WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Domains By Proxy, LLC / Netzero Tools - Jason Kaylor
Case No. D2012-2141
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondents are Domains By Proxy, LLC of Scottsdale, Arizona, United States of America; and Netzero Tools - Jason Kaylor of Mesa, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <legoreview.org> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2012. On October 29, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are 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 Respondents of the Complaint, and the proceedings commenced on November 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 3, 2012. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on December 4, 2012.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on December 14, 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
The Complainant is the holder of the registered USPTO trademark No. 73032295 LEGO, registered on August 26, 1975 in International Classes 28 and 22, and registered national LEGO trademarks world wide.
The disputed domain name was registered on May 29, 2012.
5. Parties’ Contentions
The Complainant is the owner of LEGO trademark and all other trademarks used in connection with the famous Lego brands of construction toys and other Lego branded products. The Complainant and its licensees, through their predecessors, commenced use of the LEGO mark in the United States during 1953, to identify construction toys made and sold by them. The Complainant has subsidiaries and branches throughout the world and Lego products are sold in more than 130 countries, including the United States. The Complainant owns more than 2,400 domain names containing LEGO trademark and maintains an extensive website under the domain name <lego.com>.
The trademark LEGO is among the best-known trademarks in the world and is now used also as a trademark inter alia for goods such as computer hardware and software, videos and computer controlled robotic construction sets. The protection for LEGO goes far beyond toys and goods similar to toys.
The dominant part of the disputed domain name comprises the word “lego”, which is identical to the registered trademarks and domain names of the Complainant and confusingly similar thereto. The additions of the suffix “review” and generic top-level domain (gTld) “.org” are not relevant and will not have any impact on the overall impression of the dominant part of the domain name. By using the trademark as a dominant part of the disputed domain name, the Respondents exploit the goodwill and the image of the trademark.
The Respondents have no legitimate rights, trademarks or other, in the disputed domain name. No license or authorization of any other kind has been given by the Complainant to the Respondents to use the trademark LEGO. It is highly unlikely that the Respondents would not have known of the Complainant’s legal rights in the name LEGO at the time of the registration. Any use of such a world wide famous trademark as LEGO would violate the rights of the trademark owner. The Respondents are not using the disputed domain name in connection with a bona fide offering of goods or services, but uses the disputed domain name to generate traffic to a site with sponsored links. The Respondents are misleading Internet users to a commercial website, trying to sponge of the Complainant’s world famous trademark. The Respondents have no rights or legitimate interests in the disputed domain name.
The LEGO trademark has the statues of a well-known and reputed trademark with a substantial and widespread reputation throughout the world. The considerable value and goodwill of the trademark LEGO has most likely made a large contribution to the in the last years increasing number of third party registrations of domain names comprising LEGO trademark as well as the registration of the disputed domain name.
The Complainant has sent a cease and desist letter on June 7, 2012, requesting an immediate transfer of the disputed domain name. A reminder was sent on July 4, 2012. The Complainant has not received any answer to its letters. After receiving information about the underlying registrant, Netzero Tools - Jason Kaylor, the Complainant contacted him on his email address and sent a final reminder on September 27, 2012. The Complainant’s efforts of trying to solve the matter amicably were unsuccessful.
The disputed domain name resolves to a website with sponsored links related to the brand Lego. When clicking on the links Internet users are redirected to online chops where e.g. Lego products can be acquired. The Respondents are using the Complainant’s trademark to attract visitors to this website, intentionally attempting to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.
The generated pay-per-click advertising links related in part to the trademark LEGO, at which point the Respondents either turned a blind eye to this use of the disputed domain name or else was unwilling to disable the advertising generated thereby until this use was placed in issue by the Complainant. A claim of “no actual knowledge” may not eliminate the Respondents’ willful blindness to the existence of third-party-rights.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, each of the three following elements must be satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy further states that the burden of proving that all three elements are present lies with the Complainant.
Preliminary Issue: Respondent Identity
The Panel finds that the proxy registration service Domains By Proxy LLC was named the Respondent of the Complaint, but that the Complainant in its Complaint also mentions Jason Kaylor at Netzero Tools as an underlying registrant provided by the Registrar and that the Complainant, before this administrative proceeding, has contacted Jason Kaylor. The Panel finds that the Center has taken reasonable means by notifying both Respondents of the Complaint and the UDRP proceeding.
