World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Wesley Pals

Case No. D2014-0336

1. The Parties

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

The Respondent is Wesley Pals of Sussex, Wisconsin, United States of America.

2. The Domain Name and Registrar

The disputed domain name <legobucket.com> 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 March 5, 2014. On March 5, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 5, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is 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 Respondent of the Complaint, and the proceedings commenced on March 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 28, 2014.

The Center appointed José Pio Tamassia Santos as the sole panelist in this matter on April 4, 2014. 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

4.1. The Complainant is the owner of LEGO, and all other trademarks used in connection with the famous LEGO brands of construction toys and other LEGO branded products. The Complainant’s licensees

are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights, in the United States of America (“U.S.”) and elsewhere.

4.2. The Complainant and its licensees (collectively “the LEGO Group of Companies or the LEGO Group”), through their predecessors, commenced use of the LEGO mark in the U.S. during 1953, to identify construction toys made and sold by them. Over the years, the business of making and selling LEGO branded toys has grown remarkably. By way of example, the revenue for the LEGO Group in 2012, was almost USD 2.9 billion. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in the United States.

4.3. The Complainant is also the owner of more than 2400 domain names containing the LEGO mark. It is the strict policy of the Complainant that all domain names containing the word “lego” should be owned by the Complainant.

4.4. The trademark LEGO is among the best-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials. Indeed, the LEGO trademark and brand have been recognized as being famous.

4.5. The Complainant has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. The LEGO Group also maintains an extensive web site under the domain name <lego.com>. Thus, the protection for LEGO goes far beyond toys and goods similar to toys.

4.6. Before starting the present proceeding, the Complainant made some efforts to resolve this matter amicably. On September 30, 2013, the Complainant sent a cease-and-desist letter to the Respondent on the basis of its trademark rights. The cease-and-desist letter requested the Respondent to transfer the disputed domain name offering the reimburse of the out of pocket expenses the registrar may charge for the transfer and the registration fee paid for the Domain Name. The Respondent never replied to the Complainant’s cease-and-desist letter despite several reminders.

5. Parties’ Contentions

A. Complainant

5.1. The Complainant asserts that it is the owner of LEGO, and all other trademarks used in connection with the famous LEGO brands of toys construction and other LEGO branded products.

5.2. The Complainant alleges that the licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights, in the U.S. and elsewhere. The Complainant and its licensees, through their predecessors, commenced use of the LEGO mark in the U.S. during 1953, to identify construction toys made and sold by them. Over the years, the business of making and selling LEGO branded toys has grown remarkably.

5.3. The Complainant states that it has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in the U.S.

5.4. The Complainant informs that it is also the owner of more than 2,400 domain names containing the LEGO mark because it is the strict policy of the Complainant that all domain names containing the word “lego” should be owned by the Complainant.

5.5. The Complainant asserts that the trademark LEGO is among the best-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials. Indeed, the LEGO trademark and brand have been recognized as being famous.

5.6. The Complainant states that the mark LEGO is in possession of substantial inherent and acquired distinctiveness. In light of this, the awareness of the trademark LEGO is considered in the whole Community to be significant. According to the provisions of Article 6bis of the Paris Convention for protection of Industrial Property (“PC”), confirmed and extended by Article 16.2 and Article 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”), the statute of a well-known trademark provides the owner of such a trademark with the right to prevent any use of the well-known trademark or a confusingly similar denomination in connection with any products or services (i.e. regardless of the list of the products and services for which the trademark is registered). Thus, the protection for LEGO goes far beyond toys and goods similar to toys.

5.7 On September 30, 2013 the Complainant sent a cease-and-desist letter to the Respondent on the basis of its trademark rights. The Respondent never replied to the Complainant’s cease-and-desist letter despite several reminders. As no amicable settlement could be found, the Complainant had no other choice but to initiate an UDRP procedure against the Respondent in order to obtain the transfer of the disputed domain name.

5.8. The Complainant contends that the disputed domain name is confusingly similar to its trademark, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

6.1. Paragraph 4(a) of the Policy provides specified remedies to trademark owners against registrants of domain names where the owner of the mark (the Complainant) proves each of the following elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of disputed the domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

6.2. The Complainant has the burden of proof, by a preponderance of the evidence, in respect to each element in paragraph 4(a) of the Policy.

6.3. The Respondent, having failed to respond in the present proceeding, is in default, and in accordance with paragraph 14(b) of the Rules, “the panel shall draw such inferences […] as it considers appropriate”.

A. Identical or Confusingly Similar

6.4. As shown by the Complainant the dominant part of the domain name <legobucket.com> comprises the mark LEGO, which is identical to the registered trademark LEGO, which has been registered by the Complainant as trademarks in numerous countries all over the world including the U.S.

6.5. In this sense, the addition of the generic Top-Level Domain (gTLD) “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to determine identity or confusing similarity between the trademark and the disputed domain name.

