WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. David Hudson
Case No. D2012-0060
1. The Parties
Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is David Hudson of Sedona, Arizona, United States of America.
2. The Domain Names and Registrar
The disputed domain names <lego-robotics.net>, <lego-table.net>, and <legovideos.org> (the “Domain Names”) are registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2012. On January 16, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the Domain Names. On January 16, 2012, GoDaddy.com, LLC
transmitted by email to the Center its verification response confirming that David Hudson is listed as the registrant and providing the contact details. On January 23, 2012, Complainant filed an amendment to the Complaint reflecting Respondent’s identity as confirmed by GoDaddy.com.
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 Respondent of the Complaint, and the proceedings commenced on January 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 13, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 14, 2012.
The Center appointed Lorenz Ehrler as the sole panelist in this matter on February 21, 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
Complainant, LEGO Juris A/S is a manufacturer of toys which started using the trademark LEGO in the United States in 1953. It owns numerous word and word/device trademarks LEGO, registered in many countries in particular in class 28 for toys. Annex 6 to the Complaint contains a list of all registrations of the trademark LEGO. Most of these trademarks were registered prior to the registration of the Domain Names. LEGO Juris A/S also holds numerous domain name registrations incorporating the word “lego”, such as <lego.com>, < lego.eu>, <lego.co.uk>, etc.
The Domain Names, <lego-robotics.net>, <lego-table.net>, and <legovideos.org> were registered with the registrar GoDaddy.com, LLC. on May 28, 2011. The websites to which the Domain Names resolve contain product offerings of LEGO toys as well as toys of other trademarks such as MEGABLOKS and other, totally unrelated products, combined with (sponsored) links to certain shopping websites such as “www.amazon.com”, where the displayed products can be purchased.
5. Parties’ Contentions
Complainant contends that the Domain Names are confusingly similar to its – allegedly famous – trademark LEGO. It stresses the facts that the Domain Names entirely comprise the trademark LEGO, that the gTLD suffixes “.net” and “.org” are not distinctive and should not be taken into account in the analysis, and that the descriptive words “robotics”, “table” and “videos” contained in the Domain Names are either irrelevant because not distinctive or relevant only in the sense that they aggravate the risk of confusion.
Furthermore, Complainant submits that Respondent does not have any rights or legitimate interests in respect of the Domain Names because he is not known under the name “lego” and because there is strictly no business connection between the parties, and in particular because Complainant did at no time grant Respondent any right to use the Domain Names. Complainant contends that Respondent registered the Domain Names in order to generate traffic to online shopping websites such as “www.amazon.com”.
At last, Complainant argues that Respondent has registered and is using the Domain Names in bad faith. It submits that, given the notoriety of the LEGO trademark, Respondent intentionally registered the Domain Names without authorisation to re-direct Internet users, for commercial gain, to websites at which LEGO and other products can be purchased and/or to certain social media networks. Complainant also sees an indication of bad faith in the absence of response to its cease and desist letter and subsequent reminders.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, Complainant must prove that:
A. The Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
B. Respondent has no rights or legitimate interests in respect of the Domain Name; and
C. The Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
Complainant holds several word and word/device trademarks LEGO which are registered, among other things, for toys in class 28, in particular in the United States. In the present proceedings, Complainant puts forward the United States trademark No. 1018875 (word trademark) and provides a list of LEGO registrations worldwide. The trademarks put forward by Complainant are sufficient to found the Complaint.
The Domain Names are <lego-robotics.net>, <lego-table.net>, and <legovideos.org>.
Under the UDRP, the identity or confusing similarity requirement under paragraph 4(a) of the Policy only requires identity or confusing similarity between complainant’s trademarks and respondent’s domain name. In particular, there is no requirement of similarity of goods and/or services (e.g., AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc./Corporation Texas v. Guillermo Lozada, Jr., WIPO Case No. D2005-0485 (<vincotte.com> et al.).