The Panel has discretion to determine the identity of the proper respondent or respondents. The Panel finds, in line with most previous UDRP panels, that it is appropriate to record in this decision both the name of the privacy or proxy registration service appearing in the WhoIs at the time the Complaint was filed, and of the disclosed underlying registrant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”), paragraph 4.9.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established rights to a large number of registered LEGO trademarks world wide and in a large number of prior UDRP cases. See for example LEGO Juris A/S v. Probuilders, WIPO Case No. D2011-0226. The Panel also finds the Complainant to be the holder of a large number of domain names comprising the trademark LEGO, including <lego.com> and that Lego brand was ranked No. 8 on the Center for Brand Analysis list of top 500 brands 2009/10. The Panel finds that the LEGO trademark is well-known trademark in large parts of the world, including the United States.
The disputed domain name was registered long after the first use and registrations of the LEGO trademark. The disputed domain name consists of LEGO with the addition of the generic word "review" and the gTLD “.org”. According to well-established consensus, the gTLD is not distinctive. The Panel finds that “lego” is the distinctive part of the disputed domain name, and that the addition “review" is not sufficient to avoid the risk or Internet user confusion in relation to the Complainant’s trademarks.
Consequently, the Panel finds the disputed domain name confusingly similar to the trademark in which the Complainant has established rights. The first element of the paragraph 4(a) of the Policy is thus fulfilled.
B. Rights or Legitimate Interests
In cases when a respondent fails to present a response the complainant is still required to make a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, see WIPO Overview 2.0, paragraph 2.1., and The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064, and Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465. Further, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
The Complainant has asserted that no permission to use LEGO trademark in the disputed domain name has been granted to the Respondents. Moreover, the Complainant has stated that the Respondents have no rights of their own or legitimate interests in the disputed domain name which incorporates the Complainant’s trademark. Also, the Complainant has asserted that the disputed domain name is linked to a website used by the Respondents to link to a website presenting pay-per-click links to third party websites inter alia offering Complainant’s products and other toy products for sale.
Having considered the submissions of the Complainant, and the lack of response from the Respondents, the Panel finds that the Respondents are not connected with the Complainant and are not commonly known by the disputed domain name. Further the Panel finds that LEGO is used in the disputed domain name with an intention to derive commercial advantage thereof. Such use by the Respondents is not a legitimate noncommercial or fair use and does not confer any rights in favour of the Respondents.
In the light of what is stated above, the Panel finds that the Complainant has made a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain name. The Respondents have not proved otherwise. Therefore, the Panel finds that the second element of the paragraph 4(a) of the Policy is fulfilled.
C. Registered and Used in Bad Faith
Having regarded the fact that the Complainant’s LEGO trademark was registered and used many years before the Respondents’ domain name registration and the world wide well-known nature of the trademark, it is in this Panel’s view apparent that the disputed domain name was registered with knowledge of the Complainant’s trademark rights and with the intention of attracting customers for commercial gain by creating a likelihood of confusion with that same mark as to the source, sponsorship, affiliation, or endorsement of the Respondents’ website or location or of a product or service on the Respondents’ website or location. Accordingly, the disputed domain name was registered in bad faith.
Also, the Panel finds that the website linked to the disputed domain name has contained links to websites offering LEGO and other toy products. The Panel finds that this might lead Internet users to mistake the website for an website of the Complainant’s and that it clearly indicates bad faith use of the disputed domain name. In this case, no evidence of actual commercial gain of the Respondents has been proved but nor has this allegation by the Complainant been denied by the Respondents. This Panel shares the findings of previous UDRP Panels that a respondent may be found using a disputed domain name in bad faith, even if evidence of actual commercial gain of the Respondent has not been proven by the complainant, when nothing indicates a non-commercial use. See “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing Gmbh v. Shanbei Fu a.k.a. fushanbei, WIPO Case No. D2012-0910 ("In the absence of any evidence to the contrary, it appears that the Respondent was not using the domain name for a purpose other than commercial gain". In this Panel’s view, this is a clear indication of bad faith use.) In the case at hand, nothing indicates that the Respondents have had any other purpose than commercial gain. Accordingly, this Panel finds that the disputed domain name has been registered and is being used in bad faith.
The Panel finds that the third element of the paragraph 4(a) of the Policy is fulfilled.
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 <legoreview.org> be transferred to the Complainant.
Date: December 20, 2012