WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Aubrey Trovada
Case No. D2011-0991
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Aubrey Trovada of Anaheim, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <legoset.org> is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2011. On June 10, 2011, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name. On June 14, 2011, Wild West Domains, 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 June 14, 2011, providing the registrant and contact information disclosed by Wild West Domains, Inc., and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 15, 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 June 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 6, 2011. The Response was filed with the Center on July 6, 2011.
The Center appointed Joan Clark as the sole panelist in this matter on July 26, 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 numerous registrations for the trademark LEGO, including Registration Number 1018875 registered August 26, 1975, in the United States Patent and Trademark office and renewed until August 25, 2015.
The disputed domain name <legoset.org> was registered on November 23, 2010, and is scheduled to expire on November 23, 2012.
5. Parties’ Contentions
The Complainant states that it is the owner of the trademark LEGO and many other trademarks used in connection with the famous LEGO brands of construction toys and other LEGO branded products. The Complainant further states that it, and its licensees, through their predecessors commenced use of the LEGO mark in the United States during 1953 to identify construction toys made and sold by them; that over the years the business of making and selling LEGO branded toys has grown remarkably; and that by way of example the revenue for the LEGO Group in 2009 was more than USD 2.8 billion. The Complainant further states that it has subsidiaries and branches throughout the world and that LEGO products are sold in more than 130 countries including in the United States. Further the Complainant avers that it is the owner of more than a thousand domain names containing the term “Lego”, and that it is the strict policy of the Complainant that all domain names containing the word “Lego” be owned by the Complainant.
The Complainant avers that the trademark LEGO is among the best known trademarks in the world, due in part to decades of extensive advertising that prominently depicts the LEGO mark on all products, packaging, displays, advertising and promotional materials. The Complainant further states that the LEGO trademark and brand have been recognized as being famous, and LEGO is ranked as number 8 of the most famous trademarks and brands in the world, in the top 500 Superbrands for 2009/10
The Complainant declares that the trademark LEGO has attained the status of a well-known trademark, which entitles the holder to prevent any use of the well-known trademark or confusingly similar denomination in connection with any products or services.
The Complainant observes that the dominant part of the disputed domain name is identical to the registered trademark LEGO; that the fame of this trademark has been confirmed in numerous previous UDRP decisions; that the addition of the suffix “set” is not relevant and will not have any impact on the overall impression of the dominant part of the name LEGO; and further that the top level domain “.org” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to determine the confusing similarity between the Complainant’s trademark and the disputed domain name.
The Complainant declares that the Respondent: has no rights or legitimate interests in respect of the disputed domain name; has not received any license or authorization from the Complainant to use its trademark LEGO; is not an authorized dealer of the Complainant’s products; and cannot claim to have been using LEGO without being aware of the Complainant’s rights to this mark. The Complainant further states that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and cannot be considered as a reseller as the products advertised by the Respondent are sold at “www.amazon.com” and not on the Respondent’s own website.
The Complainant states that it first tried to contact the Respondent on January 31, 2011, through a cease and desist letter, advising the Respondent that her unauthorized use of the LEGO trademark within the disputed domain name violated the Complainant’s rights in that trademark. The Complainant requested a voluntary transfer of the domain name and offered compensation for the expenses of registration and transfer fees, not exceeding out-of-pocket expenses, but no response was received despite two reminder letters.
The Complainant states that the Respondent most likely derives income when a visitor clicks on the links on its website and is redirected to “www.amazon.com”, where products bearing the LEGO trademark are displayed.
The Complainant concludes that the Respondent registered and is using the disputed domain name in bad faith and requests the administrative panel to order that the disputed domain name be transferred to the Complainant.
