World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Robert Grumet

Case No. D2012-2440

1. The Parties

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

The Respondent is Robert Grumet of Miami, United States of America (“US”), self - represented.

2. The Domain Name and Registrar

The disputed domain name <legodoc.com> is registered with Brandon Gray Internet Services Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2012. On December 14, 2012, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the disputed domain name. On December 20, and December 24, 2012, the Center sent by e-mail a Registrar Verification Reminder. On December 27, 2012, the Registrar transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and disclosing registrant and contact information for the disputed domain name which differed from the contact information in the Complaint. The Center sent an e-mail communication to the Complainant on January 7, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 7, 2013.

The Center verified that the Complaint together with the amendment to 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 January 8, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 28, 2013. The Response was filed with the Center on January 25, 2013.

The Center appointed Christian Schalk as the sole panelist in this matter on February 8, 2013. 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.

The Panel has reviewed the record and confirms the Complaint’s compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the Rules. The language of the proceedings is English.

4. Factual Background

The Complainant is one of the most well-known manufacturers of construction toys in the world. It markets its products already for decades in many countries of the world. In 2009, the Complainant sold its products under the trademark LEGO through its subsidiaries and branches in more than 130 countries. In accordance with a survey of Superbrands UK, the Complainant’s LEGO trademark has been ranked as number 8 of the most famous trademarks and brands in the world.

In the last decade, the Complainant has expanded its use of the LEGO trademark also to computer hardware and software, books, videos and computer controlled robotic construction sets.

The Complainant owns trademark rights in the term LEGO as a word mark in more than hundred countries, for instance,

- Danish Trademark No. 604-1954, LEGO, Registration date May 1, 1954, covering goods in Int. class 28;

- German Trademark No. 695.755, LEGO, Registration date October 10, 1956, covering goods in Int. class 28;

- Finland Trademark No. 31.063, LEGO, Registration date March 25, 1957, covering goods in Int. class 28;

- Australian Trademark No. B 129.258, LEGO, Registration date January 16, 1960, covering goods in Int. class 28;

- European Community Trademark No. 39800, LEGO, Registration date October 5, 1998, covering goods and services in Int. classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41, 42;

- United States Trademark Registration No. 1.018.875, LEGO, Registration date August 26, 1975, covering goods in Int. class 28;

Several Panels in UDRP cases have considered the Complainant’s LEGO trademark as a well-known trademark (see, for instance, LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840; LEGO Juris A/S v. Domain Administrator, WIPO Case No. D2010-1260).

The Complainant is also the owner of more than 1,000 domain names containing the term LEGO, among these <lego.com> under which it maintains an extensive website. This website contains several theme related sub-websites such as “Lego Universe”, “Lego City” or “Lego Friends”. These sub-websites are linked with the main entrance page through a system of third level domains.

The disputed domain name was registered on June 29, 2012. On December 11, 2012, it resolved to a website containing a list of links in a Scandinavian language. Some links apparently provide access to online games (e.g. “Spela Clone Wars” and “Spela spel på Spelo.se”), to services offering IT solutions and to the Complainant’s products (“Fynda Lego billigt” which means “find Lego at a low price”).

On January 8, 2013, a screenshot of the website to which the disputed domain name resolved shows that the disputed domain name was linked to a website with links in German and English language. This links apparently provide access to websites offering among others online games, language courses and access to offers of an insurance company.

The Complainant sent a cease and desist letter to the Respondent in August 29, 2012 and e-mail reminders on September 6, 2012, September 12, 2012, September 26, 2012 and on October 23, 2012. The Respondent did not show any reaction to them.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant argues in this context, that the dominant part of the disputed domain name comprises the word “Lego” which is identical to the Complainant’s trademark registration for the term “Lego”. As far as the suffix “doc” is concerned, the Complainant contends that it will not have any impact on the overall impression of the dominant part of the name LEGO which is instantly recognizable as a world famous trademark. In this context, the Complainant cites Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488 to support its arguments.

The Complainant asserts further by using the Complainant’s LEGO trademark as dominant part of the disputed domain name, the Respondent exploits the goodwill and the image of the Complainant’s trademark, which may result in dilution and other damage for this trademark.

The Complainant believes also that the well-known character of the LEGO trademark and Art. 6bis of the Paris Convention for the protection of Industrial Property in connection with Art. 16.2 and Art. 16.3 of TRIPS confer the owner of such a trademark the right to prevent any use of its trademark in connection with any products or services which means regardless of the list of the products and services for which the trademark is registered.

