World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. James Holmes

Case No. D2012-0490

1. The Parties

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

Respondent is James Holmes of Hampshire, United Kingdom of Great Britain and Northern Ireland (“UK”)..

2. The Domain Name and Registrar

The disputed domain name <legoland-florida.com> is registered with Mesh Digital Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2012. On March 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 14, 2012, the Registrar 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 March 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2012. The Center received emails communications from Respondent on May 3 and 4, 2012. Respondent did not submit any formal Response. Accordingly, the Center notified about the commencement of panel appointment procedure on May 8, 2012.

The Center appointed Dina Founes as the sole panelist in this matter on May 23, 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 is the owner of a large number of trademarks and service marks LEGO and LEGOLAND which are both registered throughout the world and extensively used in more than 130 countries.

The LEGO mark is a worldwide well-known trademark used by Complainant to designate a wide range of popular construction toys consisting of colorful interlocking plastic bricks among other range of products and services.

The mark LEGOLAND is registered in many countries and used by Complainant and its licensees to designate a chain of LEGO-themed theme parks in the United States of America and Europe.

Complainant submitted in support of its Complaint the full list of the LEGO and LEGOLAND trademark registrations across the world including in the UK where Respondent resides (Annex 6 of Complainant’s submissions).

Complainant uses also the word “lego” as part of its company name since 1932 (as per Wikipedia) and is the owner, as shown in Annex 8 of Complainant’s submission, of 2,400 domain names containing the word “lego” alone, among which the domain name <lego.com> used to designate Complainant’s official website launched in 1996, or in combination with other words, among which are the domain names <legoland.com> and <legolandflorida.com>.

On January 15, 2011, Respondent registered the disputed domain name <legoland-florida.com> with the Registrar.

On March 23, 2011, Complainant sent a cease and desist letter to Respondent through its authorized counsel requesting the transfer of the disputed domain name to Complainant.

An exchange of emails followed between Complainant and Respondent in which Respondent agreed to transfer the disputed domain name to Complainant at a selling price of GBP 500 (email of March 31, 2011) and then increased the sum to GBP 1000 (email of June 25, 2011).

After uncovering the registration of another domain name, namely <legoland-florida.co.uk>, by Respondent, Complainant requested on October 24, 2011 from Respondent to also transfer this domain name to Complainant. Respondent replied on December 22, 2011 agreeing to sell these two domain names to Complainant for a total sum of GPB 10,000.

Taking act of Respondent’s delay to respond and the non-transfer of the domain names by Respondent for the reasonable out-of-pocket expenses corresponding to the domain name registration costs, Complainant lodged a Complaint with the Center and the administrative proceeding commenced against Respondent on March 16, 2012 and was then suspended on April 4, 2012 at the request of Complainant in the expectation of the possible transfer of the disputed domain name by Respondent. However, on May 4, 2012, the Administrative proceeding was re-instituted against Respondent at the request of Complainant.

Respondent replied on May 4, 2012 agreeing again to the transfer of the disputed domain name if he is paid by Complainant without communicating further details, and also did not provide a formal Response to the Complaint.

On May 7, 2012, Complainant advised Respondent that the amount asked was far in excess of the domain name registration costs and therefore not acceptable to Complainant unless the transfer is processed for the reasonable registration costs. Respondent failed to answer this last request from Complainant.

On May 8, 2012, the Center started the process to appoint the Administrative Panel.

Another exchange of correspondence took place on May 24, 2012 between Complainant and Respondent in which Respondent asked to be paid the costs of registration but did not take any steps to initiate and formalize this transfer despite the willingness of Complainant to suspend the proceedings to enable such transfer. As a result, the administrative proceeding was maintained.

5. Parties’ Contentions

A. Complainant

Complainant first highlights the worldwide notoriety of its trademark LEGO which has been extensively used throughout the world for more than 50 years to designate construction toys and many other LEGO branded products and adds in support of this assertion the Superbrands UK survey listing the official top 500 Superbrands for 2009/2010 positioning the LEGO brand among the top 10 most famous brands in the world.

Complainant further asserts:

1) In respect of the confusing similarity of the disputed domain name with Complainant’s trademarks and service marks LEGO and LEGOLAND:

Given the fame of the LEGO brand as confirmed by many UDRP decisions (references provided in Complainant’s submissions) and the distinctiveness of the term LEGO and LEGOLAND to designate toys and other associated products, the addition by Respondent in the disputed domain name of elements such as a hyphen along with the geographic name “Florida” and the top level domain (“.com”) is irrelevant when comparing <legoland-florida.com> with Complainant’s marks. The disputed domain name remains therefore confusingly similar with Complainant’s trademarks and domain names <lego.com> and <legoland.com>.

2) Respondent has no rights or legitimate interests on the disputed domain name:

Complainant contends that:

- Respondent has no trade or service marks or company name corresponding to the disputed domain name.

- Respondent has no authorization from Complainant to use the marks LEGO or LEGOLAND in his disputed domain name, and do not have any business relationship of any sort with Complainant.

- Only the notoriety of the LEGO and LEGOLAND marks motivated Respondent to incorporate these marks in the disputed domain name to attract and generate traffic to his website displaying sponsored links leading to either Complainant’s website, to Complainant’s competitors or to other unrelated business products and services. Such use of the disputed domain name cannot consequently be considered as a fair or a legitimate use of the disputed domain name.

3) In respect of bad faith:

Complainant reminds of the worldwide fame of the LEGO and LEGOLAND marks and considers that Respondent could not have ignored the notoriety of the marks LEGO and LEGOLAND when registering the disputed domain name. It further adds that Respondent used intentionally these famous marks in the disputed domain name <legoland-florida.com> only to attract Internet users to his website for commercial gain.

