WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Leevo E-Commerce, Harjo Vogelzang
Case No. D2011-1784
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Leevo E-Commerce, Harjo Vogelzang, of Zutphen, Netherlands.
2. The Domain Name and Registrar
The disputed domain name <legodiscounter.com> (“the Domain Name”) is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2011. On October 20, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name. On October 20, 2011, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Name.
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 October 26, 2011. On October 26, 2011, and November 14, 2011, the Center received submissions from a firm of attorneys representing Johnson & Johnson Inc., one of whose subsidiary companies operated a website at “www.pearlsprogramme.com” (“the pearlsprogramme website”) to which the Domain Name had mistakenly been pointed. The attorneys advised that their client’s web hosting provider had held old DNS records pointing to the IP address of the pearlsprogramme website, and had mistakenly allowed a number of domain names, including the Domain Name, to resolve to that IP address. The attorneys advised that appropriate steps had been taken to remove the DNS records to ensure that the Domain Name would no longer resolve to the pearlsprogramme website.
The due date for response stated in the Center’s Notification of Complaint was November 15, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 16, 2011.
On November 24, 2011, the Center sent a further Written Notice of the Complaint, to a fax number of the Respondent which the Center located in one of the annexes to the Complaint. The Center extended the due date for submitting a response to December 14, 2011. The Respondent did not submit any response. On December 16, 2011, the Center sent an email communication informing the parties regarding the commencement of the panel appointment process.
The Center appointed Warwick Smith as the sole panelist in this matter on December 19, 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 Complainant is the Danish Corporation which markets around the world the well-known LEGO construction toys and other LEGO-branded products. According to the Complaint, the LEGO Group has expanded its use of the LEGO trademark to a number of other products, including computer hardware and software, books, videos, and computer-controlled robotic construction sets.
The Complainant is the registered proprietor of the word mark LEGO in the European Union, in a number of classes. The Complainant’s Community Trademark has effect from April 1, 1996. The Complainant is also the registered proprietor of a LEGO mark registered on the principal register maintained by the United States Patent and Trademark Office (“the USPTO”). The application to the USPTO was made in September 1974, and proceeded to registration on August 26, 1975.
In addition to the Community and United States trademark registrations, the Complainant holds registrations for its LEGO mark in numerous other jurisdictions around the world.
The Respondent and the Domain Name
The Domain Name was created on December 6, 2009.
According to the Complaint, the Respondent has used the Domain Name to generate Internet traffic to an online shopping site where the Complainant’s products, as well as the products of one of the Complainant’s competitors (Century youyi toys Co Limited, marketing “Sluban” bricks) were offered. The Complainant says that Sluban bricks have the same look and feel as LEGO building bricks.
At the time the Complaint was filed, the Domain Name pointed to the pearlsprogramme website (referred to in section 3 of this decision). The Complainant asserted that there was no connection between it and Johnson & Johnson Inc., and that it was unclear whether the Respondent had any connection with Johnson & Johnson. The Complainant produced a screenshot taken from the pearlsprogramme website, and it appeared to be a bona fide website operated by the Johnson & Johnson subsidiary.
The Complainant’s representative sent a cease and desist letter to the Respondent on February 8, 2010. The letter drew the Respondent’s attention to the Complainant’s rights in its LEGO mark, and alleged serious trademark infringement by the Respondent. The letter was not concerned with the Domain Name (its existence had not at that stage come to the Complainant’s attention), but with the domain name <legodiscounter.nl>. The letter asked for the transfer of that domain name to the Complainant.
The Respondent replied by email dated February 11, 2010, saying that it had taken the website offline. The Respondent indicated that he was willing to talk about the rest of the Complainant’s demands, but would prefer to speak to someone who spoke Dutch.
The Complainant’s representatives followed up with a further email to the Respondent, asking the Respondent to transfer three additional “legodiscounter” domain names to the Complainant. One of them was the Domain Name, and the other two were <legodiscounter.de> and <legodiscounter.eu>.
On February 19, 2010, the Respondent replied to the Complainant’s representative, saying that it could not comply with the request. The Respondent said:
“We are not willing to transfer the domain names. However, we are willing to talk about the possibility of getting your approval. To use LEGO as our company name.”
It appears that nothing further happened for approximately 18 months, during which time there was no active website at the Domain Name. The Complainant says that it continued to monitor the disputed domain names during that period. In September 2011, the Complainant noted that the Domain Name had been re-activated.
The Complainant’s representative wrote to the Respondent again on September 5, 2011, noting that the Respondent had re-activated the relevant websites, and repeating the request that the disputed domain names be transferred immediately to the Complainant.
The Complainant’s representative received no reply to its September 5, 2011 email, or to a follow-up email sent on September 20, 2011.
The Complainant says that it never gave the Respondent any permission to use the Complainant’s LEGO trademark.
