World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Ryan Elsey

Case No. D2011-1438

1. The Parties

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

Respondent is Ryan Elsey of Plymouth, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <legominifigurescollector.com> is registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2011. On the same day, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On August 25, 2011, Tucows Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on September 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 21, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 22, 2011.

The Center appointed Stephanie G. Hartung as the sole panelist in this matter on September 29, 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

Complainant, together with its affiliated companies, produces and sells construction toys and other play materials under the trademark LEGO already since 1953. Complainant has subsidiaries and branches throughout the world and LEGO products are sold in more than 130 countries, including the United Kingdom, where Respondent is based.

Complainant is the owner of at least the following trademark registrations for LEGO:

- Community word mark LEGO, Office of Harmonization for the Internal Market (OHIM), Registration Number 000039800; Registration Date: October 5, 1998; Status: Active.

- United States design mark LEGO, United States Patent and Trademark Office (USPTO), Registration Number: 1018875; Registration Date: August 26, 1975; Status: Active.

Complainant, furthermore, owns more than 1,000 domain names, many of which contain the designation “lego”, inter alia, <lego.com> as well as <lego.co.uk>. Complainant operates its main website at “www.lego.com” to which many of the aforementioned domain names redirect.

The disputed domain name was created on July 19, 2010 and offers for sale both Complainant’s products as well as those of some of Complainant’s direct competitors in the toys market, e.g. “Hello Kitty” as well as “Halo”.

The Complainant’s legal representative Melbourne IT Digital Brand Services contacted Respondent by email of August 23, 2011 asking for a voluntary transfer of the disputed domain name upon Complainant.

Complainant requests the disputed domain name to be transferred to Complainant.

5. Parties’ Contentions

A. Complainant

Complainant alleges that its trademark LEGO is amongst the most well-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the trademark LEGO on all products, packaging, displays, advertising and promotional materials. Accordingly, the trademark LEGO is in possession of substantial inherent and acquired distinctiveness and has been recognized as being famous.

Complainant contends that the disputed domain name is confusingly similar to the trademark LEGO in which Complainant has rights.

Complainant has submitted a trademark survey of August 27, 2009 according to which LEGO is protected as a trademark in favor of Complainant in a multitude of countries worldwide. Complainant emphasizes that the disputed domain name contains the entire LEGO trademark. Complainant further explains that the term “minifigures” refers to a LEGO product line, which was first produced in 1978 and has since gained huge popularity with billions produced “minifigures” over the years. Complainant, therefore, concludes that the suffix “minifigurescollector” rather fits to strengthen the impression that the disputed domain name belongs to or is affiliated with Complainant.

Complainant further argues that Respondent has no rights or legitimate interests in the disputed domain name.

Complainant asserts not to have licensed or authorized Respondent in any other way to use its LEGO trademark or to incorporate it into any domain name.

Moreover, Complainant has not found that Respondent owns any registered trademark rights in LEGO nor anything else that would suggest that Respondent is using said designation in any legitimate way.

In particular, Complainant points to the fact that Respondent’s shopping website offers both Complainant’s products as well as products of Complainant’s direct competitors in the toys market such as “Hello Kitty” and “Halo”. Moreover, Respondent does not disclose the missing relationship with Complainant, e.g. by means of a disclaimer on Respondent’s website. Therefore, Respondent does not qualify to fulfill the requirements for a bona fide offering of goods.

Finally, Complainant contends that the disputed domain name was registered and is being used in bad faith.

Complainant argues, inter alia, that it is highly unlikely that Respondent would not have known of Complainant’s legal rights in the famous trademark LEGO at the time of the registration of the disputed domain name. Quite to the contrary, it is rather obvious that is was the fame of the trademark LEGO that has motivated Respondent to register the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s trademark LEGO as to the source, sponsorship, affiliation or endorsement of the website. Complainant stresses that it undertook various attempts to contact Respondent before initiating this UDRP proceedings, e.g. through a cease and desist letter of September 19, 2010 as well as two reminders of October 4, 2010 as well as October 25, 2010, to all of which Respondent kept silent.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:

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

(ii) That 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.

Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(e) of the Rules provides that if Respondent does not submit a response, in the absence of special circumstances, the Panel is to decide the dispute solely based upon the Complaint.

A. Identical or Confusingly Similar

The Panel concludes that the disputed domain name <legominifigurescollector.com> is confusingly similar to the trademark (word mark) LEGO in which Complainant has shown to have rights.

The disputed domain name not only incorporates the LEGO trademark in its entirety. Moreover, the suffix “minifigures” refers to a very popular product line of Complainant, namely little toy figures called “Lego minifigures” which are likely, if not designed to be collected by the respective consumers. Therefore, the addition of the terms “minifigures” as well as “collector” to Complainant’s trademark LEGO in order to create the disputed domain name is obviously insufficient to avoid a finding of confusing similarity as those two terms in fact rather fit to strengthen the impression that the disputed domain name directly relates to Complainant’s LEGO trademark. This view is also in line with other recent UDRP Panel decisions relating to Complainant’s trademark LEGO in which the addition of a designation referring to one of Complainant’s own product lines has been found to even add to the confusing similarity between Complainant’s trademark and the disputed domain name in the respective case (see e.g., LEGO Juris A/S v. DomainsByProxy.com/ DBA David Inc, WIPO Case No. D2011-1290; LEGO Juris A/S v. F.H.U. Betternet Rafal Biegun, WIPO Case No. D2011-0939).