6.6. Thus, anyone who sees the disputed 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. With reference to the reputation of the trademark LEGO there is a considerable risk that the trade public will perceive the disputed domain name either as a domain name owned by the Complainant or that there is some kind of commercial relation with the Complainant.

6.7. As a matter of fact the Complainant has several products named “LEGO Creative Bucket” and the disputed domain name is closely associated with the Complainant’s products.

6.8. Summarizing all the facts presented, the Complainant is the owner of the well-known trademark LEGO. The disputed domain name is clearly confusingly similar to the Complainants registered trademark LEGO. The addition of the word “bucket” does not detract from the overall impression and the disputed domain name must therefore be considered to be confusingly similar with the Complainant’s trademark. The first element of the Policy, therefore, has been met.

B. Rights or Legitimate Interests

6.9. According to paragraph 4(c) of the Policy, the burden of demonstrating the Respondent lacks rights or legitimate interests rests with the Complainant.

6.10. The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. Nor has the Complainant found anything that would suggest that the Respondent has been using LEGO in any other way that would give it any legitimate rights in the name. Consequently the Respondent may not claim any rights established by common usage.

6.11. The Complainant ensures that no license or authorization of any other kind has been given by the

Complainant to the Respondent to use the trademark LEGO.

6.12. The Complainant cites Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055, in wich the panel stated that, “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent.”

6.13. Additionally the Complainant alleges that the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. This was stated by the panel as a relevant factor in Dr. Ing. h.c. F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312.

6.14. The Respondent registered the disputed domain name on August 28, 2013. The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the domain name. It is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in the name LEGO at the time of the registration.

6.15. Taking into account all the facts presented, the Respondent cannot claim to have been using LEGO, without being aware of the Complainant’s rights to it. In this sense the Respondent’s interests cannot be legitimate. LEGO is a famous trademark worldwide and in Aktiengesellschaft v New York TV Tickets Inc. , WIPO Case No. D2001-1314, Deutsche Bank it was established that any use of such a trademark in a domain name would likely violate the rights of the trademark owner. The panel stated that “given the notoriety of the Complainant’s Deutsche Bank Mark, any use which the Respondent would make of any domain name, as here, that incorporated the Complainant’s Deutsche Bank Mark, or one confusingly similar thereto, would likely violate the exclusive trademark rights which the Complainant has long held in its mark”.

6.16. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Instead the Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic and income through an online shop linking to Amazon.com, Toysrus.com, Walmart.com etc. Once visitors are redirected to Amazon.com and other similar websites as in this case, several of the Complainant’s competitors’ products are being offered for sale. By this, the Respondent is using the LEGO trademark and misleading Internet users to commercial web sites and consequently, the Respondent is tarnishing the trademark LEGO.

6.17. Finally the Complainant reminds the Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055, where the panel stated that, “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent.”

6.18. Therefore the Panel, for all the above reasons and in line with the views in all the UDRP decisions above, concludes that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

6.19. Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:”

(i) 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 the owner of the trademark or service mark or to a competitor of that the complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the domain name; or

(ii) that 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

(iii) that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 the respondent’s website or location or of a product or service on the respondent’s web site or location.

6.20. In regard to registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark LEGO is clearly established, and the Panel finds that the Respondent knew or should have known of the Complainant’s trademark because the disputed domain name incorporates the LEGO mark in its entirety, adding the word “bucket”, most likely referring to the Complainant’s “LEGO Creative Bucket”.

6.21. The awareness of the trademark LEGO is considered, in general to be significant and substantial. The number of third party domain name registrations comprising the trademark LEGO in combination with other words has skyrocketed the last years as shown by the Complainant.

6.22. The Complainant first tried to contact the Respondent on September 30, 2013, through a cease and desist letter. The Complainant advised the Respondent that the unauthorized use of the LEGO trademark within the disputed domain name violated the Complainant’s rights in said trademark. The Complainant requested a voluntary transfer of the disputed domain name and offered compensation for the expenses of registration and transfer fees. Two additional reminders were sent on October 8 and October 15, 2013. Since the efforts of trying to solve the matter amicably were unsuccessful the Complainant chose to file a complaint according to the UDRP proceeding.

6.23. As the Complainant mentioned in the Complaint the website connected to the disputed domain name contains a disclaimer on the bottom of the starting page. However, noting the consensus view in accordance to paragraph 3.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the existence of a disclaimer cannot by itself cure bad faith, when bad faith has been established by other factors. In this case there are no other factors of good faith.

6.24. All the facts presented prove that there is no connection between the Respondent and the Complainant. By using the disputed domain name the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain but is misleadingly diverting consumers for his own commercial gain, within the meaning of paragraph 4(b)(iv) of the Policy.

6.25. Under these circumstances, the Panel finds that the Complainant has presented evidence to satisfy its burden of proof that the Respondent has registered and is using the disputed domain name in bad faith.

6.26. The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.

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 <legobucket.com> be transferred to the Complainant.

José Pio Tamassia Santos
Sole Panelist
Date: April 18, 2014

 

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