WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Matthew Griffith, Merlix LLC, Domain Administrator

Case No. D2012-0443

1. The Parties

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

The Respondent is Matthew Griffith, Merlix LLC, Domain Administrator of Greensboro, North Carolina, United States of America (“United States”).

2. The Domain Names and Registrars

The disputed domain name <legobuilder.com> is registered with Dotster, Inc. The disputed domain name <legoworkshop.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2012. On March 7, 2012, the Center transmitted by email to Dotster, Inc. and eNom a request for registrar verification in connection with the disputed domain names. On March 7, 2012, Dotster, Inc. transmitted by email to the Center its verification response informing that Domain Administrator/Merlix LLC is listed as the registrant and providing the additional contact details. On March 7, 2012, eNom transmitted by email to the Center its verification response confirming that MERLIX LLC/Matthew Griffith is listed as the registrant and providing the contact details.

On March 7, 2012, the Center sent a communication to the Complainant with regard to the fact that the disputed domain name <legoworkshop.com> was the subject of a UDRP decision in LEGO Juris A/S v. Domain Administrator, Matthew Griffith, WIPO Case No. D2011-1263, resulting in a denial, and that the Respondent Matthew Griffith in both instances appeared to be the same, in effect rendering the UDRP Complaint as filed with the Center a refiled case. In such communication, the Center inter alia stated as follows: “With respect to the Complainant’s argument that it has never received a copy of the response in the earlier WIPO Case No. D2011-1263, whether this may have been due to the Complainant’s not receiving such communication from the Respondent Matthew Griffith or as a result of the Center not acknowledging receipt of such response, the Center notes that the Rules do not make provisions of the filing of a sur-reply as matter of right. However, UDRP Panels which do have discretion to request or accept further statements under the Rules, have recognized that it may be appropriate to do so in circumstances where new developments or developments which could not have been reasonably anticipated do come to light. See Sensis Pty Ltd., Telstra Corporation Limited v. Yellow Page Marketing B.V., WIPO Case No. D2011-0057. In this respect, it seems reasonable to the WIPO Center that had the Complainant been aware of the identity of the Respondent Matthew Griffith, it might reasonably have sort [sic] to supplement the record in the earlier WIPO Case No. D2011-1263 with information to address this ‘new or reasonably unanticipated fact or legal issue’. Naturally, acceptance of any such request or any decision to call for further statements would be and would have been at the sole discretion of the Panel. The WIPO Center therefore finds that the Complainant has, albeit by fine margin, satisfied the threshold to ‘plead grounds which might justify entertaining the re-filed complaint’”.

The Center sent an email communication to the Complainant on March 8, 2012 providing the additional contact information disclosed by Dotster, Inc. and eNom, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 8, 2012.

The Center verified that the Complaint together with the amendment to 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 14, 2012. In accordance with paragraph 5(a) of the Rules, the due date for Response was April 3, 2012. The Response was filed with the Center on April 3, 2012.

The Center appointed Brigitte Joppich, Torsten Bettinger and W. Scott Blackmer as panelists in this matter on June 13, 2012. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.

On June 18, 2012, the Panel requested access to the case file of LEGO Juris A/S v. Domain Administrator, Matthew Griffith, WIPO Case No. D2011-1263, which was subsequently made available to the Panel by the Center.

4. Factual Background

The Complainant is a manufacturer of toys which started using the trademark LEGO in Denmark in the 1940s and in the United States in 1953. The Complainant owns hundreds of trademark registrations for LEGO, inter alia United States trademark registration no. 1018875 LEGO registered on August 26, 1975 (hereinafter referred as the “LEGO Mark”). The Complainant’s trademark has been listed as number eight of the most famous trademarks and brands in the world with the official 500 Superbrands for 2009/10, provided by Superbrands UK, and has been found to be “well-known” and having a “high reputation” by previous Panels (cf. LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840; LEGO Juris A/S v. Domain Administrator, WIPO Case No. D2010-1260; LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680). Furthermore, the Complainant is the owner of more than 2,400 domain names containing the term LEGO, including <lego.com>.

The disputed domain names were registered on February 25, 2011 (<legoworkshop.com>) and December 15, 2006 (<legobuilder.com>). Both domain names have been used in connection with parking websites in the past. While the content available at disputed domain name <legobuilder.com> still shows advertising links related to third parties’ products, the content at disputed domain name <legoworkshop.com> had been changed at some point of time before the complaint in LEGO Juris A/S v. Domain Administrator, Matthew Griffith, WIPO Case No. D2011-1263 was filed, as described further below.

