering the goods or services at issue”;

2, “[r]espondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods”;

3, “[t]he site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the web site is the official site, if, in fact, it is only one of many sales agents.”;

4. “[r]espondent 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”.

Regarding the first Oki Data element, as noted above, the Panel doubts that the Respondent can be regarded as “actually offering the goods or services at issue” in the sense that this descriptor has typically been used in so-called reseller cases. As indicated by the screenshots of the web sites to which the disputed Domain Name directed when the Complaint was filed and which were submitted by the Complainant, the disputed Domain Name contained several featured LEGO products, each with a description of the price, related information, and a link “ADD TO CART.” However the actual purchase of any selected LEGO product appears to occur via a third party web site at “www.amazon.com”. In this regard, the Panel has noted previous UDRP panel findings to the effect that an “actual offer of goods” implicates only the direct (or offered) exchange between a respondent and a customer of complainant’s goods for payment. As observed by the experienced three-member panel in World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306:

“The extent to which a purveyor of legitimate goods can reflect that fact by using the manufacturer’s or licensor’s name as part of a domain name is a difficult issue. Some such uses may be legitimate, others not, depending on the extent to which they accurately reflect the user’s connection with the mark owner. See, e.g., R.T. Quaife Engineering, Ltd. v. Luton, Case No. D2000-1201 (WIPO, November 14, 2000). If Respondent had shown demonstrable preparations to offer WWF collectibles through an auction, the Panel might conceivably have concluded that Respondent had a legitimate interest, or it might instead have concluded that wwfauction implies too great a connection between Complainant and Respondent.”

Previous panels have also found that mere respondent redirection of a domain name to <Amazon.com>, does not of itself qualify respondent as a reseller under Oki Data principles, e.g., LEGO Juris A/S v. Domains by Proxy, Inc. / Goodsteed Limited, WIPO Case No. D2010-1100. With respect to the requirement for direct buyer-seller relationship between a respondent and a (potential) customer, see also, MasterCard International Incorporated v. Global Access, WIPO Case No. D2008-1940.

Regarding the second point, the respondent ought to be offering for sale only complainant’s goods. On the available evidence, the Panel finds that this requirement has not been met as such, although it appears to be partly met. Although it is uncontested that the majority of goods displayed on the Respondent’s web site at <mylegostore.com> are LEGO products, a sponsored box in the left-hand panel of the main webpage displays pay-per-click links to web sites of the Complainant’s competitors as well as to other web sites.

Regarding the third point, the disputed domain name must accurately disclose the registrant’s relationship with the trademark owner. As noted under paragraph 4. Factual Background above, and in footnote one, the Panel has noted the presence of a small disclaimer indicating a lack of affiliation with the LEGO companies. Whether or not such disclaimer would be adequate in terms of prominence or clarity appears moot in circumstances where it appears to have been added by the Respondent following notice of the present dispute. As such, the Panel finds it may be disregarded for present purposes. See e.g., Shaw Industries Group, Inc and Columbia Insurance Company v. The Flor Stor, WIPO Case No. D2009-1088. Given the above, the Panel need not decide whether the Respondent has or has not attempted to corner the market in domain names corresponding to the Complainant’s trademarks.

Having failed to establish a safe-harbor defense on the grounds of being a genuine reseller making a bona fide offering of goods under the Policy, the Panel finds no other compelling basis in the record under paragraph 4(a)(ii) of the Policy under which the Respondent could plausibly establish a right or legitimate interest in the disputed domain name.

In conclusion, balancing the circumstances overall, the Panel finds that the Respondent has no right or legitimate interest in using the disputed Domain Name so the condition of paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, in order to decide whether the Respondent has registered and used the disputed Domain Name in bad faith, the Complainant must prove one of the following circumstances, in particular but without limitation:

(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, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web site 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 web site or location or of a product or service on the Respondent’s web site or location.

