WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Above.com Domain Privacy / Nish Patel (Ready Asset)
Case No. D2013-0261
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Above.com Domain Privacy / Nish Patel (Ready Asset) of Beaumaris, Victoria, Australia and Xiamen, China.
2. The Domain Name and Registrar
The disputed domain name <legoh.com> is registered with Above.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2013. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 12, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 13 and February 15, 2013 providing the registrant and contact information disclosed by the Registrar as well as notifying the formal deficiencies of the Complaint, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed amendments to the Complaint on February 14 and February 15, 2013.
The Center verified that the Complaint together with the amendments 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 February 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 8, 2013.
The Center appointed Jane Lambert as the sole panelist in this matter on March 14, 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.
4. Factual Background
The Lego Group are a group of companies which make and distribute children’s construction kits and toys, run theme parks and offer other goods and services under the LEGO brand in 130 countries. The brand is managed by the Complainant which has registered the word LEGO as a trade mark for those goods and services in many countries. According to Superbrands UK, LEGO is the 8th most famous brand in the world.
The disputed domain name is held by the privacy service, Above.com Domain Privacy of Beaumaris in Australia, on behalf of one Nish Patel who appears to carry on business in the name or style of Ready Asset.
The disputed domain name appears to have been used as the URL for a pay-per-click site which the Panel visited on April 2, 2013. When the Panel visited that site, she saw the following links:
“TUTOR DOCTOR UK
1-to-1 In-Home Private Tutoring. Find a Local Tutor Near You
JOHN LEWIS OFFICIAL SITE
Shop For The Latest Brands Online. Free Delivery On Orders Over £50.
LEGO CITY UNDERCOVER
Exclusive to Wii U. Out March 2013. Watch the Trailer Today!
TOYS FOR ALL AGES
Shop for last-minute toys YouTube recommendations & reviews
RED DIESEL PRICES
Get Today's Red Diesel Prices. Barrel & Bulk Delivery Available.
The Complainant helpfully explains that whenever a visitor clicks on one of those links, the advertiser pays a sum of money which is split between the host and domain name proprietor in accordance with an agreed revenue sharing plan.
5. Parties’ Contentions
The Complainant claims the transfer of the disputed domain name on the following grounds:
- The disputed domain name is identical or confusingly similar to a trade or service mark in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in the disputed domain name; and
- The disputed domain name was registered and is being used in bad faith.
As to the first ground, the Complainant says that the disputed domain name comprises the word mark LEGO and refers to many cases in which the fame of the mark has been recognized. It submits that “the addition of the letter ‘h’ is not relevant and will not have any impact on the overall impression of the dominant part of the name.” It adds that “[a]nyone who sees the Domain Name is bound to mistake it for a name related to the Complainant. The likelihood of confusion includes an obvious association with the trademark of the Complainant.”
In respect of the second ground, the Complainant has found no evidence that the Respondent has any registered trade marks or trade names corresponding to the disputed domain name. Nor has it found anything to suggest that “the Respondent has been using LEGO in any other way that would give them (sic) any legitimate rights in the name.”
On the third ground, the Complainant makes the following submissions in support of its contention that the disputed domain name was registered and is used in bad faith.
It says that the number of domain name registrations comprising the word LEGO has “skyrocketed” in recent years and points to a large number of decisions by way of example. It surmises that “[t]he considerable value and goodwill of the mark LEGO is most likely, a large contribution to this and also what made the Respondent register the Domain Name at issue here.”
Relying on News Group Newspapers Limited and News Network Limited v Momm Amed Ia, WIPO Case No. D2000-1623, Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598 and America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460, the Complainant argues that the Respondent’s failure to respond to the Complainant’s letters before claim of itself betokens registration and use in bad faith.
Under the heading “willful blindness” the Complainant contends that “the generated pay-per-click advertising links related at least in part to the trademark LEGO, at which point the Respondent either turned a blind eye to this use of the Domain Name or else was unwilling disable the advertising revenue generated thereby until this use was placed in issue by the Complainant.”
Finally, the Complainant says that by parking the disputed domain name on a pay-per-click site, the Respondent is using the disputed domain name intentionally to attempt 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 the website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that each of the following elements is present:
(i) The disputed domain name is identical or confusingly similar to a trade mark 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 disputed domain name is confusingly similar to a trade mark in which the Complainant has rights but for reasons that are different from those that have been offered by the Complainant.
She rejects the contentions that “the addition of the letter ‘h’ is not relevant, that it will not have any impact on the “overall impression of the dominant part of the name” or that “anyone who sees the Domain Name is bound to mistake it for a name related to the Complainant” for two reasons.
