World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Richard Larkins Sets&Reps

Case No. D2012-1024

1. The Parties

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

Respondent is Richard Larkins Sets&Reps of Aberdeen, United Kingdom of Great Britain and Northern Ireland, self-represented.

2. The Domain Name and Registrar

The disputed domain names <legocity.mobi>, <legoforadults.com>, <legolandcoupon.com>, <legolanddanmark.com>, <legolanddiscount.com>, <legolandeurope.com>, <legolandprices.com>, <legolandreviews.com>, and <legostarwars.mobi> (hereinafter the “Disputed 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 May 14, 2012. On May 15, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On May 15, 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 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 May 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 7, 2012. Respondent submitted an informal email communication to the Center on May 29, 2012.

The Center appointed Richard W. Page as the sole panelist in this matter on June 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.

4. Factual Background

Complainant is located in Denmark and is the owner of the term “LEGO” and all other trademarks used in connection with the famous LEGO brands of construction toys and other LEGO branded products (the “LEGO Mark”). Complainant’s licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights, in the United Kingdom (“UK”) and elsewhere. The UK trademark registration with trademark no. A754628 matured into registration as early as 1957. The British LEGO Ltd. was established in 1959 and the use of the LEGO Mark has been extensive, exclusive and continuous since then and even before. In a recently done survey made in the UK by “firebox.com”, a UK online toy and gizmo gift store, the British toy news website Toyology, the LEGO brand was ranked as the most popular toy ever manufactured. Complainant and its licensees (the “LEGO Group”), through their predecessors, commenced use of the LEGO Mark in the United States of America during 1953, to identify construction toys made and sold by them. Over the years, the business of making and selling LEGO branded toys has grown considerably. The revenue for the LEGO Group in 2009 was more than USD 2.8 billion. In 2010 the LEGO Group global market share rose from 4.8% at the close of 2009 to approximately 5.9 % at the end of 2010. Complainant has subsidiaries throughout the world and LEGO products are sold in more than 130 countries, including the UK.

Complainant is also the owner of more than 2,400 domain names containing the term LEGO. It is the strict policy of Complainant that all domain names containing the word LEGO should be owned by Complainant.

5. Parties’ Contentions

A. Complainant

Complainant contends that Complainant has decades of extensive advertising, which prominently depicts the LEGO Mark on all products, packaging, displays, advertising, and promotional materials. The LEGO Mark has been recognized as being famous.

Complainant further contends that the LEGO Group has expanded its use of the LEGO Mark to computer hardware and software, books, videos and computer controlled robotic construction sets. The LEGO Group maintains an extensive website under the domain names <lego.com> and <lego.co.uk>. Since 1999, the LEGO Group has had a license agreement with Lucasfilm Ltd. concerning the use of the trademark STAR WARS incorporated in the LEGO product line. “Star Wars” was the first licensed property produced by the LEGO Group and the license was originally slated to last from 1999-2007. However, due to its extreme popularity, Lucasfilm Ltd. and the LEGO Group reached an agreement in early 2006 to extend the license to 2011. Since the LEGO Group translated “Star Wars” into the construction play pattern, the line has generated more that USD 1 billion in retail sales around the world.

Complainant argues that the LEGO Mark has acquired substantial secondary meaning and distinctiveness. The awareness of the LEGO Mark is considered significant throughout the European Community. According to the provisions of Article 6bis of the Paris Convention for Protection of Industrial Property (“Paris Convention”), confirmed and extended by Articles 16.2 and 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”), a well-known trademark provides the owner of such a trademark with the right to prevent any use of the well-known trademark or a confusingly similar denomination in connection with any products or services, regardless of the list of the products and services for which the trademark is registered. Thus, the protection of the LEGO Mark goes far beyond toys and goods similar to toys.

Complainant further argues that the dominant part of the Disputed Domain Names is either the word “lego” or “legoland” both of which are registered trademarks in numerous countries all over the world. The fame of the LEGO Mark has been confirmed by previous UDRP decisions.

Complainant further argues that the addition of the gTLD’s “.com” and “.mobi” have no impact on the overall impression to the dominant portion of the Disputed Domain Names and are therefore irrelevant to determine confusing similarity between the LEGO Mark and the Disputed Domain Names.

Complainant alleges that Respondent has no registered trademarks or trade names corresponding to the Disputed Domain Names and is not commonly known by any of the Disputed Domain Names. Furthermore, Respondent has never been licensed by Complainant or in any way been given permission to use the LEGO Mark in the Disputed Domain Names.

Complainant contends that Respondent registered the Disputed Domain Names on March 30, 2012 and April 20, 2012 and must be charged with actual or constructive knowledge of Complainant’s rights in the LEGO Mark. Complainant further contends that Respondent is using the Disputed Domain Names to generate pay-per-click revenue which does not constitute a bona fide offering of goods or services.

As such Complainant contends that Respondent has no legitimate rights to or interest in the Disputed Domain Names.

