WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. CrimsonLight.com
Case No. D2010-1964
1. The Parties
The Complainant is LEGO Juris A/S of Denmark, represented by Anna Mejlerö of Sweden.
The Respondent is CrimsonLight.com of United States of America.
2. The Domain Name and Registrar
The disputed domain name <legofx.com> (“Domain Name”) is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2010. On November 17, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On November 18, 2010, GoDaddy.com, Inc. 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 November 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 12, 2010. The Center received email communications from the Respondent on November 29, 2010.
The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on January 7, 2011. 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.
At this point the Panel finds it necessary to address the request to dismiss the complaint based on the allegations set forth by the Respondent in the sense that “due to improper handling by WIPO”, the Complaint should be dismissed.
On November 22, 2010, the Respondent was correctly notified of the UDRP Complaint in accordance with the Rules.
On November 29, 2010, the Respondent sent an email to the Arbitration Center stating the following:
“Due to some prior obligations, health issues, and another issue that can't be rescheduled I must ask for additional time. I first move to dismiss this dispute since there is no validity to their accusations and LEGO has shown malicious intent to over 50 domains recently. Also the term LEGO isn't in the use of our name. We use le GOFX.com, with le standing for the word the in French. I move to dismiss this complaint/dispute. If this fails, I am asking for an extension of 30 days due to prior events and circumstances.”
On November 30, 2010 the Arbitration and Mediation Center sent an acknowledgement of receipt and request for comments to both Complainant and Respondent, in the following terms:
“We refer to the Respondent’s request for an extension to file a Response (see attached). Pursuant to paragraph 5(d) of the UDRP Rules, an extension in the due date for the filing of a Response may be granted in “exceptional cases” or by party agreement. Accordingly, the Respondent is requested to provide any evidence or arguments in support of such exceptional circumstances by no later than Friday, December 3, 2010. Further, the Complainant is hereby invited to respond to the Center with any comments on the Respondent’s request, by December 3, 2010. After that date, and regardless of whether we have received the requested comments, the Center will consider the Respondent’s request for extension.”
No response or comment was received from Complainant nor did the Respondent provide any evidence or arguments in support of exceptional circumstances by December 3, 2010 subsequently, the Respondent sent an email to the Center informing that he had yet to receive a response regarding his request for extension.
On December 13, 2010 (being the day immediately following the 20 days provided for under the UDRP Rules for submission of a Response) the Center sent Respondent the Notification of Respondent Default.
In response to the above notification the Respondent again submitted enquires regarding its previous extension request:
In view of the above the Center provided the following response and gave the Respondent a 10 day extension, setting the new Response date to December 24, 2010.
“We acknowledge receipt of your above attached communications of December 11, 2010 and December 13, 2010. Please ignore Center’s previous Notification of Respondent Default email communication of December 13, 2010. We refer to Respondent’s email of November 29, 2010, requesting an extension of the Response due date or 30 days, also refer to below Center’s email communication of November 30, 2010, which we requested the Respondent to provide any evidence or arguments and the Complainant to provide comments by December 3, 2010. In light of the absence of any comments from the parties the Center resets Response due date until December 24, 2010.”
On December 24, 2010,the Respondent then via email stated the following: “Due to the confusion from the Center as well as medical emergencies, I am requesting an additional 15 business days to submit further information.”
Consequently, the Center responded informing the Respondent the following:
“In the absence of submission of any medical certificates, and taking into consideration that the Respondent was already afforded an initial extension to file a Response in this matter, the Center declines the newly requested extension. Respondent may of course submit to the Panel’s assessment any submissions, the admission of which would be at the discretion of the Panel (on appointment). In accordance with the Rules for Uniform Domain Name Dispute Resolution Policy (https://www.wipo.int/amc/en/domains/rules/), we shall now proceed to appoint the Administrative Panel.”
After reviewing the email communications sent by the Center and the Response provided by the Respondent, the Panel considers that no such “improper handling” occurred and that the Center complied with the UDRP Rules set forth in paragraph 5(d). As mentioned in such paragraph “the Provider may, in exceptional cases, extend the period of time for the filing of the response”.
The Respondent requested a 30 day extension of time alleging “prior obligations, health issues and other issues that can not be rescheduled”, however he did not provide evidence of such exceptional circumstances. Therefore, the Panel considers that though the Center failed to respond to the extension request prior to issuing the Respondent default notice, such action was subsequently rectified by providing the Respondent with an extension to file the Response. The Panel also considers that the 10 days granted, provided the Respondent with sufficient time to file a response, given that the Respondent did not provide any medical certificates proving health issues or any other evidence to grant a longer timeframe, and considering that he was notified on November 22, 2010, which in total resulted in a 30 day time period in which to prepare and file a Response to the Complaint.
4. Factual Background
LEGO Juris A/S, based in Denmark 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 and its licensees (collectively “the LEGO Group of Companies or the LEGO Group”), through their predecessors, commenced use of the LEGO mark in the United States during 1953, to identify construction toys made and sold by them. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries.