Therefore, the Panel is satisfied that the first element under the Policy as set forth by paragraph 4(a)(i) in the case at hand is fulfilled.

B. Rights or Legitimate Interests

The Panel further finds Complainant to have established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. The Panel is convinced that on the basis of Complainant’s undisputed contentions, Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has he been commonly known by the disputed domain name, nor it can be found that Respondent made a legitimate noncommercial or fair use without intent for commercial gain.

Given that the term “lego” is neither a (dictionary) word nor a personal or nick name etc., there is no reason to believe that Respondent is commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.

Moreover, the disputed domain name currently offers for sale a variety of toys, including Complainant’s products (e.g. the LEGO minifigures) as well as the products of some of Complainant’s direct competitors in the toy market. Such registration and use of the disputed domain name certainly does not qualify as legitimate noncommercial or fair without intent for commercial gain as set forth by paragraph 4(c)(iii) of the Policy.

Finally, the Panel does not see any grounds to rule that Respondent may have rights or legitimate interests in the disputed domain name by means of a bona fide offering of goods or services as provided for by paragraph 4(c)(i) of the Policy.

On the basis of the often quoted UDRP decisions, see Oki Data Americas Inc. v. Asdinc.com, WIPO Case No. D2001-0903, the principles of that have meanwhile become consensus among UDRP panels according to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") (see paragraph 2.3), even unauthorized resellers may be found to be making a bona fide offering of goods and services and thus have legitimate interests in a domain name if certain criteria are met, which include among others: (1) the use of the website to sell only the trademarked goods and (2) the website’s accurate and prominent disclosure of the registrant’s relationship with the trademark holder.

Therefore, in the case at hand, Complainant asserts not to have licensed or authorized Respondent to use the legal trademark in any way and that Respondent is not an authorized dealer of Complainant’s products and has never had any business relationship with Complainant. More importantly, Respondent is making use of the disputed domain name to redirect Internet users to a website that not only sells the trademarked LEGO goods, but also those of direct competitors of Complainant in the toys market, such as “Hello Kitty” as well as “Halo”. Furthermore, Respondent’s website at “www.legominifigurescollector.com” does not contain any disclaimer or the like to disclose to the public that there is no and has never been any business relationship between the parties to this case. Therefore, the afore-mentioned Oki Data principles, supra, are clearly not fulfilled.

Accordingly, Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand, Respondent did not reply at all to Complainant’s allegations, neither as they were brought forward in Complainant’s pre-procedural attempts to contact Respondent in September and October 2010 as well as on August 23, 2011, nor as they were included in the Complaint duly notified to Respondent by the Center on September 1, 2011.

Therefore, the Panel rules that Complainant has also satisfied paragraph 4(a)(ii) and thus the second element of the Policy.

C. Registered and Used in Bad Faith

The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.

Complainant not only has produced sufficient evidence that it owns comprehensive trademark rights in LEGO which has been in use and has consistently been advertised and promoted already since 1953 more or less worldwide, including in the United Kingdom where Respondent apparently is based.

Moreover, for the purpose of this proceedings, LEGO may be considered as a well-known trademark as has been already held by a number of UDRP Panels in recent parallel proceedings (e.g., LEGO Juris A/S v. Wioletta Balcerak, WIPO Case No. D2011-1320; LEGO Juris A/S v. Domain Administrator, WIPO Case No. D2010-1260; LEGO Juris A/S v. Rampe Purda /Privacy--Protect.org, WIPO Case No. D2010-0840). Therefore, this Panel takes the view that Complainant certainly registered and made use of the disputed domain name with Complainant’s distinctive and well-known trademark LEGO in mind, a finding which is even reinforced by Respondent’s adding of the suffixes “minifigures” and “collector” to the LEGO trademark, both designations of which directly relate to LEGO. In addition, Respondent offered for sale Complainant’s products under the banner of Complainant’s LEGO logo, which – in the absence of any disclaimer or the like – is a clear attempt to seek to imply a lawful connection of Respondent with Complainant rather than to disclose that there is no and never was any business relationship whatsoever. Finally, the Panel finds that Respondent’s registration and use of the disputed domain name is abusive since Respondent also promoted products on his website that obviously originate from Complainant’s direct competitors in the toys market. Consequently, it must be found that Respondent in the case at hand intentionally attempted to attract, for commercial gain, Internet users to his own website, by creating a likelihood of confusion with Complainant’s well-known legal trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or a product thereon. Such circumstances, however, shall be evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iii) of the Policy.

In connection with this finding, it also carries weight in the eyes of the Panel that Respondent kept silent on a multitude of Complainant’s approaches to communicate with Respondent before filing this Complaint. Such keeping silent apparently also occurred in the context of a recent dispute resolution proceedings of January 18, 2011 administered by Nominet, the registry organization for “.co.uk” domain names, relating to the similar domain name <legominifigurescollector.co.uk>. This Panel takes the view that such constant denial on the part of Respondent to communicate with Complainant and/or to participate in any dispute resolution proceedings between the parties at hand may not be qualified other than a further indication of Respondent’s acting in bad faith.

Therefore, the Panel finds that also the third element under the Policy set forth by paragraph 4(a)(iii) is fulfilled.

Accordingly, the Panel concludes that Complainant has satisfied all of the three requirements of paragraph 4(a) 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 disputed domain name, <legominifigurescollector.com>, be transferred to Complainant.

Stephanie G. Hartung
Sole Panelist
Dated: October 5, 2011

 

Explore WIPO