Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services AB, Sweden.
Respondent is World Internet Authority of Queensland, Australia.
The disputed domain names <germanlego.com>, <legogiraffe.com>, <legogiraffepenis.com>, and <legopenis.com> are all registered with GoDaddy.com Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2009. On October 30, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On October 30, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant of all the four disputed domain names 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 Respondent of the Complaint, and the proceedings commenced on November 4, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2009. The Response was filed with the Center on November 4, 2009.
The Center appointed Richard G. Lyon as the sole panelist in this matter on December 1, 2009. The Panel finds that it was properly constituted and has jurisdiction over this proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant and its affiliated companies manufacture and sell construction toys and other products that are branded under the name LEGO. Complainant holds scores of trademarks registered with governmental authorities around the world that contain the word LEGO as their principal feature, and alleges continuous and substantial use of the mark since as early as 1953. Complainant has submitted evidence that the LEGO mark and brand are recognized and associated with Complainant around the world to the point of reaching the status of “famous” marks.
On August 25, 2009, the news agency Reuters published an article on its website that discussed a LEGO giraffe model located outside Complainant's facility in Berlin, Germany. The giraffe's tail was made up of 15,000 LEGO bricks. The article contained an error, stating incorrectly that the giraffe's penis (instead of its tail) had been stolen repeatedly by tourists.
Respondent registered the disputed domain names on August 25, 2009. Each disputed domain name resolved to a one-page site with a symbol, the domain name WorldInternetAuthority.com in bolded large type, and a button entitled “donate” with icons for major credit cards immediately below.
Complainant's representative contacted Respondent by letter dated October 8, 2009, explaining Complainant's trademark rights and requesting transfer of the disputed domain names to Complainant “with immediate effect.” Respondent replied by email on October 10, 2009, with the following sentence “Where is the violation?” Complainant answered this email on October 12, 2009, listing some particulars. Respondent replied the same day, stating “It is now out of our hands!!! World Internet Authority.”
Complainant contends as follows:
Complainant holds rights in its LEGO marks by reason of its many trademark registrations and continuous and prominent use of the marks in commerce for many years. As “lego” is the dominant feature of each of the disputed domain names, each is confusingly similar to a mark in which Complainant holds rights.
Respondent holds no registered or other trademarks or trade names that incorporate the word “lego”. Complainant has not given Respondent authority to use its mark and it never had a business relationship with Respondent. LEGO is a famous trademark worldwide; Respondent surely must have been aware of it. The fact that Respondent registered the dispute domain names on the same date as this article together with the inclusion of the word “penis” in two of the disputed domain names, “giraffe” in two, and “german” in the other provides convincing evidence that Respondent was aware of Complainant and its marks when it registered the disputed domain names. Respondent's use of the disputed domain names is not legitimate under the Policy.
For these same reasons Respondent registered and has been using the disputed domain name in bad faith. The inclusion of the “donate” button on the site to which each of the disputed domain names resolves provides evidence that Respondent registered and is using the disputed domain names intentionally to attract, for its commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainant's marks to the source, sponsorship, affiliation or endorsement with its website. Under paragraph 4(b)(iv) of the Policy, this is proof of registration and use in bad faith.
Respondent contends as follows:
Complainant had no trademarks for the “string[s] of letters” or word combinations that make up the disputed domain names. “Complainant has no rights to the disputed domain names until [it makes] a respectable donation to Respondent.”
Respondent was never a competitor of Complainant until Reuters released its article on the Berlin model.
Complainant has alleged and proven a textbook instance of cybersquatting.
Complainant has worldwide rights in its LEGO marks with the only differences between those marks and the disputed domain names are the addition of the top level identifier .com and the addition of common words. When the dominant feature of the disputed domain names includes Complainant's mark, adding other common words does not obviate confusing similarity, all the more so when, as here, the mark is distinctive and famous, and the common words relate closely to Complainant's products or activities (here the publicity surrounding Complainant's exhibit in Berlin). A top level identifier is of no moment in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy.
Complainant did not authorize Respondent to use its marks and there is no evidence that Respondent is or has been commonly known, individually or commercially, by the LEGO name. Respondent has failed to come forward with any evidence of a right or legitimate interest in the mark, and mere registration of the disputed domain name or using it in a commercial website does not by itself confer a right or legitimate interest.
In the response, Respondent acknowledges that it registered the disputed domain names after reading the Reuters article, with its anatomical error, on the LEGO Berlin exhibit. That acknowledgment establishes that Respondent knew of Complainant, knew of Complainant's mark, and selected it for inclusion in the disputed domain names to take advantage of the mark by attracting Internet users who might be seeking Complainant. Respondent's use of the disputed domain names is undeniably commercial and it has provided no evidence of charitable or other noncommercial activities. Even if Respondent had provided such evidence, there is still nothing in the record to indicate that Respondent has the right to use Complainant's mark to promote such activities. Bad faith in registration and use of the disputed domain names is obvious.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <germanlego.com>, <legogiraffe.com>, <legogiraffepenis.com>, and <legopenis.com> be transferred to Complainant.
Richard G. Lyon
Dated: December 3, 2009