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WIPO Arbitration and Mediation Center


LEGO Juris A/S v. James Mills

Case No. D2011-1000

1. The Parties

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

The Respondent is James Mills of Portland, Oregon, United States of America.

2. The Domain Name and Registrar

The disputed domain name <legosets101.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2011. On June 14, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On June 16, 2011, 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 June 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 7, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 8, 2011.

The Center appointed Fleur Hinton as the sole panelist in this matter on July 18, 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.

4. Factual Background

The LEGO trade mark is a famous trade mark owned by the Complainant. The Superbrands survey of 2009 found that it was the eighth most famous trade mark in the world and the most famous toy trade mark. The trade mark LEGO was first used in the United States in 1953. The Complainant now has subsidiaries and branches throughout the world. Lego products are now sold in 130 countries around the world and in 2010 the revenue for the group throughout the world exceeded USD 3 billion. The trade mark LEGO is registered in most countries in the world and LEGO products are undoubtedly recognized by most parents and children in the countries in which they are sold. In addition, the Complainant has registered more than 1,000 domain names containing the trade mark LEGO.

As well as its children’s products, the Complainant has also expanded into computer hardware and software, books, videos and computer controlled robotic construction sets. It has a website which shows its wide range of products.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name <legosets101.com> is confusingly similar to its LEGO trade mark and has cited some of the many previous UDRP decisions in which panels have found that the trade mark LEGO is a famous trade mark. The Complainant argues that the addition of “sets101” will not distinguish the disputed domain name from the trade mark since the memorable impression from the disputed domain name is that it includes the trade mark LEGO. This impression is likely to be enhanced by the Respondent’s choice of the suffix “sets101” because the Complainant is known to offer construction sets under the LEGO trade mark. This impression is in no way affected by the addition of the top level domain name “.com”.

The Complainant has not found any registration of trade marks or business names which would enable the Respondent to claim any rights or legitimate interests in the disputed domain name. The Respondent has not been licensed or authorized in any other way to use the disputed domain name. The Respondent does not have any business relationship with the Complainant as he is not a reseller of the Complainant’s products. The Complainant contends that it is extremely unlikely that the Respondent was unaware of the Complainant’s trade mark when he registered the disputed domain name on November 20, 2010.

The Complainant refers to the decision in Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314 where the panel found that, “[c]onsequently, given the notoriety of the [c]omplainant’s Deutsche Bank Mark, any use which the [r]espondent would make of any domain name, as here, that incorporated the [c]omplainant's Deutsche Bank Mark, or one confusingly similar thereto, would likely violate the exclusive trademark rights which the [c]omplainant has long held in its mark”. The Respondent’s aim in registering the disputed domain name, which includes so famous a trade mark as LEGO was to attract traffic to it. The Respondent is not a genuine reseller as he does not himself offer the Complainant’s goods for sale: his own website merely re-directs the consumer to other websites such as “www.amazon.com”. In addition, it has been found that, in order to be a bona fide offering, the Respondent must state its relationship to the trade mark owner, as found by the Panel in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The LEGO fair play policy states that the LEGO trade mark must never be used on an unauthorized website.

The Complainant contends that the Respondent has registered the disputed domain name in bad faith. The LEGO trade mark is famous and has a substantial reputation in relation to toys throughout the world. The Complainant refers to the many UDRP complaints lodged by it in recent years and sets out details of 13 domain name disputes in respect of domain names incorporating the trade mark LEGO lodged by the Complainant in approximately the last year alone. The Complainant submits that it is the fame of the Complainant’s LEGO trade mark which has caused so many people unconnected to the Complainant, including the Respondent to register domain names incorporating LEGO.

The Complainant sent the Respondent a cease and desist letter dated January 31, 2011 setting out its rights and requiring that the Respondent transfer the disputed domain name to it. Follow up emails were sent on January 31, 2011 and again on June 13, 2011. No response was received. The website is currently being used by the Respondent to re-direct visitors either to <amazon.com> or to <besttoys101.com>. The Complainant contends that it is irrelevant to a finding of bad faith whether or not the Respondent is obtaining revenue as a result of his efforts and refers to Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912. In that case the respondent argued that he had not obtained revenue and that, therefore, his activities had not been in bad faith. However, the panel found that, “(i) paragraph 4(b)(iv) requires the [r]espondent to intend to attract Internet users ‘for commercial gain’, but this gain does not need to be derived by the [r]espondent himself. The [r]espondent cannot infringe the [c]omplainant’s rights with impunity on the basis that it is allowing a third party to reap the profits of its wrongful conduct”. The Complainant contends that bad faith is present in this case because the Respondent has adopted a world famous trade mark and has misled consumers because this is not a situation in which the Respondent is making a legitimate fair use of the trade mark for no commercial gain.