The existence of a confusing similarity within the meaning of paragraph 4(a) of the Policy makes no doubt in the present case, given that the distinctive element in the Domain Names, i.e. “lego” is identical to Complainant’s trademarks. The other elements of the Domain Names, i.e. the generic words “robotics”, “table” and “videos” and the gTLD suffixes, “.org” and “.net”, which have a technical function, are not sufficient to avoid confusing similarity (e.g., Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102 (<nokiagirls.com>) and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 (<rollerblade.net>).
B. Rights or Legitimate Interests
Complainant contends that Respondent does not have any rights or legitimate interests in the Domain Names. Complainant has shown that it owns LEGO trademarks, and it has explicitly contested having granted Respondent any right to use its trademarks. Whether LEGO is a famous trademark or not does not need to be established here, it being sufficient to state that the trademark LEGO is commonly known. It seems obvious that this is in particular the case in the United States, where Respondent is located, which is supported by the uncontested fact that Complainant’s products are sold in the United States since 1953. Therefore, Complainant made a prima facie showing that Respondent must have known about Complainant’s trademark when registering the Domain Names, and that his intention was to take advantage from the well-known LEGO trademark. Furthermore, Respondent cannot argue that the Domain Names were being used for legitimate noncommercial or fair use purposes, as he is using the Domain Names not only for offerings of LEGO toys, but also of toys of competitors (e.g. MEGABLOKS) and – under the “online shopping” link, of completely distinct products, such as jewelry, music, etc., and to direct the public to websites where these products can be purchased, all the more that it seems very likely that Respondent receives commercial revenue from the display of these links (Baccarat SA v. Web Domain Names, WIPO Case No. D2006-0038 (<baccaratjewelry.com>). For this reason, there is not either a bona fide offering of goods or services according to paragraph 4(c)(i) Policy (Baccarat SA v. Speedeenames.com / Troy Rushton, WIPO Case No. D2010-0953 (<mybaccaratcrystal.net> et al.).
In the present case, the criteria developed in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 for a reseller or distributor to have a legitimate interest in the domain name are clearly not met. It shall suffice to mention that the offerings on the websites to which the Domain Names resolve include products other than Complainant’s, and that the websites do not in any way disclose Respondent’s relationship with Complainant.
Under these circumstances, the burden of production, although initially lying with Complainant, shifts to Respondent who has to demonstrate his rights or legitimate interests in the Domain Names (Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110 (<belupo.com>). Not having filed any response, Respondent has failed to make such demonstration.
The Panel thus finds that Respondent does not have any rights or legitimate interests in the Domain Names.
C. Registered and Used in Bad Faith
It results from the Panel’s factual findings that Respondent primarily registered and is using the Domain Names to display not only Complainant’s products, but also competitors’ as well as totally unrelated products, and to redirect Internet users to other websites, in particular “www.amazon.com”, where the displayed (and other) products can be purchased, and that he thereby intends to generate commercial revenue. The Panel therefore finds that by using Complainant’s trademark as the distinctive element of the Domain Names, Respondent creates a risk of confusion, at least in the sense that the visitors to the website will, at least initially, expect a website operated by Complainant or by one of its retailers. In any case, the visitor will have the impression that the websites to which the Domain Names resolve are associated with, or endorsed by, the owner of the LEGO trademark, i.e. Complainant. The fact that the products displayed on the websites to which the Domain Names resolve comprise products of Complainant’s competitors and unrelated products of third party providers, as well as links redirecting the user to third party websites, such as “www.amazon.com”, where the displayed products are offered for sale, shows bad faith conduct on Respondent’s part (e.g. Deceuninck NV v. William Vaughan, smtm investments ltd, WIPO Case No. D2007-1911 (<deceunick.com>).
The Panel thus finds that Respondent registered and is using the Domain Names to intentionally attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website (paragraph 4(b)(iv) of the Policy).
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 <lego-robotics.net>, <lego-table.net>, and <legovideos.org> be transferred to Complainant
Dated: February 23, 2012