5. Parties’ Contentions
The Complainant contends:
1. The Domain Name is confusingly similar to the Complainant’s LEGO mark. The addition of the suffix “discounter” is not relevant, and will not have any impact on the overall impression of the dominant part of the Domain Name, which is the Complainant’s LEGO mark. The LEGO mark is instantly recognizable as a world famous trademark, and there is a considerable risk that the trade public will perceive the Domain Name either as a domain name owned by the Complainant, or believe that it has some kind of commercial connection to the Complainant.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant relies on the following matters:
(i) The Complainant has not found that the Respondent holds any registered trademarks or trade names corresponding to the Domain Name;
(ii) The Complainant has not found anything that would suggest that the Respondent has been using the mark LEGO in any other way that would give him any legitimate rights in that name. Accordingly, the Respondent cannot claim any rights established by common usage;
(iii) No license or authorization has been given by the Complainant to the Respondent to use the Complainant’s LEGO mark. The Respondent is not an authorized dealer in the Complainant’s products, and has never had a business relationship with the Complainant.
(iv) It is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in its LEGO mark at the time the Domain Name was registered. It is the fame of the LEGO mark that has motivated the Respondent to register the Domain Name.
(v) Given the notoriety of the Complainant’s LEGO mark, any use which the Respondent would make of a domain name that incorporated the Complainant’s mark, or one confusingly similar thereto, would likely violate the exclusive trademark rights which the Complainant has long held in its LEGO mark (citing Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314).
(vi) The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. The Respondent has chosen a domain name based on a registered trademark, and initially used that Domain Name to generate traffic to its online shopping site, where the Complainant’s products, as well as products of a competitor, have been offered for sale. Since then, the Respondent has deactivated its website, and pointed the Domain Name to the pearlsprogramme website. Neither the original use, nor this later use, gives the Respondent rights or legitimate interests to use the Complainant’s trademark in the Domain Name.
(vii) Rights or legitimate interests cannot be created where the user of the Domain Name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant (citing Drexel University v. David Brouda, WIPO Case No. D2001-0067).
3. The Domain Name was registered and is being used in bad faith. The Complainant relies on the following matters:
(i) The Complainant’s LEGO mark has the status of a well-known trademark, with a substantial worldwide reputation. The considerable value and goodwill in the LEGO mark is most likely what made the Respondent register the Domain Name.
(ii) The Respondent asked the Complainant for permission to use the LEGO mark, but no such permission has been given.
(iii) The Respondent initially pointed the Domain Name to an online shopping site offering products sold by one of the Complainant’s competitors (as well as the Complainant’s products). The Respondent then pointed the Domain Name to the pearlsprogramme website. If the Respondent has no connection with the operator of the pearlsprogramme website, its actions could be seen as passive holding, which in some circumstances can be seen as bad faith use (citing Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
(iv) The Domain Name and the use being made of it (pointing to the pearlsprogramme website) have no connection with each other. In the absence of any explanation from the Respondent, the panel may conclude that the Respondent registered the Domain Name intending to take advantage of the Complainant’s trademark rights in some way.
(v) The Respondent has been using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. What the Complainant must prove under the Policy – General
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate.
B. Identical or Confusingly Similar
The Panel finds that the Complainant has proved this part of the Complaint. The Complainant is the registered proprietor of the trade mark LEGO in numerous jurisdictions, and that mark is incorporated in full in the Domain Name. Numerous UDRP panels have found that the incorporation of the complainant’s registered mark in a disputed domain name may be sufficient to establish confusing similarity for the purposes of the Policy – see, for example, Nokia Group. v. Mr. Giannattasio Mario, WIPO Case No. D2002-0782, and the decisions referred to near the top of page 6 of the decision (html version, available on the Center’s website at “https://www.wipo.int/amc/en/domains/decisions/html/2002/d2002-0782.html”) in that case.
The addition of the word “discounter” to the Complainant’s mark in the Domain Name does nothing to remove the confusing similarity between the Domain Name and the Complainant’s LEGO mark. The word is a generic expression in the English language, and the consensus view of UDRP panels is that confusing similarity is normally established where the complainant’s trademark is recognizable as such in the disputed domain name, with any added characters comprising only common, dictionary, descriptive, or negative terms (see the WIPO Overview of WIPO Panel views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”), at paragraph 1.2). The “.com” suffix is not taken into account in the comparison required by paragraph 4(a)(i) of the Policy.
In this case, the expression “lego” is clearly the dominant part of the Domain Name, and it is clearly “recognizable”, as the Complainant’s trademark, within the Domain Name. Confusing similarity within the meaning of paragraph 4(a)(i) of the Policy is therefore established.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of WIPO Overview 2.0, as follows:
“… a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. … If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
In this case, the Domain Name is confusingly similar to the Complainant’s mark, and the Complainant has not authorized the Respondent to use the Complainant’s mark, whether in a domain name or otherwise. There is nothing in the evidence which might show that the Respondent has become commonly known by the name “Lego Discounter”, and therefore nothing which might have provided a basis for a defense under Paragraph 4(c)(ii) of the Policy.