While the Respondent did not reply to the cease and desist letter and reminders forwarded to her by the Complainant, the Respondent filed a Response to the Complaint in which she stated that the site for the disputed domain name was set up to promote the LEGO product through “www.amazon.com”; and that the Respondent may receive compensation when visitors to the site click on the displayed links, which directs an Internet user to “www.amazon.com”, and buy the LEGO product from “www.amazon.com”. The Respondent states that her compensation is a 4% marketing fee for promoting the sale. The Respondent states her belief that the LEGO product is worthwhile and that her intention was to promote, attract and direct traffic to the only source known to the Respondent with a reputable affiliate program. The Respondent continues that at the time of the Response the website at the disputed domain name was “down” and would stay that way until an equitable solution is achieved. The Respondent states that her affiliate accounts have been closed by Amazon due to a change in the California Internet tax laws, and that the Respondent would no longer have any reason to promote the website at the disputed domain name. The Respondent indicates willingness to take the site down permanently or to transfer it, but requests due compensation for it.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that, in order to be successful with respect to a disputed domain name, the Complainant has the burden of providing that all three elements are present in the Complaint, namely:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of registration and use of a domain name in bad faith but are not limitative.
Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar
According to the statements in the Complaint, supported by the evidence adduced by the Complainant and unrefuted by the Respondent, LEGO is a well-known trademark. As it is the dominant part of the disputed domain name, the panel finds the latter to be confusingly similar to the trademark LEGO, in which the Complainant has shown it has rights.
The first element to be determined in order for the Complaint to succeed has been established.
B. Rights or Legitimate Interests
The Complainant has affirmed that the Respondent has no authorization from the Complainant to use its trademark in the disputed domain name, in which the Respondent has no rights or legitimate interests. This has not been denied by the Respondent, who has not directly asserted that she has rights or legitimate interests in the disputed domain name. The Respondent claims that her intention was to use the Complainant’s trademark in the disputed domain name in order to attract visitors to her site and then divert them to sales of LEGO products by “www.amazon.com”, with a corresponding fee payable to her by “www.amazon.com”. This, however, would not make the Respondent a reseller of LEGO products, as any selling would be done by “www.amazon.com”. See LEGO Juris A/S v. Andrew Vierling, WIPO Case No. D2010-1913; and Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Moreover, the use of the disputed domain name as a pay-per-click website does not entitle the Respondent to claim rights or legitimate interests. See e.g. Development Credit Bank Limited v. Direct Privacy ID ED191, WIPO Case No. D2011-0786.
In the circumstances the Panel finds that the Respondent has not used the disputed domain name or made demonstrable preparations to use it in connection with a bona fide offering of goods or services by her, has not previously been known by the disputed domain name and has not made a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and the second element for the Complaint to succeed has been established.
C. Registered and Used in Bad Faith
It is clear from the Response that the Respondent was aware of the Complainant’s trademark when the disputed domain name was registered. Not only has the Respondent failed to refute the Complainant’s assertion that the Respondent must have been aware of this trademark but the current website associated with the disputed domain name, produced by the Complainant, displays the trademark LEGO with the indication of trade-mark registration “®” beside it. This is evidence that the Respondent knew, at least at the time of preparation of the website at the disputed domain name, that LEGO was a registered trademark. The Respondent intended to continue using the disputed domain name, which includes the Complainant’s trademark, until, according to the Response, due to a change in California Internet tax laws, the Respondent had no further reason to promote the website. The Respondent admitted that her purpose was to receive compensation when visitors to the website at the disputed domain name were redirected to “www.amazon.com” and bought LEGO products from “www.amazon.com.
The Panel finds that the creation of the disputed domain name, by the Respondent, was solely to use the fame of the Complainant’s trademark in a confusing domain name, in order to attract viewers and divert them to a website where LEGO products could be acquired in return for compensation. In short, it was the Respondent’s intention, in choosing the disputed domain name, to take advantage of, and profit from, a well-known trademark without obtaining authorization from the trademark owner.
The Panel concludes that the disputed domain name was registered in bad faith. While there is no evidence that the Respondent used the disputed domain name in the bona fide sale or offering for sale of goods by her, the mere registration and holding of this registration, together with the intended use of the disputed domain name as a pay-per-click website, preclude the Complainant from registering the disputed domain name and constitute evidence of bad faith registration and use under the Policy. See e.g. Gundfos A/S v. Kevin Wallace, WIPO Case No. D2011-0286.
The Panel therefore finds that the disputed domain name was registered in bad faith and has been used in bad faith, and the third element to be established for the Complaint to succeed has been confirmed.
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 <legoset.org> be transferred to the Complainant.
Dated: August 9, 2011