The Complainant alleges also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant argues that the Complainant does not own any registered trademark or trade names corresponding to the disputed domain name and also does not have anything that would give him any rights in the disputed domain name.

The Complainant contends also that the Respondent has neither a license nor any other authorization given by the Complainant to use its trademark LEGO. In addition, the Respondent is also not an authorized dealer of the Complainant’s products and had never a business relationship with the Complainant. The Complainant believes further that the Respondent was aware of the Complainant’s LEGO trademark when it registered the disputed domain name.

Furthermore, the Complainant asserts that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services because the Respondent has intentionally chosen the disputed domain name in order to generate traffic and income through a parked pay-per-click site. Therefore, the Complainant concludes that the Respondent is using the Complainant’s LEGO trademark in order to mislead Internet users to commercial websites and therefore, the Respondent is tarnishing the Complainant’s LEGO trademark. In this context, the Complainant argues, that the Respondent is trying to sponge off the Complainant’s world famous trademark because rights or legitimate interests cannot be created where the Respondent would not choose such a name unless it was seeking to create an impression of association with the Complainant. In this context, the Complainant cites Drexel University v. David Brouda, WIPO Case No. D2001-0067, in order to support its arguments.

Moreover, the Complainant alleges that the disputed domain name was registered and is being used in bad faith. In this context, the Complainant argues that the Respondent must have been aware of the Complainant’s trademark in LEGO given its high reputation and its notoriety.

The fact that the Respondent did not reply to the Complainant’s cease and desist letters and its subsequent reminders is for the Complainant a clear indication of bad faith behaviour. In this context, the Complainant cites News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; and America Online Inc., v. Antonio R. Diaz, WIPO Case No. D2000-1460, to support its arguments.

The Complainant believes further, that the connection of the disputed domain name to a parked pay-per-click website is also a factor indicating bad faith since the disputed domain name is used to intentionally attempt to attract, for commercial gain, Internet users to websites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its websites. The Complainant argues in this context that it is irrelevant for the finding of bad faith in this case whether the Respondent has influenced what link should be included on the site and whether the Respondent is getting revenue for the page itself, since the Respondent has at all times been in contractual control of the content of the website at the disputed domain name and had the power to instruct the Registrant to remove the parking page. In this context, the Complainant cites Villeroy & Boch AG vs. Mario Pingerna, WIPO Case No. D2007-1912 in order to support its arguments.

B. Respondent

The Respondent requests to deny the remedies requested by the Complaint.

The Respondent describes himself as a retired dentist. He asserts that the term “Legodoc” is a nickname, which was attributed to him when he attended dental school in 1971 and to which he has been referred to as such by friends, family, patients and colleagues.

The Respondent argues further that the disputed domain name was obtained legally and properly without any motivation or intent to deceive anyone nor to usurp any of the Complainant’s business or goodwill. The Respondent explains that there is no website running and that none is contemplated at the moment and if so it would be to share with his family and friends pictures and reminisces of his travels.

The Respondent also denies that he uses the disputed domain name to generate income and alleges that he even does not know what a pay for click is, that he has never received any income or benefit from the disputed domain name and that he has not knowingly authorized such use. The Respondent argues also that none of the sponsored links have anything to do with the toys and are therefore, are not competitive with the Complainant.

The Respondent explains also that he received only one cease and desist letter and that was when he was on an extended trip. When he became aware of it, he was unable to respond prior to receiving the Complaint.

The Respondent believes further that the term “Lego” has been used and referred to the term “let go” because Lego has acquired secondary meaning as a slang word for such term. Thus, his nickname is the short and sweet slang for “let it go doctor” which has been used to call him as a doctor and not as a toy or toy manufacturer. Therefore, the Complainant’s attempt to usurp the service mark “Legodoc” would lead to confusion as the Respondent has been openly and continually known as “Legodoc” for 42 years.

In this context, the Respondent refers also to the pending US trademark application for LEGOBOX for “exchange services, namely, bartering of goods for others” and that the US Patent and Trademark Office has not found such mark confusingly similar to any of the Complainant’s trademarks.

The Respondent believes also that a reasonably prudent purchaser of the Complainant’s goods would never confuse the service of the Respondent (dentistry) with the Complainant’s goods.