B. Respondent

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

6. Discussion and Findings

In order to be successful in having a domain name transferred or cancelled, the Complainant must satisfy the Panel that all three elements of the UDRP Policy have been satisfied, that is, that:

i. the disputed domain name(s) are 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 domain name(s); and

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

A. Identical or Confusingly Similar

The famous trade mark LEGO is entirely encompassed in the disputed domain name <legosets101.com>. The Complainant is the registrant of over 1,000 domain names, many of which comprise the word “lego” together with another word, as the disputed domain name does. In Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870 the panel said in relation to the issue of confusing similarity, “[t]he similarity of the trademark and the domain name depends on many factors, including the relative distinctiveness of the trademark and the non-trademark elements of the domain name, and whether the non-trademark elements detract from or contradict the function of the trademark as an indication of origin”. In the present case, the addition of “sets101” does not detract from the ability of the disputed domain name to function as an indication of origin. This is for two reasons: first because the trademark LEGO is so famous; and second because there are so many domain names owned by the Complainant which contain descriptive or generic words other than the trade mark.

The Panel finds that the disputed domain name is confusingly similar to the trade mark.

B. Rights or Legitimate Interests

In a case where the trade mark forming the basis of the complaint is a famous trade mark, it is particularly difficult for a respondent to claim that he was not aware of it. The Respondent has not attempted to do so. He has not lodged a response. Whilst the onus of proof is on the Complainant to establish its case under the three criteria set out in the UDRP Policy referred to above, the consensus view expressed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1 is that, once the Complainant has established a prima facie case in relation to this element, the burden of production shifts to the Respondent. If the Respondent fails to produce either appropriate allegations or evidence, the Complainant is found to have established its case.

The Respondent is not a licensed or authorized user of the disputed domain name. The trade mark LEGO which the Respondent has included in the domain name may be an infringement of the Complainant’s trade mark rights as the panel held in relation to the DEUTSCHE BANK trade mark referred to in Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314. Whether that is the case or not, however, is not the issue here. The LEGO trade mark is a famous trade mark and the Respondent has appropriated it for his own use without consent from the Complainant who owns it. There is no possibility that the Respondent’s use of it is an independent use of the domain name on his own account: the website which the Respondent is operating under the disputed domain name clearly refers to the Complainant’s products. The panel in Drexel University v. David Brouda, WIPO Case No. D2001-0067 said that there can be no rights or legitimate interests in a situation where the respondent would not have chosen the domain name unless it were to suggest a connection with the complainant.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Where a disputed domain name contains a famous trade mark it will be very difficult for a respondent to claim that he was unaware of a complainant’s trade mark. There is no doubt in the present case that the Respondent was aware of the Complainant’s trade mark because the Respondent’s website depicts the Complainant’s own goods. Quite apart from this, the Complainant contacted the Respondent on a number of occasions indicating that it required that the domain name be transferred to it because of its ownership of the famous LEGO trade mark.

Paragraph 4(b) of the UDRP Policy sets out circumstances in which bad faith may be inferred. Paragraph 4(b)(iv) says that there is an indication of bad faith where the respondent by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website 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 its website or location or of a product or service on the website or location.

The Respondent’s website does not itself offer goods for sale. Instead it at one time re-directed consumers to <amazon.com> or <besttoys101.com>. The Respondent may obtain revenue from this click-through advertising but it is not necessary that he do so in order to satisfy the criterion that he has registered and is using the domain name in bad faith. In Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912 the panel rejected the argument that bad faith could not exist because the respondent had not taken money from his use of the disputed domain name. It found that the commercial gain referred to in the Policy need not be the respondent’s. “The [r]espondent cannot infringe the [c]omplainant’s rights with impunity on the basis that it is allowing a third party to reap the profits of its wrongful conduct; (ii) the [r]espondent 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 [r]egistrar to remove the parking page.” It may well be the case here that the Respondent does derive profit from click-through advertising. Whether he does or not, though, does not affect the outcome. The Respondent’s registration of the disputed domain name was in bad faith and his use of it, which diverts consumers from the Complainant’s website, is a use in bad faith.

The Panel finds that the Respondent has registered and is using the disputed domain name 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 <legosets101.com> be transferred to the Complainant.

Fleur Hinton
Sole Panelist
Dated: July 31, 2011