WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Domains By Proxy, LLC/ Quest Commerce Inc. Quest Commerce Inc

Case No. D2012-0048

1. The Parties

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

The Respondent is Domains By Proxy, LLC of Scottsdale, United States of America; Quest Commerce Inc. of Toronto, Canada.

2. The Domain Name and Registrar

The disputed domain name <legolandhotels.org> (“the Domain Name”) is registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2012. On January 13, 2012, the Center transmitted by email to GoDaddy.com, LLC. a request for registrar verification in connection with the Domain Name. On January 14, 2012, GoDaddy.com, LLC 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 January 18, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Complainant filed an amendment to the Complaint.

The Center verified that the Complaint together with the amendment to 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, Quest Commerce Inc (hereinafter “the Respondent”) of the Complaint, and the proceedings commenced on January 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 8, 2012. On January 19, 2012, an individual named “Jamal Osman”, apparently on behalf of the Respondent sent an email communication to the Center where he stated that the disputed domain name “[d]id not claim any copyright rights to "Lego" or "legoland". It is simply an information website which doesn't sell anything in particular”. No further email communications from the parties have been filed with the Center. Therefore, on February 9, 2012, the Center notified the commencement of panel appointment process to the parties.

The Center appointed Nicholas Smith as the sole panelist in this matter on February 15, 2012. 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 a Danish company that owns the trade marks for LEGO (the “LEGO Mark”) and LEGOLAND (the “LEGOLAND Mark”) (collectively, the “LEGOLAND Marks”). These marks are used in connection with the famous LEGO brand of construction toys and other LEGO branded products. The Complainant licenses its intellectual property rights, including the LEGOLAND Marks to various licensees. One of the licensees of the LEGOLAND Marks is Merlin Entertainment, which owns and operates theme parks known as “Legoland” and hotels connected to those parks known as Hotel Legoland. Merlin Entertainment part-owned by a related entity to the Complainant. The Complainant registered the LEGOLAND and LEGO trade marks in Canada in 1972 and 1983 respectively.

According to the registrar’s verification response, the Domain Name was registered on September 13, 2011, by Quest Commerce Inc., an entity based in Toronto, Canada. The Domain Name is currently connected to a website (“Respondent’s Website”) that provides information about Legoland Hotels and contains a number of advertisements for Hotel Legoland, competitor hotels, travel sites and other unrelated sites some of which are pay-per click advertising through Google.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) that the Domain Name is confusingly similar to the Complainant’s LEGOLAND Marks;

(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

The Complainant holds registered trade marks for the LEGOLAND Marks throughout the world. In particular, the Complainant holds registrations for the LEGOLAND Marks in Canada, where the Respondent is located, with the LEGOLAND Mark registered in 1972 and the LEGO Mark registered in 1983. The Complainant is also the owner of more than 1000 domain names that incorporate on or other of the LEGOLAND Marks. The Complainant licenses out the LEGOLAND Marks to a number of companies to operate elements of the Lego business, including Merlin Entertainments, the owner of a chain of Legoland parks.

The Domain Name is confusingly similar to the Complainant’s world-famous trademarks LEGO and LEGOLAND. The addition of the descriptive suffix “hotels” does not have any impact on the overall impression of the Domain Name. In fact the addition of the word “hotels” serves to enhance the overall impression that the Domain Name is confusingly similar to the LEGOLAND Marks because the Complainant has a series of hotels known as Hotel Legoland.

The Respondent does not hold any registered trade marks or trade names corresponding to the Domain Name, nor is it commonly known by the Domain Name. The Complainant has been unable to identify any indication that the Respondent has been using LEGOLAND in any way that would give it legitimate rights in the Domain Name. The Respondent is using the Domain Name to link to a site that provides information about Legoland Hotels. The Respondent’s Website gives the impression that it is connected with the Complainant through its content and the absence of a disclaimer and by containing a text inserted stating “© 2012 Legoland Hotels” at the bottom of the webpage. The Respondent’s Website also contains a series of click-through advertisements that includes links to hotel chains that are competitors to the Complainant.

The Respondent does not appear to own or operate any hotels or have any connection with the hotel industry. It does not appear to operate any business in connection with the LEGOLAND Trade Marks. Rather the Respondent owns a large domain name portfolio of mostly generic domain names unrelated to the Complainant.

By reason of the fame of the LEGOLAND Marks, at the date the Domain Name was registered, the Respondent must have been aware of the Complainant’s rights in its LEGO trademarks. This is supported by the reference to “hotels” in the Domain Name and the Respondent’s website, which displays images of the Legoland Park in Windsor.

The Domain Name is not being used in a bona fide manner. Rather it is being used for the sole purpose of gaining pay-per-click revenue from Google and other hotel chains. In this case the use of advertisements is a factor indicating bad faith as the Respondent is using the Complainant’s trade marks to attract visitors to its site for commercial gain. In The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC, WIPO Case No. D2009-0057 the Panel stated:

“The record further reflects the Respondent's use of the disputed Domain Names to attract Internet users to the Respondent's website in order to generate pay-per-click advertising revenues. The Panel concludes for the foregoing reasons that the Respondent registered and is using the disputed Domain Names in bad faith.”