The Respondent argues further that the e-mail address he uses for over 20 years includes the term “Legodoc”. In addition, the name of his boat is “Legodoc” since 1976.

The Respondent alleges further that the disputed domain name has not been registered in bad faith and is also not used in bad faith. It was neither registered for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant, or to anyone else nor to prevent the Complainant from reflecting its mark.

6. Discussion and Findings

The Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law it deems applicable (paragraph 15(a) of the Rules). Pursuant to paragraph 4(a) of the Policy, the domain name can be transferred only where the Complainant has proven that each of the following three elements is present:

(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 Respondent has 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.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established trademark rights in the term LEGO. The disputed domain name is not identical to the Complainant’s mark, however, the Panel finds that the domain name is confusingly similar to the Complainant’s trademark. In accordance with many decisions rendered under the Policy, the addition of descriptive terms to a trademark is generally not a distinguishing feature (see Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis, WIPO Case No. D2000-1807; Bellsouth Intellectual Property Corporation v. Henry Chan, WIPO Case No. D2004-0550; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims, WIPO Case No. D2000-0819; Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0565 and Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0624 and Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002.)

In this case, the term “doc” is among others a common abbreviation for the term “document” as well as for the term “doctor”. However, given the notoriety of the Complainant and its products which are well known worldwide and the fact that the Complainant markets its different ranges of products under the LEGO trademark in connection with descriptive terms (for instance, “Lego City”, Lego Friends” or “Lego Universe”) it is more than likely that the disputed domain name would be understood by Internet users (the Complainant’s main customers are children) finding <legodoc.com> on search engines or elsewhere as providing a link to a website belonging to the Complainant or least being sponsored by the Complainant and thereby increases the likelihood of confusion (see also Hoffmann-La Roche AG v. Anna Valdieri, WIPO Case No. D2007-0956; Koninklijke Philips Electronics N.V. v. Anpol, WIPO Case No. D2001-1151, and Koninklijke Philips Electronics N.V. vs. Jaaska (or Jääskä) Kaketti, WIPO Case No. D2001-0231). For instance, the term “Legodoc” could stand for the Complainant’s construction toy for a hospital and ambulance cars. It could also resolve to a website where customers could download constructions plans for the Complainant’s toys which from time to time get lost not only in households of little children.

The “.com” suffix in the disputed domain name does not affect the determination that the disputed domain name is confusingly similar with LEGO in which the Complainant has trademark rights (see also Compagnie Générale des Etablissements Michelin v. Trending, WIPO Case No. D2010-0484; Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936 ; Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan, WIPO Case No. D2001-0615 and cases cited therein).

For all these reasons, the Panel finds that the Complainant has fulfilled the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Based on the submissions and materials filed in this case, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name for the following reasons:

The Respondent has not provided any evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. Especially, the Panel finds that there is no sufficient evidence that the Respondent is commonly known by the disputed domain name. The Respondent is also neither affiliated with the Complainant nor has the Complainant granted the Respondent a license to use its trademark.

Furthermore, the Respondent does not currently use the disputed domain name in order to resolve it to a website where he shares his travel experiences with his family and friends. Such noncommercial use could constitute under certain circumstances a legitimate interest under the Policy. It could be the same if he would have provided information or advise on dental medicine. However, since there is no such website, there is no need to discuss whether such use would meet the conditions for finding for legitimate interest in this specific case.

In addition, the Respondent has also not brought any evidence before the Panel that the term “lego” is commonly known as a slang word for “let it go”. Given the character of the UDRP as a fast track procedure focused on specific legal conflicts regarding domain names, the Panel cannot carry out extensive searches on the allegation raised by the parties. Therefore, the Panel has to rely mainly on the evidence provided by the parties. In addition, the Panel can carry out its own researches from his desk but only in a limited manner. In this context, the Panel may use common online sources like, for instance, search engines of Google, Yahoo or Bing or the trademark registries as far as they are available online.

When typing in “lego let it go”, most hits are links, which have some relation with the Complainant and its products. As a result of the Panel’s search in Google’s search engine, one link has been revealed “(www.urbandictionary.com/define.php?term lego)” where it is written:

”In a nod to kids' high-tech skills, it also offers LEGO kits to build PC- programmable robots (including Spybotics and Mindstorms) Lego- a slang term for let's go“.

