World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Roger Liles

Case No. D2012-0491

1. The Parties

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

The Respondent is Roger Liles of Eagle Point, Oregon, United States of America (“United States”).

2. The Domain name and Registrar

The disputed domain name <legowar.com> is registered with GoDaddy.com, LLC.

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 GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On March 14, 2012, GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that the 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 the 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 April 5, 2012. Initially, the Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 10, 2012.

The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on April 13, 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.

On April 18, 21 and 25, 2012, the Respondent by emails on those respective dates made certain representations to the Center. The Center acknowledged these emails from the Respondent on April 18, 23 and 25, 2012 respectively and informed the Respondent that time for submission of a Response had expired on April 5, 2012 and that there was no express provision under the Rules for Supplemental Filings by either party, except in response to a deficiency notification or if requested by the Center or the Administrative Panel. The Rules, paragraphs 10 and 12, in effect, grant the Panel sole discretion to determine the admissibility of Supplemental Filings (including further statements or documents) received from either Party.

The Center has put all these emails before the Panel.

The Panel, in exercise of its general powers under the Rules, paragraphs 10 and 12, will admit the emails from the Respondent of April 18, 21 and 25, 2012.

4. Factual Background

The Complainant in this administrative proceeding is LEGO Juris A/S. The Complainant is the owner of the LEGO trade mark, which is used extensively in relation to the well-known brand of children’s construction toys. The LEGO brand was started in 1953, and has since grown into a group of companies which in 2009, had revenue of more than 2.8 billion dollars.

The Complainant is the registered proprietor of a substantial number of trade mark registrations for the LEGO mark and other related marks in many countries throughout the world. As an example only, these registrations include the following Community Trade Mark registration:

Mark

Territory

Registration number

Date of Registration

Class of goods and services

LEGO

CTM

0039800

May 10, 1998

3,9,14,16,20,24,25,28,38,41 & 42

The Complainant operates online primarily by means of a website at the domain name <lego.com> but it is also the owner of a very substantial number of domain names containing the term “lego”.

According to the Complainant, LEGO was number eight in an “official” chart of the five hundred most famous trade marks/brands in the world for 2009/2010.

The Complainant’s trade mark rights in the LEGO mark have been recognized in a number of previous UDRP proceedings (including recent cases LEGO Juris A/S v. Nasirudin, EazySmart.com, WIPO Case No. D2011-0617; LEGO Juris A/S v. Owen Jones, WIPO Case No. D2011-0537; LEGO Juris A/S v. Xianbin Chen, WIPO Case No. D2011-0505; LEGO Juris A/S v. Bridge Port Enterprises Limited, WIPO Case No. D2011-0442; LEGO Juris A/S v. Probuilders, WIPO Case No. D2011-0226; and LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840 and at least 13 other UDRP decisions in 2010).

5. Parties’ Contentions

A. Complainant

Identical or confusingly similar

The Complainant submits that the disputed domain name is identical or confusingly similar to the Complainant’s “world famous” trade mark LEGO. The Complainant contends that the trade mark LEGO should be considered a well-known mark for the purposes of Article 6bis of the Paris Convention for the Protection of Industrial Property – which would provide the Complainant with a right to prevent any use of that mark, or any confusingly similar denomination, with any product or services. The Complainant argues that the fame of the mark has been confirmed “in numerous previous UDRP decisions” and cited several case including LEGO Juris A/S v Rampe Purda, WIPO Case No. D2010-0840 in which the decision said “LEGO is clearly a well-known mark”.

The Complainant submits that the dominant part of the disputed domain name, “lego”, is identical to the Complainant’s trade mark LEGO. The addition of the suffix “war” is not, the Complainant states, “relevant” and does not have any impact on the dominant part of the name, “lego”, which is instantly recognizable as a well-known trade mark. It does not detract from the overall impression.

The Complainant relies in support on Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488, which case stated that “it is a long established precedent that confusing similarity is generally recognized when well-known trade marks are paired up with different kinds of generic prefixes and suffixes”.

The Complainant also states that the addition of the top level domain suffix “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore also irrelevant.

The Complainant concludes that anyone who sees the disputed domain name is bound to mistake it as belonging to the Complainant.