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.
The LEGO Group 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>.
The Respondent registered the Domain Name on September 12, 2010.
The Respondent provided a Response on December 29, 2010.
5. Parties’ Contentions
The Complainant states that dominant part of the Domain Name <legofx.com> comprises the word “lego”, which is identical to the trademark LEGO, registered by the Complainant as trademark and domain name in numerous countries all over the world. The addition of the suffix “fx” is not relevant and will not have any impact on the overall impression of the dominant part of the name, LEGO. Therefore the Domain Name is confusingly similar to the Complainant’s world famous trademark LEGO.
The Complainant states that it has not found that the Respondent has any registered trademarks or trade names corresponding to the Domain Name. The Complainant has also not found anything that would suggest that the Respondent has been using LEGO in any other way that would give them any legitimate interests or rights in the name. Consequently the Respondent may not claim any rights established by common usage.
In addition the Complainant states that no license or authorization of any other kind, has been given by the Complainant to the Respondent, to use the trademark LEGO. The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. Consequently the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant further states that 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. The Respondent is today not using the 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 to a web site with online sale of products as well as displaying sponsored links. There is no doubt that the Respondent was aware of the rights the Complainant has in the trademark and the value of said trademark, at the point of the registration. There is no connection between the Respondent and the Complainant. By using the 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.
Finally the Complainant states that another factor indicating the Respondent’s use of the Domain Name is the fact that the Respondent also tried to sell the Domain Name to the Complainant for USD 2675 plus 30%. Consequently, by referring to the above-mentioned, the Respondent should be considered to have registered and to be using the Domain Name in bad faith.
The Respondent states that their website is le GOFX.com and follow a long list of domains that have FX in the name. The site is about our FX domains and not about LEGO. They further claim that they have a long and established presence online and offline using the FX domains.
The Respondent states that “le” in French means “the” and “GO” in English promotes activity and motion. In Danish the phonetic way of saying play well together is le go, and this we have combined the multiple languages to come up with le GOFX.com. The Respondent claims that they have combined the name to show motion and to encourage families to play together.
The Respondent informs that clearly identified on every main page and every blog post it clearly states that:
“leGO FX.com is in NO way affiliated with LEGO or any other company. leGO FX.com is a FX BlogTopper site. Lego is the phonetic way to say le go in Danish which translates to play well together in English.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three elements is present:
(i) the domain name registered by the Respondent 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 domain names in question; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
This first element requires that the Complainant demonstrate that (1) it has trademark rights and (2) the disputed domain name is identical or similar to a trademark in which the Complainant has rights
(i) The Panel finds that the Complainant has established that it is the owner of the registered trademark LEGO based on the evidence provided by the Complainant (annex 6 to the Complaint)
(i) The disputed domain name consists of two different words, one consisting of the Complainant’s registered trademark and another of the letters “fx”.
The Panel considers that the addition of the letters ”fx”, added to the Complainant’s trademark is not sufficient to avoid confusion.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The second element requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the domain name in question.
By the terms used in paragraph 4(a) of the Policy it is clear that the overall burden of proof is on the Complainant, however the Policy provides the Respondent means to demonstrate its rights to and legitimate interests in the domain name in responding to a Complaint. If the Respondent does not make use of these means and the Complainant has established a prima facie case under sub paragraph 4(a)(ii), the burden is shifted to the Respondent to prove the contrary.
The Complainant claims that they have not found that the Respondent has any registered trademarks or trade names corresponding to the Domain Name. The Complainant has also not found anything that would suggest that the Respondent has been using LEGO in any other way that would give them any rights or legitimate interests in the Domain Name. Consequently the Respondent may not claim any rights established by common usage.
The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. Further, the Complainant adds that the Respondent is today not using the Domain Name in connection with a bona fide offering of goods or services. Instead the Respondent has intentionally chosen Domain Name based on a registered trademark in order to generate traffic to a web site with online sale of products as well as displaying sponsored links.
Paragraph 4(c) of the Policy contemplates means for the Respondent to demonstrate its rights and legitimate interests. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the Respondents rights or legitimate interests to the domain name.
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In accordance with the Response provided by the Respondent, he claims that the Domain Name is le GOFX.com and follows a long list of domains that have FX in the name. This site is about their FX domains, and not about LEGO.
The Respondent then proceeds to explain the origin of the disputed domain name: Le in French means “the” and “GO” in English promotes activity and motion. In Danish the phonetic way of saying play well together is le go, and by combining all these terms in multiple languages they come up with leGO FX.com. The Respondent further claims that they have combined the name to show motion and to encourage families to play together.
However, after reviewing the mentioned web site, the Panel could not find any mention relating to the promotion of activities nor could one infer from this website that their goal is to encourage families to play together. The only mention is the following “This site is a site dedicated to helping kids play well while building fundamental hand eye coordination”, but this is not sufficient proof to demonstrate that the use of the webpage is for the means mentioned above. From what the Panel could view, the website is merely a global Internet publisher that builds publisher and reader dialog through various social media and blogging formats including several references to “toys”, etc.