When clicking on the above mentioned link, there are first extensive information on the Complainant and its products. Especially, it is said, that “LEGO's brand recognition is the same as that of the Disney Company”

Only on the bottom of this website, it is mentioned that this slang term is used by a singer called Trey Songz.

When clicking on the term “similar pages“ which is located next to the above mentioned link, the following information appear:

“The most (….) way to say "Let's Go." Abbreviations are supposed to actually ...(...). Lego is a building block for children.”

The Panel wrote also the term “legodoc” in the search field of the Urban dictionary. The following information appeared: “legodoc isn't defined yet”. Then, the Panel searched for the term “legodoc” in the search engine of Google. Only links appeared which have a strong relation to the Complainant’s products.

The Panel has searched in other online dictionaries like those of Oxford and Collins and “www.leo.org”. Also there, the searches revealed that the term “Lego” is linked to its meaning in Danish- and Latin language and especially to the Complainant and its products.

For all this, the Panel finds that there is no sufficient evidence for the Respondent’s allegations that the term “Lego” has a secondary meaning as a slang word, which should be so commonly known that it could be confused with the Complainant LEGO trademark.

Also the pending US trademark application for LEGOBOX, which has been mentioned by the Respondent is not a valid argument for registering the disputed domain name. The Panel has carried out searches as to the prosecution history on the website of the US Patent and Trademark Office. The searches revealed that the application for registration of this trademark has been filed only end of November 2012 and that the examination procedure has not yet started since this trademark application has even not yet been assigned to an examining attorney. Therefore, also the opposition period has not yet started where the Complainant could oppose this trademark application. Therefore, it is still too early to say that the LEGOBOX trademark and the Complainant’s trademarks co-exist. Moreover, when searching for the term LEGOBOX in the Google search engine, there are only links for the Complainant’s products and especially for plastic boxes where the Complainant’s products can be stored.

The website which is linked with the disputed domain name shows a number of apparently commercial links. In order to get their links placed on a certain website, their owner’s typically pay a certain amount to the Registrar and to either the domain name owner or to a third person each time that someone clicks on their links.

Depending on the frequency of the use of such links by Internet users getting directed to the relevant website, such links can generate a considerable amount of money to be shared between the concerned registrar and either the domain name owner or a third person. Given the reputation of the Complainant’s trademark, the Panel believes that the only reason why the disputed domain name has been directed to a website with pay-per-click links was, to capitalize on the reputation and goodwill established by the Complainant in order to redirect Internet traffic intended for the Complainant away from it to the website to which the disputed domain name resolves to create income.

The Respondent as owner of the disputed domain name can control the use of the disputed domain name. Therefore, he has the responsibility on how the disputed domain name is used whether by himself or by a third party. The disputed domain name has been registered on June 29, 2012. Even if the Respondent did not actively link his domain name to a pay-per-click website and even if he does not receive any profits from this website, he should have supervised his domain name to ensure that it is not used for illegitimate purposes.

In this context, the Panel finds it at least strange that the disputed domain name has been linked to two different pay-per-click websites: first on December 11, 2012, which was after the Respondent had received the Complainant’s cease and desist letters and several reminders, and second on January 8, 2013, which was the day the Complaint had been officially notified by the Center to the Respondent.

The Panel has therefore serious doubts as to the legitimacy of the Respondent’s registration of the disputed domain name, and finds for the above reasons that the requirement of paragraph 4(a)(ii) of the Policy is also met.

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent registered and is using the domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). The Policy, paragraph 4(b) sets forth four non-exclusive circumstances, which are evidence of bad faith registration and use of domain names:

(1) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(2) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(3) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(4) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location of a product.

The Respondent states that he had no motivation at all or intent to deceive anyone and also did not want to usurp any of the Complainant’s business or goodwill. He also denies that he uses the disputed domain name to generate income. In this context, he alleges that he even does not know what a pay for click is, that he has never received any income or benefit from the disputed domain name and that he has not knowingly authorized such use. The Respondent argues also that none of the sponsored links have anything to do with the Complainant’s toys and are therefore, are not competitive with the Complainant.

The Respondent explains further that the disputed domain name was neither registered for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant, or to anyone else nor to prevent the Complainant from reflecting its mark.