Rights or Legitimate Interests

The Complainant submits that the Respondent has no legitimate rights or interest in the disputed domain name for the following reasons:

- the Complainant has not found that the Respondent has any registered trade marks or trade names corresponding to the disputed domain name, nor any other uses of LEGO by the Respondent that would give it any legitimate rights to use the LEGO mark;

- the Complainant, owner of the trade mark LEGO, has provided no license or authorization of any kind to the Respondent to use the Complainant’s rights in the trade mark LEGO, and the Respondent is not an authorized dealer of the Complainant’s product and has never had a business relationship with the Complainant;

- whilst the Respondent has registered the disputed domain name on November 14, 2011 this does not of itself give the owner a right or interest in respect of the it;

- it is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in the mark LEGO at the time of registration. That, taken together with the fact that the Respondent cannot claim to have any rights to the use of the word LEGO, supports the Complainant’s claim that “the Respondent’s interest cannot have been legitimate”;

- the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent is only using the disputed domain name in order to generate traffic to a site with sponsored links and information of his own product named Phone Tricks. The disputed domain name is pointed to his own website, which is at “www.phonetricks.20m.com”; and,

- the Respondent uses pay-per-click links which trade off the value of the LEGO mark in order to generate revenue. This is unfair use resulting in misleading diversion.

For the above reasons the Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name.

Registered and Used in Bad Faith

The Complainant submits that the trade mark LEGO which has “the status of a well-known and reputed trade mark with substantial and widespread reputation throughout the whole Community and throughout the world”, has, on account of this, been the subject of a recent “skyrocketing” of third party domain name registrations comprising the trade mark LEGO in combination with other words which has led to many UDRP complaints by the Complainant in 2010 and 2011 and subsequent decisions in its favour. The Complainant argues that the considerable value and goodwill of the LEGO mark is likely to have contributed to this trend and to have made the Respondent register the disputed domain name.

The website at the disputed domain name can only have been registered by reference to the Complainant’s mark, and has nothing to do with the product that is sold by or under the mark, but incorporates the Complainant’s mark LEGO merely “in order to generate traffic to a site with sponsored links” which, as the Complainant suggests, leads the Panel to the view that the website was registered in bad faith.

The Complainant relies on Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946, in which the Panel held that deliberately creating a likelihood of confusion with a Complainant’s mark as to the source, sponsorship, affiliation, endorsement of the website constitutes evidence of both bad faith registration and bad faith use, for the purposes of paragraph 4(a)(iii).

The Complainant contacted the Respondent on December 16, 2011, requesting the immediate transfer of the disputed domain name and offering to compensate the Respondent for the expenses of registration and any renewal fees. The Respondent replied, attempting to sell to the Complainant the domain name for the sum of USD 750.

The Complainant replied on December 19, 2011, informing the Respondent that the Complainant “did not buy domain names from third parties including their trade mark” and making an offer to reimburse the registration fee and any possible transfer cost connected to the disputed domain name. The Respondent did not reply, and this Complaint was lodged with the Center as a result.

B. Respondent

The Respondent did not file a Response by the date provided under the Rules but, in exercise of its powers under the Rules, paragraphs 10 and 12, the Panel has admitted three emails from the Respondent dated, respectively, April 18, 21, and 25, 2012. The relevant points made in those emails appear to be the following:

- the Respondent tried to reach an agreement with the Complainant but the Complainant did not respond to this;

- in that circumstance, the Respondent will not give the disputed domain name to the Complainant;

- the Respondent claims that it would have forwarded the domain name to the Complainant free of charge;

- the Respondent will forward all of its my domains to another GoDaddy.com, LLC account, and the Complainant can have the Respondent’s account for no charge with the disputed domain name left in it;

- because the Complainant is pursuing a Complaint with the Center, the Respondent is now asking “$10,000” for the disputed domain name;

- the Respondent says it is concerned that someone is trying to steal the disputed domain name from it;

- the Respondent says that if its offer is not accepted, it may decide to keep the disputed domain name.

6. Discussion and findings

The Panel must decide the Complaint on the basis of the Parties’ statements, the documents submitted in support of those statements, and in accordance with the Policy, the Rules and any other applicable laws or regulations.

For the Complainant to prevail, it must establish each of the following elements of paragraph 4(a) of the Policy:

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

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith

The Rules state that if a Party, in the absence of exceptional circumstances, does not comply with any provision of the Rules, or any request from the Panel, “then the Panel shall draw such inferences therefrom as it considers appropriate” (Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).

A. Identical or Confusingly Similar

The disputed domain name is made up of two words, “lego” and “war”. The Complainant has established beyond any shadow of a doubt that it is the registered proprietor of a very large number of trade marks that are identical to the first of those two words, i.e. LEGO.