Consequently one can not consider that the Respondent has given the Domain Name a bona fide offering of goods or services, since what allegedly is offered on the webpage does not coincide with the Response provided by the Respondent.
The Complainant claimed that the Respondent has never been commonly known by the Domain Name nor has it acquired no trademark or service mark rights. Further more the Respondent itself includes a disclaimer stating that <legofx.com> is in no way affiliated with LEGO or any other company.
Therefore until now the Complainant has been able to prove that the Respondent has no rights or legitimate interests regarding the Domain Name.
Finally, as a possible means to prove rights or legitimate interests to the Domain Name the Respondent can demonstrate the above by proving to the Panel that its making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In this respect, the Respondent has not been able to show the Panel of the legitimate use of the Domain Name. The web site is merely a blog site, in other words a web site that displays in chronological order the postings by one or more individuals and has links to comments on specific postings and also provides the possibility to online buys, including toys.
Furthermore, the blog site refers to all types of toys and its different brands. Maybe had the web site referred to a different topic one could accept the Respondent’s arguments but LEGO is a well famous trademark that is dedicated to the toy industry, consequently it is difficult to believe that the Respondent was giving the Domain Name a fair use, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
The Panel considers that the Respondent has not been able to demonstrate any rights or legitimate interests to the Domain Name and is satisfied that the Complainant has proven the second element, paragraph 4(a) of the Policy and has established a prima facie case that the Respondent has no rights or legitimate interests in said Domain Name.
C. Registered and Used in Bad Faith
This third element requires that the Complainant demonstrate that (1) the domain name has been registered in bad faith and (2) is being used in bad faith.
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
1) The domain name has been registered in bad faith: The Respondent claims that the disputed domain name originated by the combination of multiple languages. “Le in French means the and GO in English promotes activity and motion. In Danish the phonetic way of saying play well together is le go, and this we have combined the multiple languages to come up with leGO FX.com”
The above explanation does not satisfy the Panel as to the registration of the disputed domain name, since it is difficult to comprehend that if their intention was to operate a web site related to toys, why after putting together their Domain Name they did not realize that it was practically identical to a well-known trademark and most probably this would be misleading to the public consumer.
Secondly, as the Respondent claims that they have a series of FX.com registrations, therefore one can only presume that they likely had knowledge of the obligations inherent in a registration agreement.
The Panel considers that it is practically impossible for the Respondent not to have been aware of the existence of the LEGO trademark since it is a well-known trademark.
Furthermore, though they have provided an explanation of the origin of the Domain Name, this explanation has not convinced the Panel that the registration was made in good faith. The webpage does not evince how an Internet user would understand when seeing the Domain Name “Le” is in French, “GO” in English and all together one must understand that in Danish it means play well together.
Consequently the Panel finds that the Domain Name was registered in bad faith.
2) The domain name is being used in bad faith: The Respondent claims that the Domain Name is not <legofx.com> but Le GOfx.com. They provided evidence that this is the manner in which the Domain Name is currently being used on their webpage, “LE” for the in French and “GO” in English, which understood in Danish means – play well together- however the Panel when observing the website that the term legofx is used as “Le GOfx.com” but is also used as “legofx.com”, there is no uniformity in the use of such term. The mere explanation given by the Respondent or the incorporation of such explanation on the web site does not convince the Panel that the use of the Domain Name is effectively “Le Gofx.com” if it is used arbitrarily as “legofx” and “Le GOfx”. Consequently, the Panel can not consider as proof contradicting evidence.
The Respondent also claims that they mention on their website that they are in no way related to LEGO, however a disclaimer does not per se exempt you from responsibility. The fact is that the Internet user will only read such disclaimer once directed to such web site and in this particular case, though the mention of the disclaimer may allow the Internet user to understand that you are in no way affiliated to Lego, the existence of Lego blogging on your webpage is a source of confusion for the public.
Currently the use being given to the web site is that of a blog site, in which different people can provide their opinion regarding different types of toys, the way they function etc. The web site also provides links to other sites that allows you to purchase Lego toys and toys of Lego competitors. It is therefore inevitable to conclude that the Respondent is using the Domain Name, to intentionally attempt to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the complainant's mark. It can not be a mere coincidence that the website is all about toys and the disputed domain name incorporates as its most predominant part the term ”lego”, a world famous toy trademark.
Finally the Respondent also states that when doing a search “the search terms clearly show that our website is not identified by LEGO or other “lego” terms, but largely by other toys of various manufactures”. This statement is very unfortunate given the fact that if a person searches the term legofx and what appears is the mention of other toys of various manufacturers this is undoubtedly, to say the least very confusing for the searcher and clearly a means for the owner of such domain name to attract Internet users to its website by means of sponsorship, affiliation by creating a likelihood of confusion with the complainants trademark.
Consequently the Panel finds that the Domain Name is being used in bad faith.
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 Name <legofx.com> be transferred to the Complainant.
Rodrigo Velasco Santelices
Dated: January 17, 2011