World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. DomainsByProxy.com / None

Case No. D2011-0872

1. The Parties

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

The Respondent is DomainsByProxy.com / None of Scottsdale, Arizona and Long Beach, California, United States of America, respectively.

2. The Domain Names and Registrar

The disputed domain names <legobobafett.com>, <legocitytrain.com>, <legocrane.com>, <legofarm.com>, <legohelicopter.com>, <legomini.com>, <legoracergame.com>, <legotank.com>, <legotruck.com>, and <legoyoda.com> are registered with Wild West Domains, Inc.

3. Procedural History

Three original Complaints were filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 20 and 24, 2011. On May 17, 2011, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name <legocitytrain.com>.

On May 23, 2011, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name <legofarm.com>. On May 24, 2011, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain names <legobobafett.com>, <legocrane.com>, <legohelicopter.com>, <legomini.com>, <legoracergame.com>, <legotank.com>, <legotruck.com>, and <legoyoda.com>. On May 19 and 26, 2011, Wild West Domains, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent email communications to the Complainant on May 24 and 30, 2011, 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 amendment to the Complaint with regards to the earliest of the three original Complaints on May 24, 2011. In light of the above information and pursuant to the initiation of settlement discussions with the Respondent, the Complainant requested the suspension of the first and third original Complaints on May 26, 2011, and requested the suspension of the remaining proceeding on May 30, 2011. On July 1, 2011, the Complainant requested the re-initiation and consolidation of the proceedings into one proceeding. On July 12, 2011, the Complainant filed an amendment to the Complaint and formal request to consolidate the proceedings.

The Center verified that the Complaints, together with the amendments to the Complaints, 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 July 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2011.

The Center appointed Andrew F. Christie as the sole panelist in this matter on August 9, 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.

4. Factual Background

The Complainant is the owner of the well-known trademark LEGO. The Complainant and its licensees, through their predecessors, commenced use of the LEGO trademark in the United States of America in 1953, to identify construction toys made and sold by them. The LEGO trademark was first registered in the United States of America on August 26, 1975. The LEGO corporate 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 Complainant is also the owner of more than 1,000 domain names containing the term “lego”, and maintains an extensive website under the domain name <lego.com>.

The disputed domain names were registered on November 22, 2010. They currently resolve to websites promoting and selling, via links to “www.amazon.com”, LEGO-branded products, although in at least one case an unrelated product is also available for sale.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the dominant part of each of the disputed domain names is the word “lego”, which is identical to its registered trademark LEGO. The addition of various suffixes does not detract from the overall impression that they are related to the Complainant, particularly as the Complainant has products the names of which are those suffixes. The public will perceive that the disputed domain names are owned by the Complainant or that there is some kind of commercial relationship between the Respondent and the Complainant. The addition of the top-level domain identifier “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain names.

The Complainant contends the Respondent has no rights or legitimate interests in the disputed domain names because (i) the Respondent does not have any registered trademarks or trade names corresponding to the disputed domain names, (ii) the Complainant has not provided a license or authorization to the Respondent to use the trademark LEGO, (iii) the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant, (iv) it is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in the name LEGO at the time of registration, and (v) the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services, because the products are not sold on its own website and it does not disclose its relationship with the trademark owner on the websites to which the disputed domain names resolve.

The Complainant contends the Respondent has registered and is using the disputed domain names in bad faith because (i) the trademark LEGO has a substantial and widespread reputation throughout the world with considerable value and goodwill, which has led to many third party domain name registrations in recent years, including the disputed domain names in this Complaint, (ii) as the Respondent is most likely receiving income from the sponsored links to “www.amazon.com” on the websites to which the disputed domain names resolve, the Respondent is using them to intentionally attempt to attract, for commercial gain, Internet users to the websites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its websites, and (iii) cease and desist letters relating to the unauthorized use of the LEGO trademark in the disputed domain names were sent by the Complainant to the Respondent in December, 2010, some of which received no response. The Respondent did offer to transfer eight of the disputed domain names for USD 150, to which the Complainant agreed; however, the Respondent did not effect the transfer of the disputed domain names and so the process was terminated.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Each of the disputed domain names incorporates wholly the Complainant’s registered trademark LEGO, and adds a word or words that describe various products made by the Complainant. The distinctive aspect of the disputed domain names is the Complainant’s registered trademark LEGO, which is very well known in respect of construction toys. The addition of the descriptive words does not lessen the inevitable confusion of the disputed domain names with the Complainant’s registered trademark. Accordingly, this Panel finds that each of the disputed domain names is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not provided any evidence that it has been commonly known by the disputed domain names. The Respondent registered the disputed domain names many decades after the Complainant’s predecessor first registered the LEGO trademark for use in relation to construction toys. The Complainant has contended, and the Respondent has not refuted, that the Respondent has neither used the disputed domain names in connection with a bona fide offering of goods or services, nor used the disputed domain names for a legitimate noncommercial or fair use. Accordingly, on the present record, this Panel finds that the Respondent has no rights or legitimate interests in any of the disputed domain names.

C. Registered and Used in Bad Faith

The Complainant has conducted a very substantial, multi-billion dollar business of international renown for many decades under its trademark LEGO. This Panel is persuaded that the Respondent was likely aware of the Complainant’s trademark when it registered the disputed domain names. Moreover, this Panel is persuaded that the Respondent has used the disputed domain names with the intention of attracting Internet users to its websites by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the websites. Pursuant to paragraph 4(b)(iv) of the Policy, this Panel finds that each of the disputed domain names has been registered and is being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <legobobafett.com>, <legocitytrain.com>, <legocrane.com>, <legofarm.com>, <legohelicopter.com>, <legomini.com>, <legoracergame.com>, <legotank.com>, <legotruck.com> and <legoyoda.com>, be transferred to the Complainant.

Andrew F. Christie
Sole Panelist
Dated: August 22, 2011

 

Explore WIPO