WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Jeffrey Vilcinskas/ DomainsByProxy.com
Case No. D2010-2149
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Jeffrey Vilcinskas of Elkview, West Virginia, United States of America/ DomainsByProxy.com of Scottsdale, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <legoboardgames.info> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2010. On December 13, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On December 14, 2010, GoDaddy.com, Inc., transmitted by email to the Center its verification response 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 December 23, 2010, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 17, 2011.
The Center verified that the Complaint together with the amended 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 January 19, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 8, 2011. On February 2, 2011, following a request by the Complainant, the Center notified a suspension of the proceedings until March 3, 2011. On March 7, 2011, the proceedings were reinstituted at the request of the Complainant. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 18, 2011.
The Center appointed Adam Taylor as the sole panelist in this matter on March 18, 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.
On March 22, 2011, the Center received an email purporting to come from the Respondent and which forwarded an email which he had sent to the registrar on March 7, 2010, requesting transfer of the disputed domain name. In a further email on the same date, the Respondent indicated to the Center that he would “like to get this matter resolved as soon as possible”. Paragraph 4.12 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that where a respondent has given its unilateral and unambiguous consent on the record to the remedy sought by the complainant, a panel may at its discretion order transfer (or cancellation) of the domain name on that basis alone. Some panels have done so. Others have declined to grant a remedy solely on the basis of the respondent's consent, but rather elected to proceed to a substantive determination of the merits. In this case, the Panel notes that the name appearing in the “from” line of the above-mentioned emails to the Center is not the same as the Respondent name with which the emails were signed. Probably there is nothing sinister in this but, nonetheless, in view of this slight uncertainty as well as the lack of an unambiguous consent to transfer on the formal record of this proceeding, the Panel elects to issue a substantive decision.
4. Factual Background
The Complainant’s predecessors commenced use of the LEGO mark in 1953 in the United States of America in connection with the manufacture and sale of construction toys. The business has grown substantially such that the revenue of the Complainant’s group exceeded USD 2.8 billion in 2009. The Complainant’s products are sold in more than 130 countries.
The Complainant owns many registered trade marks worldwide including United States Trade Mark No. 1018875 for LEGO filed September 17, 1974, in international class 28.
The disputed domain name was registered on October 17, 2010.
As of December 9, 2010, the disputed domain name was used for a website which was branded with the term “Lego Board Games” and which contained content promoting board games produced by the Complainant as well as links to websites offering those games for sale.
5. Parties’ Contentions
Identical or Confusingly Similar
The trade mark LEGO is amongst the best-known trade marks in the world, due in part to decades of extensive advertising, which prominently depicts the mark on all products, packaging, displays, advertising, and promotional materials. The LEGO trade mark has been recognized as being famous.
The Complainant’s group has expanded its use of the LEGO trade mark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets.
The dominant part of the disputed domain name comprises the word “lego”.
The disputed domain name is confusingly similar to the Complainant’s world famous trade mark LEGO. The fame of the trade mark has been confirmed in numerous previous UDRP decisions.
The addition of the suffix “boardgames” is not relevant and will not have any impact on the overall impression created by the dominant part of the disputed domain name.
Anyone who sees the disputed 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 mark of the Complainant.
Rights or Legitimate Interests
The Complainant has not found that the Respondent owns any registered trade marks or trade names corresponding to the disputed domain name. Nor has the Complainant discovered anything that would suggest that the Respondent has been using the name “lego” in any other way that would give it any legitimate rights in the name. Consequently, the Respondent is not entitled to claim any rights established by common usage.
The Complainant has not authorized the Respondent to use its trade mark LEGO.
It is highly unlikely that the Respondent was unaware of the Complainant’s trade mark at the time of the registration. Rather, it is obvious that it is the fame of the trade mark that has motivated the Respondent to register the disputed domain name.
The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Instead the Respondent has intentionally chosen a domain name based on a registered trade mark in order to generate traffic to website displaying sponsored links and links to commercial shopping sites. By doing this, Respondent is using the Complainant’s trade mark to mislead Internet users and attract them to its commercial website.
Registered and Used in Bad Faith
The Complainant first tried to contact the Respondent on November 12, 2010, by means of a cease and desist letter and thereafter by subsequent reminders but there has been no response to these letters. It has been mentioned in previous UDRP cases that the failure of a respondent to respond to a cease and desist letter is relevant to bad faith.
The disputed domain name is connected to a website displaying sponsored links and links to commercial shopping sites. Also, the Complainant’s logo is displayed on the website. Consequently, the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has rights in the mark LEGO arising from its registered trade marks as well as common law rights derived from its extensive reputation in the name.
The disputed domain name consists of the Complainant’s trade mark combined with the descriptive term “boardgames”. That term is insufficient to differentiate the disputed domain name from the trade mark; on the contrary it enhances the connection as the Complainant does indeed produce board games.
The Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests thereby created. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070.
The Complainant has not licensed or otherwise authorized the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, it appears from the website printout produced by the Complainant that the Respondent has used the disputed domain name to promote the sale of the Complainant’s own products via third party websites. The Respondent’s site is branded “Lego Board Games” and it features a prominent image of one of the Complainant’s games, including the Complainant’s logo. The site consists primarily of content encouraging users to purchase the Complainants games from other websites linked to from within the promotional text.
Paragraph 2.3 of WIPO Overview 2.0 expresses the consensus view that to establish a bona fide offering of goods and services, a reseller of trade marked goods must comply with certain requirements, including accurate disclosure of its relationship with the trade mark owner. In the Panel’s view, there is no such accurate disclosure in this case as the Respondent’s website is designed to imply a connection between the Respondent and the Complainant. Accordingly, such use of the disputed domain name could not be said to be bona fide.
There is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply.
The Panel finds that the Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
In the Panel’s view, it is obvious that the Respondent registered the disputed domain name with the Complainant’s distinctive and well-known trade mark in mind.
As mentioned above, the Respondent has offered the Complainant’s products for sale via a website at the disputed domain name which deliberately sought to imply a connection with the Complainant.
The Respondent has not come forward to deny the Complainant’s assertions of bad faith.
The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of 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, <legoboardgames.info>, be transferred to the Complainant.
Dated: March 31, 2011