Similarly, there can be no “authorized reseller” right or legitimate interest. Although it appears that the Respondent’s website has offered the Complainant’s products for sale, it has apparently not done so for nearly two years, and the Respondent’s former use of the Domain Name did not satisfy the criteria set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, for genuine resellers of a complainant’s trademarked goods (the Respondent did not meet the Oki Data Americas requirement that the reseller should sell only the Complainant’s products).
A further factor pointing strongly against any right or legitimate interest, is that the Respondent appears to have acknowledged that it needed the consent of the Complainant to use its LEGO mark. Its initial response to the Complainant’s February 8, 2010, cease and desist letter was to take the Respondent’s website offline, and to advise “We are willing to talk about the rest of your demands” (Respondent’s email to Complainant’s representative dated February 11, 2010). A few days later, on February 19, 2010, the Respondent declined to transfer the disputed domain names but said: “We are willing to talk about the possibility of getting your approval. To use LEGO as our company name.”
The Complainant says that permission to use its LEGO mark was never given, and in the absence of any response that assertion stands unchallenged.
The foregoing circumstances sufficiently establish a prima facie case of “no rights or legitimate interests”, so the burden of production shifts to the Respondent. As the Respondent has not filed a response, that burden has not been discharged, and the Complainant therefore succeeds on this part of the Complaint.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
The Panel is satisfied that the Complainant has shown circumstances falling within paragraph 4(b)(iv) of the Policy set out above. The Panel has come to that view for the following reasons:
1. The Panel accepts that the trademark LEGO is sufficiently well known around the world that the Respondent must have known of the Complainant and its LEGO mark when it registered the Domain Name. The fact that LEGO products were offered for sale through the Respondent’s online shopping website within a few months of the Domain Name being registered, effectively confirms that the Respondent had that knowledge.
2. For the reasons set out in section 6C of this decision, the Panel has found that the Respondent has no rights or legitimate interest in respect of the Domain Name.
3. The Respondent has not denied the allegation that he pointed the Domain Name to its online shopping website, at which the “Sluban” product was offered for sale. That is a product manufactured by one of the Complainant’s competitors.
4. In choosing to incorporate the Complainant’s mark in the Domain Name, the Respondent must have appreciated that it would probably attract to any website at the Domain Name Internet users who would assume that the website was either operated by the Complainant or at least endorsed by the Complainant. If the Respondent appreciated that, it must be taken to have intended to create the false impression that it had some connection with the Complainant. In the absence of any response, the Panel infers that the reason the Respondent sought to create that impression was to trade off the Complainant’s reputation in its LEGO mark, and thus generate increased Internet traffic to the Respondent’s commercial website. Those circumstances fall squarely within paragraph 4(b)(iv) of the Policy.
5. The Respondent appears to have accepted in its February 11, 2010 and February 19, 2010 emails that it needed the Complainant’s approval to use LEGO as the Respondent’s company name. The Respondent presumably was not suggesting that the Complainant agree to the Respondent trading as it saw fit under the name “Lego”: in the context, it seems more likely that the Respondent was referring to its continuing ability to use “lego” in the Domain Name. The Respondent has not challenged the Complainant’s position that no such permission was ever given.
6. The Respondent’s failure to respond to the September 2011 communications from the Complainant’s representatives, and its subsequent failure to file any response in this proceeding, is consistent with the Panel’s overall impression of registration and use in bad faith.
It remains to mention the circumstance that the Domain Name has in more recent times been pointed to the pearlsprogramme website. From the correspondence which the Center received from the firm of attorneys representing Johnson & Johnson (referred to in section 3 of this decision), it appears that that link was effected without the consent of Johnson & Johnson. It is not clear if the link was effected with the knowledge and approval of the Respondent. In the end, the Panel is of the view that it is not necessary to decide that question. The Respondent quite clearly registered the Domain Name in bad faith, and subsequently used it in bad faith by pointing it to its online shopping website. That website may have since been de-activated, but the Panel agrees with the Complainant’s submission that it is difficult to conceive of any use the Respondent might now make of the Domain Name which would not result in some degree of confusion or deception resulting from its similarity to the Complainant’s LEGO mark. That point was effectively conceded by the Respondent in February 2010, when it acknowledged the need to obtain the Complainant’s permission to use the LEGO mark or name. So even if the link to the pearlsprogramme website somehow occurred by mistake, the situation is one where bad faith registration and subsequent bad faith use have been proved, followed by a period of “passive bad faith holding” of the kind discussed in Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <legodiscounter.com> be transferred to the Complainant.
Dated: December 23, 2011