World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Donny Shaw and Rodney Cooper

Case No. D2012-2164

1. The Parties

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

The Respondents are Donny Shaw and Rodney Cooper, of Winter Haven, Florida, United States of America.

2. The Domain Names and Registrar

The disputed domain names <legolandapparel.com>, <legolandboatrentals.com>, <legolandclothes.com>, <legolandfishingcharters.com>, <legolandfishing.com>, <legolandhats.com>, <legolandleases.com>, <legolandparking.com>, <legolandrealestate.com>, <legolandrealty.com>, <lego-land-rentals.com>, <legolandrestaurants.com>, <legolandrides.com>, <legolandswimwear.com>, <legolandtransportation.com>, <legolandtrip.com> and <legolandtrips.com> (the “Domain Names”) are 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 31, 2012. On October 31, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On November 2, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent Rodney Cooper is listed as the registrant of the Domain Names <legolandparking.com> and <legolandtrip.com> and the Respondent Donny Shaw is listed as the registrant of the other 15 Domain Names, 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 15, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2012. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on December 6, 2012.

The Center appointed Ian Lowe 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 and its predecessors have used the LEGO trademark since 1953 to identify construction toys made and sold by them. Lego products are sold in more than 130 countries including the United States, and the revenue of the LEGO Group in 2009 was more than USD 2.8 billion. The trademarks LEGO and LEGOLAND are among the best known trademarks in the world and LEGO was identified by Superbrands UK as the eighth most famous trademark and brand in 2009/10. The Complainant is the owner of numerous trademark registrations in respect of LEGO and LEGOLAND around the world including US trademark number 75504012, LEGOLAND, filed on June 17, 1998.

The Domain Names <legolandparking.com> and <legolandtrip.com> were registered in the name of Rodney Cooper on August 19, 2012. The other 15 Domain Names were registered in the name of Donny Shaw on August 4, 2012. Both Mr. Shaw and Mr. Cooper have addresses in Winter Haven, Florida, United States. At the time of the Complaint, all 17 Domain Names resolved to web pages comprising sponsored links to other websites including, in some cases, websites offering Lego products for sale.

On August 30, 2012, a cease and desist letter was sent on behalf of the Complainant to the Respondent Donny Shaw in respect of a number of the Domain Names. On September 6, 2012 an attorney replied to the letter saying that he represented Rodney Cooper and that Mr. Cooper owned a number of other Domain Names. In fact, apart from <legolandparking.com> and <legolandtrip.com>, the Domain Names mentioned were all registered in the name of Donny Shaw. The attorney indicated that his client was willing to sell the Domain Names for USD 5,000 each.

On October 31, 2012, the Complainant filed a UDRP complaint against both Respondents.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Names are confusingly similar to its LEGOLAND trademarks, that the Respondents have no rights or legitimate interests in respect of the Domain Names and that the Respondents registered and are using the Domain Names in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

B. Respondent

The Respondents did not reply to the Complainant’s contentions.

6. Preliminary Issue: Consolidation of Proceedings

The Complaint has been brought by a single Complainant against two Respondents. The attorney who responded to the cease and desist letter mentioned above, written to the Respondent Donny Shaw, stated that he represented the Respondent Rodney Cooper. A number of the Domain Names the attorney said were owned by Rodney Cooper were registered in the name of Donny Shaw. Both Respondents have an address in Winter Haven, Florida, United States with the same zip code. All of the Domain Names comprise “Legoland” plus other elements. The Panel is satisfied, therefore, on the basis of the matters set out in the Complaint and the evidence in support, that the Domain Names are subject to common control and that consolidation in one complaint would be fair and equitable to all parties.

7. Discussion and Findings

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names the Complainant must prove that:

(i) the Domain Names are 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 Domain Names; and

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

A. Identical or Confusingly Similar

Leaving aside the “.com” suffix (and, in one case, hyphens), that may be ignored when assessing identity and confusing similarity for the purposes of paragraph 4(a)(i) of the Policy, the Domain Names all comprise the word “Legoland” together with generic or non-distinctive terms such as “hats”, “leases”, “fishing” and “rides”. These additional terms do not detract from the distinctiveness of the LEGOLAND mark included in full in the Domain Names. Accordingly, the Panel considers that the Domain Names are each confusingly similar to the mark LEGOLAND in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant maintains that it has not given any license or other authority to the Respondents to use the LEGO or LEGOLAND trademarks and that it is obviously the notoriety of the trademarks that motivated the Respondents to register the Domain Names. Furthermore, the Respondents are not using the Domain Names for a bona fide offering of goods or services but are rather using them to direct Internet users to pages of sponsored links that include websites offering Lego products for sale.

In the circumstances, the Panel is satisfied that the Complainant has made out a strong prima facie case that the Respondents have no rights or legitimate interests in the Domain Names. The Respondents have chosen not to respond to the Complaint or to make any attempt to answer this prima facie case.

Accordingly, the Panel finds that the Respondents have no rights or legitimate interests in the Domain Names.

C. Registered and Used in Bad Faith

The Panel considers it self-evident that the Respondents must have had the Complainant's LEGO and LEGOLAND trademarks in mind when they registered the Domain Names given their fame and notoriety. In view of the Panel's finding that the Respondents have no rights or legitimate interests in the Domain Names, and the notoriety of the trademarks, it follows that the Domain Names were registered by the Respondents in bad faith in full knowledge of the existence of the Complainant’s trademarks.

The Panel considers that the Respondents' use of the Domain Names for websites comprising sponsored links, including websites offering the Complainant's products for sale, amounts to the exploitation of the Complainant's trademarks with a view to commercial gain and to paradigm bad faith use for the purposes of the Policy, particularly with regard to paragraph 4(b)(iv) of the Policy.

In the circumstances, the Panel finds that the Domain Names were registered and are being used in bad faith.

8. 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 names: <legolandapparel.com>; <legolandboatrentals.com>; <legolandclothes.com>; <legolandfishingcharters.com>; <legolandfishing.com>; <legolandhats.com>; <legolandleases.com>; <legolandparking.com>; <legolandrealestate.com>; <legolandrealty.com>; <lego-land-rentals.com>; <legolandrestaurants.com>; <legolandrides.com>; <legolandswimwear.com>; <legolandtransportation.com>; <legolandtrip.com>; <legolandtrips.com>, be transferred to the Complainant.

Ian Lowe
Sole Panelist
Date: December 28, 2012

 

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