In this sense the Panel finds;

In appropriate cases a respondent’s failure to respond to a cease and desist letter may constitute evidence of bad faith. In the present case, the Panel notes that the Complainant apparently sent a cease and desist letter and subsequent reminder to “Domains by Proxy, Inc.”, and not to the beneficial owner, Mr. Andrew Vierling, who appeared in the WhoIs database of the concerned Registar at the time of the filing of the Complaint. The reason for this is not clear to the Panel from the provided record, although it seems possible that the use by the Respondent of a privacy or proxy registration service may have complicated the Complainant’s efforts to some extent. Previously panels have recognized that the use of privacy or proxy registration services (for example, to frustrate UDRP proceedings) can sometimes be an indicia of registrant faith, equally it has been recognized that there are potentially legitimate uses for such such services, In any event, the Panel is reluctant to hold this against Respondent as dispositive evidence of bad faith.

Also, the Panel notes the Respondent’s offer to settle with the Complainant “for $1,000 as a token offering to cover [its] expenses”, as it is indicated in the Respondent’s email dated December 9, 2010. While efforts to sell domain names for amounts in excess of out-of-pocket costs may be evidence of bad faith, and the Respondent by making such offer of an amount clearly exceeding normal registration costs has hardly bolstered his case, the Panel is disinclined to consider this as a sole basis for a finding of bad faith. See e.g., Edmunds.com, Inc. v. My Cars Space, WIPO Case No. D2006-0491. Furthermore, in light of the below, Panel need not decide if the Respondent registered the disputed Domain Name for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant, or if there is evidence as such proving paragraph 4(b)(iii) of the Policy stated above.

Instead, the Panel turns to the situation stated in paragraph 4(b)(iv) of the Policy, which the Panel finds is directly applicable to the present case.

The Respondent has not contested the Complainant’s assertion that the Respondent registered the disputed Domain Name in full knowledge of the LEGO trademarks and products, and indeed, the Panel would have found any such claim of ignorance wholly unpersuasive in the circumstances. It is clear to the Panel that the respondent registered and is using the domain name with knowledge and intention of profiting from Complainant’s trademark. The only real question in this particular case is whether, in doing so, the Respondent is able to rely on a right or legitimate interest in the domain name under the Policy. Or to put it another way, is there a valid safe-harbour under the Policy that would sanction the Respondent obtaining a commercial benefit from registration and use of the Complainant’s trademark in a domain name?

The Panel is not persuaded that the Respondent registered the domain name because of any generic value it may have had, nor is it persuaded that the Respondent is a bona fide reseller as such. The Respondent may be fully entitled to operate a webpage that redirects Internet users interested in Complainant’s branded products to Amazon.com, but in the circumstances of this case the Panel is not persuaded that such right would extend to the use of a domain name which incorporates and is confusingly similar to the Complainant’s trademark for such a purpose. As such, the Panel finds the effect of the Respondent use of the disputed Domain Name is to intentionally attempt, for commercial gain, to divert Internet traffic to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web site. See, CPP, Inc. v. Virtual Sky, WIPO Case No. D2006-0201 and Lego Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138.

In conclusion, the Panel finds that the Respondent registered and has used disputed Domain Name in bad faith, and Complainants have proven the third element of the Policy.

7. Decision

For all the foregoing reasons and in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed Domain Name, <mylegostore.com>, be transferred to the Complainant.

Ugur G. Yalçiner
Sole Panelist
Dated: February 18, 2011


1 The Panel notes that the referred-to annexes contain screenshots of the Respondent’s web site at the disputed Domain Name, which are dated November 9, 2010 and December 8, 2010. The first of these screenshots indicates no evidence of any disclaimer on the web site regarding the Respondent’s relationship or lack thereof with the Complainant, whereas the second contains a disclaimer as indicated under paragraph 4 of the Factual Background above. The Panel further notes that the present proceedings were filed with the WIPO Center on November 9, 2010. Neither screenshot provides evidence that the Complainant authorized or is profiting from any advertising on Respondent’s web site.

 

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