Taken together, the Complainant submits that the disputed domain name remains confusingly similar to the Complainant’s mark. The addition of the suffix “war” is not, the Complainant states, “relevant” and does not have any impact on the dominant part of the name, “lego”, which remains instantly recognizable as a world famous trade mark.

Furthermore, the Complainant states that the addition of the top-level suffix “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore also irrelevant.

The Panel does not agree with the Complainant that the addition of the word “war” is irrelevant, but the Panel does agree that the addition of the word “war” is insufficient to prevent the disputed domain name from being confusingly similar. The Respondent in its brief email responses does not make any submissions at all regarding confusing similarity with the Complainants mark. Therefore, the Panel agrees with the Complainant that people would be very likely to mistake the disputed domain name for one belonging to the Complainant.

The Panel agrees that the addition of the top-level suffix “.com” is irrelevant in the present case (Bradford & Bingley Plc v. Registrant info@fashionID.com 987654321, WIPO Case No. D2002-0499).

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.

B. Rights or Legitimate Interests

The Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name as follows: -

(i) The Complainant is the proprietor of a variety of registered trade marks for the trade mark LEGO and other related marks throughout the world;

(ii) The Complainant did not find that the Respondent had a registered trade mark or any trade names corresponding to the disputed domain name;

(iii) The Complainant has found no evidence that the Respondent had been using LEGO in any other way that would give them any legitimate rights in the name.

(iv) The Respondent is not or has not been commonly known by the disputed domain name.

(v) The Respondent has no license, permission or authorization from the Complainant to use any of the Complainant’s trade marks. It is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant;

(vi) The Respondent does not directly sell or offer for sale any goods from the website located at the disputed domain name that relate to the Complainant’s use of the mark;

In such circumstances, the evidential burden of production shifts to the Respondent to show that it does have rights or legitimate interests in the disputed domain name (Sony Kabushiki Kaisha v. sony.net, WIPO Case No. D2000-1074).

The Respondent does not make any submissions at all regarding its right or legitimate interests in the disputed domain name.

Accordingly, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

“Lego” is a word that refers exclusively to the Complainant’s goods. The Panel therefore considers that the Respondent can only have registered the disputed domain name, incorporating the trade mark LEGO, by reference to the Complainant’s goods. Whilst that is not in and of itself conclusive evidence of a registration made in bad faith, in circumstances where the website at the disputed domain name is not intended to be used in a bona fide manner in relation to those goods (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903), or at all (as in this case), this Panel finds that the registration can only have been made in the knowledge that it would infringe third party intellectual property rights.

Numerous past UDRP decisions, including Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397 and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806 have established that when a registrant registers a domain name, they represent and warrant to the registrar that, to the extent of their knowledge, the registration of that domain name will not infringe any third party rights, and that to do so in the knowledge that it will infringe, constitutes a registration in bad faith.

The Panel considers therefore that the registration of the disputed domain name in this case was made in bad faith, to take advantage of the Complainant’s goodwill in the LEGO brand in order to generate traffic to a website containing pay-per-click links.

The Respondent also offered to sell the Domain Name to the Complainant for USD 750. An offer to sell the disputed domain name to the Complainant for valuable consideration that significantly exceeds the Respondent’s out of pocket expenses incurred by the registration and transfer of the disputed domain name, is also a classic example of using the registration of a domain name in bad faith (adidas-Salomon AG v. Vincent Stipo, WIPO Case No. D2001-0372).

This is exacerbated by the Respondent’s position set out in the three emails from the Respondent respectively dated April 18, 21 and 25, 2012, which were admitted into evidence; this evidence is confused but it includes an offer to sell the disputed domain name for “$10,000” (the registration costs for which will have been considerably less) although this has been surrounded by varying other offers to give up the disputed domain name. The fact is that it is not at all clear what the current position of the Respondent is but one position appears to be that it is seeking “$10,000”. This behavior which, in substance, indicates to this Panel that the Respondent always intended to sell the disputed domain name for an excessive amount, is further evidence of bad faith under the Policy.

For all of the above reasons, the Panel considers that, pursuant to paragraph 4(b)(iv), of the Policy, the Respondent has registered and is using the disputed domain name in bad faith.

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 disputed domain name, <legowar.com>, be transferred to the Complainant.

Charters Macdonald-Brown
Sole Panelist
Dated: April 27, 2012

 

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