Furthermore, Complainant highlights Respondent’s clear intent to obtain a significant financial compensation from Complainant under the present case as this has been reflected from the gradual increase by Respondent of the selling price for transferring the disputed domain name from an initial GBP 500 to GBP 10,000 which is far beyond the out-of-pocket domain name registration costs.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

In order to obtain the transfer of the disputed domain name, Complainant should demonstrate, in accordance with the Policy, paragraph 4(a), that:

(i) The disputed domain name is identical or similar to the trademark or service mark in which Complainant has rights.

(ii) Respondent has no rights or legitimate interests in the disputed domain name.

(iii) Respondent has registered and used the disputed domain name in bad faith.

A. Identical or Confusingly Similar

After comparing the disputed domain name with Complainant’s marks LEGO and LEGOLAND, the Panel finds that the disputed domain name (i) incorporates entirely the word mark LEGO which constitutes a distinctive trademark on its own and has been clearly established as a famous trademark by many UDRP decisions and international surveys, as demonstrated in Complainant’s submissions, and (ii) reproduces identically the word mark LEGOLAND which constitutes an arbitrary association of the famous mark LEGO with the term “land” and such combination leading to a distinctive word mark as a whole, protectable as such. The Panel considers the mere addition by Respondent of a generic element such as the geographic designation “Florida” along with a hyphen and the top level domain name (“.com”) in the disputed domain name as insufficient to differentiate and eliminate the confusion in the public’s mind between the disputed domain name and Complainant’s word marks LEGO and LEGOLAND.

Accordingly, the Panel is satisfied that the disputed domain name is indeed confusingly similar to Complainant’s word marks LEGO and LEGOLAND.

B. Rights or Legitimate Interests

The Panel first notes that Respondent did not respond to the Complaint, and hence did not provide any evidence establishing his rights or legitimate interests in the disputed domain name.

The Panel takes also act of Complainant assertions that Respondent is not an authorized user or licensee of Complainant, nor they have been in a business relationship of any sort prior to the registration of the disputed domain name.

Furthermore, and based on the submissions made by Complainant, the Panel notes that the disputed domain name is not used by Respondent to promote or sell its own products or services, but resolve to a webpage displaying sponsored links advertising Complainant’s products, but also its competitors offerings such as Disneyland and to other entertainment and travel sites selling theatre and other attraction tickets or discounted trips, etc.

Such use of the disputed domain name by Respondent to attract Internet users drawn originally to Complainant’s marks to subsequently divert them to unrelated websites to those of Complainant through the displayed sponsored links and receive financial compensation for generating such traffic to the sponsored sites does not constitute a bona fide offering of goods and services. Indeed, it is obvious to the Panel that registration of the disputed domain name by Respondent was only motivated by the commercial gain resulting from illegitimately trading through the sponsored links on the fame of the LEGO and LEGOLAND marks. See in this regard Bayerish Motoren Werke AG v. Ivan Razin WIPO Case No. D2005-0341 retaining the absence of legitimate interests. The Panel believes further that Respondent has chosen the disputed domain name to profit by its fame and by the traffic generated by the likely initial expectations of users to whom he offers its services, a partnership scheme for generating income from toolbar downloads and access to services of pornographic nature.

In light of the above findings, the Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Panel finds that Respondent has registered and is using the disputed domain name in bad faith for the following reasons:

- Respondent could not have ignored at the time of registration of the disputed domain name the existence of the world famous marks LEGO and LEGOLAND owned by Complainant, such fame being clearly demonstrated in Complainant’s submissions. This is further corroborated by Respondent’s admission in his correspondence with Complainant stating that he owns a guest villa in Florida and is using the disputed domain name to inform his guests about the attractions nearby which obviously refers to the LEGOLAND theme-park in Florida which is linked to Complainant’s activities and its related business partners. The Panel considers that Respondent has therefore knowingly registered the disputed domain name in violation of Complainant’s exclusive rights in the renowned marks LEGO and LEGOLAND.

- Respondent is using the disputed domain name exclusively to attract the Internet consumers who are interested in the LEGO products and re-route them to unrelated commercial websites in order to make financial profits out of such unauthorized use of the LEGO and LEGOLAND marks. Respondent is therefore deliberately misleading consumers as to create a likelihood of confusion with the LEGO marks leading such Internet users to associate the disputed domain name with Complainant’s marks and domain names <lego.com>, <legoland.com> and <florida-legoland.com> or at the least to appear as a LEGO recommended website which is false. See in this regard Nikon, Inc and Nikon Corporation v. Technilab, Inc, WIPO Case No. D2000-1774 “the use of the <nikoncamera.com> domain name for a site that sold Nikon products and those of its competitors constitute an improper use of Complainant’s mark to attract Internet users to Respondent’s website for commercial gain by creating a likehood of confusion as to source, sponsorship, affiliation or endorsement of the site”. See also AT&T Corp. v. Azim Hemani, WIPO Case No. D2003-0634.

- As illustrated in the exchange of correspondence between Respondent and Complainant, the high selling price offer made by Respondent for the transfer of the disputed domain name starting at an initial price of GBP 500 increasing to 10 times this amount i.e. to GBP 5,000 (and GBP 10,000 including the second domain name) which is far from aligning with the reasonable out-of-pocket registration costs he incurred, demonstrates Respondent’s clear intention to make a significant financial profit from selling the disputed domain name to Complainant and constitutes therefore a strong indicator of Respondent’s bad faith.

In light of the above, the Panel is satisfied that Complainant has established the bad faith of Respondent in registering and using the disputed domain name.

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 <legoland-florida.com> be transferred to the Complainant.

Dina Founes
Sole Panelist
Dated: June 6, 2012

 

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