World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Douglas Gibson / Hostmaster, ONEANDONE, 1&1 Internet Ltd

Case No. D2012-1266

1. The Parties

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

Respondents are Douglas Gibson of Crawly, United Kingdom of Great Britain and Northern Ireland.

Hostmaster, ONEANDONE, 1&1 Internet Ltd of Slough, United Kingdom of Great Britain and Northern Ireland (“Respondent”).

2. The Domain Name and Registrar

<legoclubprintshop.com> (the “Disputed Domain Name”) is registered with 1&1 Internet AG (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on June 21, 2012. On June 21, 2012, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain name. On June 22, 2012, 1&1 Internet AG transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 June 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 8, 2012. The Respondent did not timely respond. Accordingly, the Center notified the Respondent’s default on August 9, 2012.

The Center appointed Sally M. Abel as the sole panelist in this matter on August 27, 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 August 29, 2012, Respondent sent an email to the Center, stating that Respondent registered the disputed domain name for Complainant and that Respondent works with Complainant. Respondent did not provide any evidence to support these allegations.

Subsequently, also on August 29, 2012, Complainant requested that the Center suspend the proceedings. On September 11, 2012, the Center confirmed to Complainant that the proceedings were suspended until September 25, 2012. On September 25, 2012 Complaint’s request to reinstate the proceedings was granted.

4. Factual Background

Complainant makes and sells children’s construction toys and other products. Complainant began using the LEGO mark in connection with the sale of its products in 1953 and now sells LEGO branded products in over 130 countries with sales of over USD 2.8 billion in 2009. According to Superbrands UK, LEGO is the eighth most famous brand in world.

For purposes of this action, Complainant relies on over 220 trademark registrations for LEGO worldwide, including registrations in the United States of America (Reg. No: 1018875) and the European Union (TM. No: 39800).

Respondent registered the Disputed Domain Name on May 2, 2012. Respondent uses the Disputed Domain Name to host a website with a homepage that says “Welcome to the LEGO club Printshop”, depicts the LEGO mark in four different places, and features a graphic of a cartoon version of a LEGO figurine.

5. Parties’ Contentions

A. Complainant

Complainant sent Respondent a cease and desist letter on June 5, 2012, advising Respondent that his unauthorized use of the LEGO mark within the Disputed Domain Name violated Complainant’s rights in the mark. Complainant requested a voluntary transfer of the domain and offered to pay respondent’s registration and transfer fees. Respondent never responded to this letter. Complainant sent reminders on June 11, 2012 and June 13, 2012 but received no response from Respondent.

Numerous prior UDRP decisions have confirmed the fame of the LEGO mark. The dominant part of the Disputed Domain Name comprises the word LEGO which is identical to Complainant’s LEGO mark. The Disputed Domain Name is confusingly similar to the LEGO mark. The addition of “clubprintshop” has no impact on the overall impression of the dominant part of the Disputed Domain Name. In fact, given that Complainant operates a LEGO Club at “www.club.lego.com”, the addition of “clubprintshop” more strongly suggests that the Disputed Domain Name belongs to or is affiliated with Complainant.

The public is likely to perceive the Disputed Domain Name as belonging to or having some commercial relationship with or connection to Complainant. Respondent’s use of the Disputed Domain Name exploits the goodwill of the LEGO mark, resulting in dilution or other damage to the mark.

Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

Respondent does not have any registered trademarks or trade names corresponding to the Disputed Domain Name, nor does Respondent have any legal rights to the LEGO name. Respondent has not used the LEGO mark in any way that would establish legitimate rights in the mark. Complainant has not licensed or authorized Respondent to use the LEGO mark, not is Respondent authorized to run a printshop called LEGO Club Printshop nor is commonly known as “the LEGO Club Printshop”. Respondent is not an authorized dealer of Complainant’s products and has never had a business relationship or affiliation with Complainant. Respondent is not using the Disputed Domain Name in connection with a bona fide offering of a goods or services. Respondent never responded to Complainant’s cease and desist letter to allege a legitimate interest in the Disputed Domain Name or the LEGO mark.

Respondent registered the Disputed Domain Name because of the considerable value and goodwill of the well-known LEGO mark. Respondent’s failure to respond to Complainant’s cease and desist letter is evidence that Respondent registered and is using the Disputed Domain Name in bad faith. The website hosted at the Disputed Domain Name, on which Respondent displays the LEGO mark and a LEGO figurine, suggests that Respondent is an active, commercial printshop. Respondent is using the Disputed Domain Name to attempt to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the LEGO mark as to the source, sponsorship, affiliation, or endorsement of the website.

B. Respondent

The Respondent did not submit a formal Response. This Panel finds that Respondent’s e-mail communication of August 29, 2012, does not alter the Panel’s findings below.

6. Discussion and Findings

Respondent has defaulted. Paragraph 14 of the Rules provides that the Panel may draw such inferences from such a default as it considers appropriate. Respondent’s untimely communication in an August 29, 2012 email does not remedy the default. Accordingly, the Panel infers from Respondent’s default that Complainant’s allegations are, in fact, correct.

A. Identical or Confusingly Similar

The Disputed Domain Name incorporates Complainant’s highly distinctive LEGO trademark and an otherwise descriptive phrase. Respondent’s addition of “clubprintshop” to the LEGO mark only increases the confusing similarity, given that Complainant operates a LEGO Club at “www.club.lego.com”. The Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s LEGO mark.

B. Rights or Legitimate Interests

There is no evidence in the record to support a finding that Respondent has any rights or legitimate interests in the Disputed Domain Name; therefore, and also in view of the Panel’s findings below, the Panel finds that Respondent has no such rights or legitimate interests.

C. Registered and Used in Bad Faith

The Panel finds that the website located at the Disputed Domain Name is a commercial endeavor, given that Respondent offered no evidence to the contrary and uses the word “shop” in the Disputed Domain Name and on the website. Respondent was certainly aware of Complainant’s rights in the LEGO mark when registering the Disputed Domain Name, given the fame of the mark. Respondent’s display of the LEGO mark and an image of a LEGO figurine on his website is not only further evidence that Respondent was aware of Complainant’s rights when registering the Disputed Domain Name but also that Respondent intentionally chose this domain in order to generate traffic to his website. The Panel also notes that Respondent’s website displays the same stylized version of the word “club” and the identical LEGO figurine that appear on Complainant’s “www.club.lego.com” website.

Taken as a whole, Respondent’s actions evidence that he intentionally registered and is using the Disputed Domain Name to attract Internet users to his website for commercial gain, by creating a likelihood of confusion with Complainant’s LEGO trademark, such that Internet users will mistakenly believe that Complainant is the source or sponsor of, affiliated with, or endorses Respondent’s website. Therefore, in accordance with paragraph 4(b)(iv) of the Policy, the Panel finds that Respondent registered and is using the Disputed Domain Name in bad faith.

7. Decision

As discussed above, the Panel finds that 1) the Disputed Domain Name is confusingly similar to Complainant’s LEGO mark, 2) Respondent has no rights or legitimate interests in the Disputed Domain Name, and 3) Respondent registered and is using the Disputed Domain Name in bad faith.

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 <legoclubprintshop.com> be transferred to Complainant.

Sally M. Abel
Sole Panelist
Dated: September 28, 2012

 

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