The Complainant first tried to contact the Respondent on April 11, 2011 by means of a cease and desist letter regarding the disputed domain name <legoworkshop.com> in which the Complainant advised the Respondent that the unauthorized use of the LEGO trademark within the disputed domain name <legoworkshop.com> violated the Complainant’s rights in said trademark and in which the Complainant requested a voluntary transfer of said disputed domain name and offered compensation for registration and transfer fees not exceeding out of pocket expenses. In the absence of any response, even after two reminders, the Complainant filed a complaint under the UDRP, which was subsequently denied (LEGO Juris A/S v. Domain Administrator, Matthew Griffith, WIPO Case No. D2011-1263 (<legoworkshop.com>)).

5. Parties’ Contentions

A. Complainant

With regard to the refiling of the Complaint, the Complainant argues that, prior to the decision in LEGO Juris A/S v. Domain Administrator, Matthew Griffith, WIPO Case No. D2011-1263, it had not been informed of the true identity of the Respondent, that the Complainant had never been notified that a Response had been submitted at all, that the Respondent changed the content of the website from a commercial site to an alleged “fan site” long after receipt of the Complainant’s cease and desist letter, and that only after this Complaint had been launched, the present registrant of the disputed domain names, Merlix LLC, was linked to the Respondent in LEGO Juris A/S v. Domain Administrator, Matthew Griffith, WIPO Case No. D2011-1263.

Furthermore, the Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:

(1) The disputed domain names are confusingly similar to the Complainant’s world famous LEGO Mark as the addition of the suffixes “workshop” and “builder” as well as the addition of the TLD “.com” are not relevant and will not have any impact on the overall impression of the dominant part of the disputed domain names. They are therefore irrelevant to determine the confusing similarity between the Complainant’s mark and the disputed domain names.

(2) The Respondent has no rights or legitimate interests in respect of the disputed domain names as the Respondent owns no registered trademarks or trade names corresponding to the disputed domain names, as there is nothing else that would suggest that the Respondent has been using LEGO in any other way that would give him any legitimate rights in the names, as the Respondent cannot claim any rights established by common usage because of his use of the disputed domain names for parking websites which is not a bona fide use, and as no license or authorization of any other kind has been given by the Complainant to the Respondent to use the trademark LEGO.

(3) With regard to bad faith, the Complainant contends that the LEGO Mark is famous, that the Respondent knew of the Complainant’s legal rights in the name LEGO at the time of the registration of the disputed domain names, and that the fame of the trademark motivated the Respondent to register the disputed domain names. The Complainant further argues that the Respondent’s failure to reply to the Complainant’s cease and desist letters leads to a finding of bad faith, that the Respondent provided a parking website at <legoworkshop.com> and still provides such website at <legobuilder.com>, which constitutes bad faith use under paragraph 4(b)(iv) of the Policy, and that the Respondent acts in a pattern of abusively registering third parties’ trademarks as domain names as set out in paragraph 4(b)(ii) of the Policy. With regard to the subsequent use of the disputed domain name <legoworkshop.com> with a website allegedly showing pictures of the Respondent’s son’s own LEGO creations, which includes a disclaimer, the Complainant argues that such website was established only after notice of the dispute and therefore cannot be regarded as legitimate under paragraph 4(c)(iii) of the Policy, and that such website today also contains two links to third party websites with commercial content and are therefore commercial in any case.

B. Respondent

The Respondent denies the Complainant’s contentions.

The Respondent states that it is not engaged in cybersquatting, that it registered the disputed domain name <legobuilder.com> for his oldest son, who at the time was around 10 or 11 years of age and had stated he wanted to learn to build a website and do something with Lego. The Respondent further claims that it was in contact with the Complainant after the decision in LEGO Juris A/S v. Domain Administrator, Matthew Griffith, WIPO Case No. D2011-1263, when it informed the Complainant that it would never want to do anything that would alienate the Complainant and offered the Complainant to contribute to the website at the domain name <legoworkshop.com>. Furthermore, the Respondent states that, if asked, it would have gladly transferred <legobuilder.com> to the Complainant and that such offer is still standing. With regard to the two (allegedly commercial) links included on the website available at the disputed domain name <legoworkshop.com>, the Respondent states that they refer to the company providing the web design, that they are not affiliate links, and that no monies or profits are earned from this or any other link.

The disputed domain name <legoworkshop.com> was allegedly registered in connection with a school project of the Respondent’s second son, who is currently learning how to develop software using Microsoft’s .NET technologies and planning to develop <legoworkshop.com> into a website of Lego projects that the Respondent’s son built over the years with instructions on how to build them in order to instruct younger children. The Respondent states that his older son is not making any profit on the disputed domain name <legoworkshop.com> or website. The Respondent further argues that the use of the disputed domain name <legoworkshop.com> is fair use under the Policy, as his son is not using the Lego logo on the site, as he is not trying to profit from using the disputed domain name <legoworkshop.com>, as there is no confusion that the website might be owned or endorsed by the Complainant, as there is a disclaimer at the bottom of the site stating that he is in no way affiliated with the Lego Group, and as the disputed domain name <legoworkshop.com> has never been listed for sale.