First, “LEGOH” is a surname. A Google search of the word “LEGOH” revealed a link to one Andre Legoh on Facebook and another to one Darryl Legoh in Linkedin. Had either of those gentlemen (or any other person sharing their surname) registered the disputed domain name for a personal or business website for themselves this application would probably have failed because they could have shown that they had rights and legitimate interests in respect of that domain name.
Secondly, GOH has a meaning. The letters are an abbreviation for the Grand Opera House in Belfast and there is a GOH Ballet Academy in Vancouver. Again, it is possible to contemplate a domain name for a website about those organizations combined with the letters “LE” either as a French definite article or as part of an acronym to which the Complainant could have had no reasonable objection.
Having said that, the Panel has to be astute to the widespread practice of registering domain names that are similar to well-known brands and using such names as URLs for pay-per-click sites in the hope that some Internet users will land on their pages by mistyping the name of the site for which they are looking. The Panel notes that the Respondent had an opportunity to show that he had a right or legitimate interest in the disputed domain name of the kind discussed above and did not take advantage of that opportunity. She also notes that the Respondent has used the disputed domain name for a pay-per-click site. Finally, though a human might not consider LEGOH to be confusingly similar to LEGO, a domain name actuates a computer. So far as a computer is concerned the difference between the two words is only one letter. Taking all those factors into account the Panel concludes that the disputed domain name was probably chosen to catch and exploit traffic that might mistype the word LEGO.
Having reached that conclusion the Panel is satisfied that the first element is present.
B. Rights or Legitimate Interests
The Panel finds that the second element is present though, again, for slightly different reasons than those offered by the Complainant.
Although a complainant has to prove that each of the three probanda is present it cannot be expected to prove a negative. All that can be asked of a complainant is diligently to make enquiries and carry out searches as to whether a respondent has rights or legitimate interests in a disputed domain name. Once it has made those enquires, carried out those searches and found no evidence that the respondent has such rights or interests in the disputed domain name, the burden shifts to the respondent to prove otherwise.
The Panel accepts that there is no evidence that the Respondent has any registered trade mark or trade names corresponding to the disputed domain name. She also accepts that there is no evidence that “the Respondent has been using LEGO in any way that would give [it] any legitimate rights in the name” though she considers that last point to be immaterial since the disputed domain name is LEGOH and not LEGO.
Accordingly the burden of proof shifts to the Respondent. As the Panel has noted above, the Respondent had an opportunity to show that he had some right or a legitimate interest in the disputed domain name and failed to avail himself of that opportunity.
Considering all the evidence available to her, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel finds that the third element is present.
Paragraph 4(b) of the Policy lists a number of circumstances which shall be evidence of registration and use of a domain name in bad faith, one of which is as follows:
“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 or service on your web site or location.”
The Panel has already found the disputed domain name to be confusingly similar to the word mark LEGO, that it has been used as an URL for a pay-per-click site from which the Respondent is likely to derive commercial gain and that the disputed domain name was probably chosen to catch any Internet users that might land on the Respondent’s site by mistake. That is enough to justify a finding of registration and use of the disputed domain name in bad faith.
As for the Complainant’s other arguments, the fact that registrations of words containing the letters LEGO may have skyrocketed is irrelevant because each case has to be considered on its own facts. The Panel agrees that the considerable value of the goodwill of the LEGO mark was the probable reason for the choice of the disputed domain name but she arrived at that conclusion from inferences that she had drawn from the facts of this particular case. Moreover, such conclusion was a statement of the obvious that did not take the case any further forward. The Panel rejects in terms any notion that the fame or reputation of a trade mark entitles it to any special penumbra of protection in the registration of domain names. She also rejects the argument that failing to reply to a letter before claim is of itself an act of bad faith. The authorities cited by the Complainant are very old and can be distinguished on their facts. Finally, the doctrine of willful blindness was of no help in resolving this particular dispute.
It is very tempting to cut corners when presented with a complaint by a business with a well-known trade mark such as LEGO particularly with regard to the probandum of bad faith in registration and use. The Panel repeats the observations that she made in Intesa Sanpaolo S.p.A. v. George Papadakos, WIPO Case No. D2008-1531 that “a panel is required by paragraph 7 of the Rules to be impartial and independent in dealing with the parties. He or she must not assume the worst of a respondent merely because the respondent is an individual and the complainant is a large and powerful bank.”
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 <legoh.com> be transferred to the Complainant.
Date: April 3, 2013