In such circumstances, the registration and use of the Domain Name must be regarded as registration and use in bad faith, inasmuch as it involves the Respondent using the Domain Name to misleadingly divert consumers for its own commercial gain. This amounts to a finding of bad faith within the scope of paragraph 4(b)(iv) of the Policy.

B. Respondent

The Respondent has not filed a formal response in this case. However, by e-mail of January 19, 2012, an individual named “Jamal Osman”, apparently on behalf of the Respondent, sent a short e-mail response stating that the Respondent did not claim any rights to Lego or Legoland and that the website at “www. legolandhotels.org” is intended to be an information website with no intention to sell anything. No subsequent communication or formal response has been filed with the Center.

6. Discussion and Findings

A. Identical or Confusingly Similar

To prove this element the Complainant must have trade or service mark rights, and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.

The Complainant is the owner of the LEGOLAND Marks, having registrations for LEGO and LEGOLAND throughout the world, including in Canada, where the Respondent is based. The LEGO Mark is also a well-known mark, as confirmed in previous UDRP decisions, including LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840: “LEGO is clearly a well-known mark” and LEGO Juris A/S v. Domain Administrator, WIPO Case No. 2010-1260: “In the present case, the disputed domain names incorporate the Complainant’s well-known registered trademark LEGO” and LEGO Juris A/S v. Reginald Hastings Jr; WIPO Case No. D2009-0680: “LEGO is a mark enjoying high reputation as construction toys popular with children.”

The Domain Name consists of the LEGOLAND Mark in its entirety, with the addition of the descriptive and non-distinctive suffix “hotels”. The suffix “hotels”, when appended to the distinctive mark “LEGOLAND”, is likely to be seen as a referring to hotel that is located at or operated by the owners of Legoland. Given that one of the licensees of the LEGOLAND Marks owns and operates theme parks known as “Legoland” and hotels connected to those parks known as Hotel Legoland members of the public, upon viewing the domain name could easily be confused into thinking that it was associated with the Complainant.

The Domain Name consists of the LEGOLAND Mark and a suffix that fails to distinguish the LEGOLAND Mark. The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark

Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c)).”

The Respondent is not affiliated with Complainant in any way and has not been authorized by Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the LEGOLAND Marks. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name.

The Respondent acknowledges that the Domain Name resolves to the Respondent’s Website, which provides information on Hotel Legoland. The Respondent argues that the Respondent’s Website “is simply an information website which doesn't sell anything in particular”. Given the content of the Respondent’s Website, which includes photos of Legoland Windsor, in this Panel’s view, it can be presumed that the Respondent registered the Domain Name with the full awareness of the Complainant and its rights in the LEGOLAND Marks.

Previous UDRP decisions have found that the operation of a legitimate, active, noncommercial and clearly distinctive fan site may give rise to rights and legitimate interests in a domain name; see e.g. Estate of Gary Jennings and Joyce O. Servis v. Submachine and Joe Ross, WIPO Case No. D2001-1042 and 2001 White Castle Way, Inc. v. Glyn O. Jacobs, WIPO Case No. D2004-0001.

This is not one of those cases. The Respondent’s Website is not noncommercial. It contains several pay-per-click advertisements to hotel chains that compete with Hotel Legoland. It also contains a series of Google advertisements for which the Respondent would derive revenue. Secondly, the Respondent’s Website attempts to pass itself off as being related to or connected with the Complainant. It does not contain any disclaimer as to its relationship with the Complainant rather it contains the inscription “© 2012 Legoland Hotels” at the bottom of the webpage. Finally, the evidence in the amended Complaint suggests that the Respondent is involved in the domain name industry and owns a large domain name portfolio from which it derives commercial gain, mostly consisting of generic domain names unrelated to the LEGOLAND Marks.

A respondent does not have rights or legitimate interests in expressing its view, even if positive, on an individual or entity by using an identical or confusingly similar domain name if the respondent is intentionally misrepresenting itself as being (or as in some way associated with) that individual or entity, or seeks to derive commercial advantage from its registration and use. The Respondent in this case is both intentionally misrepresenting itself as being associated with the Complainant and deriving some commercial advantage from the Respondent’s Website. This is not a legitimate noncommercial or fair use of the Domain Name.

Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a Domain Name in bad faith:

(i) circumstances indicating that the Respondent has registered or has 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 your documented out-of-pocket costs directly related to the Domain Name; or

(ii) 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 Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.

The Panel finds that the Respondent at the time of registration of the Domain Name knew of the existence of the LEGOLAND Marks. The Domain Name resolves to a website that:

a) contains a series of sponsored links and Google pay-per-click links from which the Respondent generates revenue;

b) lacks a disclaimer that indicates that the website has no connection with the Complainant; and

While the Respondent, as stated in the e-mail from “Jamal Osman”, may not be selling anything from the website, the Domain Name is used to attract Internet users interested in the Complainant for the purpose of gaining pay-per-click revenue. Consequently, in this Panel’s view, the Respondent registered and is using the 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.

Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.

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 Name <legolandhotels.org> be transferred to the Complainant.

Nicholas Smith
Sole Panelist
Dated: February 19, 2012