However, according to the materials brought before the Panel, the Panel finds that the disputed domain name has been registered and is being used by the Respondent in bad faith in accordance with paragraph 4(b)(iv) of the Policy for the following reasons:

The Panel is aware of the fact that in real life and especially when downloading products from the Internet (for instance, computer programs, online games etc.), Internet users get confronted with a long documentation with legal terms and conditions. Often, they are difficult to read and to understand even in the real world’s hardcopy format and therefore, Internet users tend to simply click on the “acceptance” bottom to overcome this “annoying hurdle”.

Therefore, it may well be that the Respondent did not read carefully enough the terms and conditions of the Registration Agreement between him and the Registrar and thus, he was not aware that the Registrar had the right to connect the disputed domain name with pay-per-click websites. As a consequence, it may well be also that the Respondent had no knowledge on the content of the website and had not received any money or discount from the website.

However, even if the Respondent did not read carefully the terms and conditions of the agreement with the Registrar of the disputed domain name, he was nevertheless bound by these conditions and accepted certain responsibilities regarding the disputed domain name. Otherwise, the Registrar would have never registered the disputed domain name on behalf of the Respondent.

The registration agreement states also that the Respondent agrees that in case he would use so-called Free Services, that the Registrar may display advertising in “conjunction therewith through the use of pop-up or pop-under browser windows, banner advertisements, audio or other similar means“.

In this context, the Respondent has undertook also that he warrants that the registration of the disputed domain name would not infringe third parties trademark rights (“representations and warranties: you represent that, to the best of your knowledge and belief, neither the registration of a domain name nor the manner in which it is directly or indirectly used nor the use of other of the service(s) infringes the legal rights of a third party “).

It is a principle considered under prior UDRP decisions (see, for instance, Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022) and under the Policy (see paragraph 2), that a domain name registrant represents and warrants to the concerned registrar that, to its knowledge the registration of the disputed domain name will not infringe the rights of any third party.

Given the notoriety of the Complainant and its products, the Panel finds that the Respondent must have been well aware of the Complainant’s trademark and its products when it registered the domain name (see, Liseberg AB v. Administration Local Manage Technical, WIPO Case No. D2003-0864).

As described already in more detail above under Section 6. B. of this Decision, there is no evidence that the term “lego” is understood by the general public mainly as a slang word for “let it go” and therefore, the Respondent would not have come across the Complainant and its products. This could be different under certain circumstances if the Complainant’s trademark would consist only of a rather descriptive term (see for instance, Mariah Media Inc. v. First Place® Internet Inc., WIPO Case No. D2006-1275). However, the Complainant’s construction toys, marketed under the LEGO mark are well known already to several generations of children in many countries of the world and also in the United States where the Respondent lives. Even those who are not children any more become continuously reminded on these products not only by own children or grand children but also by the Complainant’s flagship stores in shopping malls, airports, train stations, book stores or at least by its extensive advertising in the media or in cinemas. Moreover, when writing the term “Lego” in an Internet search engine, the first pages contain links, which are only related to the Complainant and its products. For all this, the Panel believes that the Respondent must have been well aware of the Complainant’s products and rights in its LEGO trademark when he registered the disputed domain name. Registering a domain name which is confusingly similar with one of the most well-known trademarks of the world is a behaviour which constitutes registration of a domain name in bad faith under the Policy.

The Panel finds further that the Respondent is also using the disputed domain name in bad faith in accordance with the Policy.

As stated by Panelists in previous cases, paragraph 4(b)(iv) of the Policy requires the Respondent to intend to attract Internet users “for commercial gain” but this gain does not need to be derived by the Respondent himself. The Respondent cannot infringe the Complainant’s rights with impunity on the basis that it is allowing a third party to reap the profits of its wrongful conduct. The fact that he was apparently not aware of what the Registrar was allowed to do under the Registration Agreement is not sufficient to deny any responsibility for the actions of the Registrar. The Respondent has at all times been in contractual control of the content of the website at the disputed domain name, and has the power to instruct the Registrar to remove the parking page. He cannot evade this responsibility by means of its contractual relationship with the Registrar by arguing that he was not aware of it. Especially, given the notoriety of the Complainant’s LEGO trademark, he must have been aware of the fact that Internet users seeking information about the Complainant’s products would then find themselves at a website upon which goods and services unrelated to the Complainant were advertised (see in this context for instance, Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912 and Owens Corning v. NA, WIPO Case No. D2007-1143). Therefore, it is under the responsibility of the Respondent that the disputed domain name is being used 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 <legodoc.com> be transferred to the Complainant.

Christian Schalk
Sole Panelist
Date: February 25, 2013

 

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