Complainant sent letters to Respondent offering to reimburse expenses of registration and renewal fees. Respondent explained that the Disputed Domain Names had higher value because of their keyword value to generate pay-per-click advertising revenue. Complainant contends that Respondent is seeking commercial gain from creating the likelihood of confusion with the LEGO Mark by re-directing Internet users to “www.amazon.com” where Respondent receives pay-per-click revenue. Complainant contends that these facts satisfy the elements of the Policy, paragraph 4(b)(iv), and constitute bad faith use and registration of the Disputed Domain Names.

B. Respondent

An email from Respondent dated May 29, 2012 was deemed by the Center to constitute the Response. Respondent reiterated his position about the Disputed Domain Names being high value keywords in traffic generation and pay-per-click revenues. Respondent apparently contends that this is a bona fide use which gives him legitimate rights to and interests in the Disputed Domain Names and defeats any allegations of bad faith registration or use.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

i) that the Disputed Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and,

ii) that Respondent has no legitimate rights to or interests in respect of the Disputed Domain Names; and,

iii) that the Disputed Domain Names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Complainant contends that it has numerous registrations of the LEGO Mark. Previous UDRP decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

Respondent has not contested these contentions and the Panel finds that Complainant has enforceable rights in the LEGO Mark.

Complainant further contends that the Disputed Domain Names are confusingly similar to the trademark pursuant to the Policy paragraph 4(a)(i).

Respondent has not contested the assertions by Complainant that the Disputed Domain Names are confusingly similar to the trademark.

As numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark.

The Panel finds that the entirety of the trademark LEGO and/or “Legoland” term protected by the LEGO Mark form the dominant part of the Disputed Domain Names. The Panel further finds that the addition of the gTLD’s “.com” and “.mobi” are not distinctive and do not distinguish the dominant part of the Disputed Domain Names which are “lego” and “legoland”.

Therefore, the Panel finds that the Disputed Domain Names are confusingly similar to the LEGO Mark pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Names pursuant to the Policy, paragraph 4(a)(ii).

Paragraph 4(a)(ii) requires Complainant to prove that Respondent has no rights to or legitimate interests in the Disputed Domain Names. Once a complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of production on this factor shifts to Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.

Complainant alleges that Respondent has no registered trademarks or trade names corresponding to the Disputed Domain Names and is not commonly known by any of the Disputed Domain Names. Furthermore, Respondent has never been licensed by Complainant or in any way been given permission to use the LEGO Mark in the Disputed Domain Names.

Complainant contends that Respondent registered the Disputed Domain Names on March 30, 2012 and April 20, 2012 and must be charged with actual or constructive knowledge of Complainant’s rights in the LEGO Mark. Complainant further contends that Respondent is using the Disputed Domain Names to generate pay-per-click revenue which does not constitute use in a bona fide offering of goods or services.

As such Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Names.

The Policy paragraph 4(c) allows three nonexclusive safe harbors for Respondent to demonstrate he has rights to or a legitimate interest in the Disputed Domain Names:

“(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] are making a legitimate noncommercial 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.”

Complainant has come forward with sufficient allegations to make a prima facie case under paragraph 4(c) of the Policy.

The Panel has deemed Respondent’s email on May 29, 2012 to constitute an assertion that he has rights to or legitimate interests in the Disputed Domain Names given his pay-per-click revenue. The argument follows that pay-per-click advertising links appearing on the website constitute a bona fide offering of goods and services as long as there is no intention to profit from another’s trademark. In this Panel’s view, this argument fails because of the Respondent’s use of the Disputed Domain Names in a trademark sense. “It is by now well established that PPC [pay-per-click] parking pages built around a trademark (as contrasted with PPC pages built around a dictionary word and used only in connection with the generic or merely descriptive meaning of the word) do not constitute a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy, nor do they constitute a legitimate non-commercial or fair use pursuant to paragraph 4(c)(iii).” See Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598.

Therefore, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Names pursuant to the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Complainant contends that Respondent registered and is using the Disputed Domain Names in bad faith in violation of the Policy, paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names. Complainant has asserted that Respondent violated the Policy paragraph 4(b)(iv) which reads:

“(iv) by using the domain name, you have 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 complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product.”

Complainant contends that Respondent is seeking commercial gain from creating the likelihood of confusion with the LEGO Mark by re-directing Internet users to “www.amazon.com” where Respondent receives pay-per-click revenue in violation of the Policy, paragraph 4(b)(iv).

Respondent has been deemed to assert that his pay-per-click use of the Disputed Domain Names does not constitute bad faith.

Having found that the Disputed Domain Names are confusingly similar to the LEGO Mark and that the pay-per-click revenue derived by Respondent is not legitimate use, the Panel finds that Complainant has shown sufficient facts to support a finding that Complainant has demonstrated the existence of the criteria in the Policy, paragraph 4(b)(iv) and that Respondent registered and used the Disputed Domain Names in bad faith pursuant to the Policy, paragraph 4(a)(iii).

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 Names <legocity.mobi>, <legoforadults.com>, <legolandcoupon.com>, <legolanddanmark.com>, <legolanddiscount.com>, <legolandeurope.com>, <legolandprices.com>, <legolandreviews.com>, and <legostarwars.mobi> be transferred to Complainant.

Richard W. Page
Sole Panelist
Dated: June 18, 2012

 

Explore WIPO