6. Discussion and Findings

The first point to be dealt with is whether this case contains a so-called refiled complaint with regard to the domain name <legoworkshop.com>, which has already been dealt with in the course of LEGO Juris A/S v. Domain Administrator, Matthew Griffith, WIPO Case No. D2011-1263. A refiled complaint is at issue where a complainant submits a second complaint involving the same domain name and the same respondent as an earlier complaint that was denied. A refiled complaint is generally not admissible, but rather only admissible where certain circumstances are shown to exist.

Firstly, the Panel is satisfied that with regard to the disputed domain name <legoworkshop.com> this is a case where the Complainant filed a second complaint against the same disputed domain name and the same Respondent. The domain name <legoworkshop.com> was subject to the proceedings in LEGO Juris A/S v. Domain Administrator, Matthew Griffith, WIPO Case No. D2011-1263, and the parties in both cases are identical. Although the Respondent in LEGO Juris A/S v. Domain Administrator, Matthew Griffith, WIPO Case No. D2011-1263 was “Domain Administrator, Matthew Griffith” while the Respondent in the present case is “Matthew Griffith, Merlix LLC, Domain Administrator”, it is undisputed that Merlix LLC is the company of Matthew Griffith and that all of the handles used in the WhoIs database are connected with the same email address, also listed as the respondent’s email address in LEGO Juris A/S v. Domain Administrator, Matthew Griffith, WIPO Case No. D2011-1263. Furthermore, the Respondent itself treats this case as a refiled Complaint with regard to <legoworkshop.com>.

Secondly, the Panel will admit the refiled complaint. The Panel is well aware that a refiled case may only be accepted in limited circumstances. According to paragraph 4.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), these circumstances include a breach of natural justice or of due process. On the record of the present case file as well as the case file LEGO Juris A/S v. Domain Administrator, Matthew Griffith, WIPO Case No. D2011-1263, there is no conclusive evidence that the Complainant was duly notified of the response submitted in LEGO Juris A/S v. Domain Administrator, Matthew Griffith, WIPO Case No. D2011-1263. There is no conclusive evidence that the Respondent copied the Complainant on its submitted Response, or that it forwarded such Response to the Complainant pursuant to the relevant requirements to do so under the Rules. The Respondent appears to state in its Response that it did so, but no transmission record supporting this has been supplied, and under paragraph 2(i) of the Rules it is the Responsibility of the sender to retain these. The Complainant has stated that it did not receive notice of the Response, the Respondent has not supplied any record of transmission and the Center has confirmed that it did not independently forward a copy of the submitted Response to the Complainant, based in part on the Respondent’s statement in its Response that it had already done so. As the Center already rightly considered when provisionally accepting the Complaint in the first place, such receipt by the Complainant of the Response (had it occurred) might have had an impact on the outcome of LEGO Juris A/S v. Domain Administrator, Matthew Griffith, WIPO Case No. D2011-1263. The Complainant, for example, might well have sought an opportunity to reply to new information about the identity of the Respondent and to address the Respondent’s “fair use” arguments. The Panel concludes on this basis that the decision in LEGO Juris A/S v. Domain Administrator, Matthew Griffith, WIPO Case No. D2011-1263 might involve a breach of due process, and that there is sufficient ambiguity to warrant re-examination on that basis. The Complainant has sought and is granted relief by way of the refiled complaint (cf. Sensis Pty Ltd., Telstra Corporation Limited v. Yellow Page Marketing B.V., WIPO Case No. D2011-0057, where a refiled complaint was admitted because the panel in the first proceeding conducted online “private investigations” and relied on the results without giving the Complainants an opportunity to respond to those facts and address the relevance of information about trademarks held by the Respondent outside Australia).

Furthermore, under paragraph 4(a) of the Policy, the Complainant must prove with respect to each of the disputed domain names that each of the following three elements is present:

(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark; and

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

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

A. Identical or Confusingly Similar

The disputed domain names incorporate the famous LEGO Mark. The additional words “builder” and “workshop” in the disputed domain names are merely generic. It is well established that a disputed domain name that wholly incorporates a trade mark may be confusingly similar to such trade mark for purposes of the Policy despite the addition of common or generic words, such as “builder” or “workshop” (cf. Microsoft Corporation v. Doug Goodman, NAF Claim No. 1294422; Dell Inc. v. DI_4747995, WIPO Case No. D2007-0803; LEGO Juris A/S v. Domain Administrator, Matthew Griffith, WIPO Case No. D2011-1263.

Therefore, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:

(i) before any notice to the respondent of the dispute, the use by the respondent 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

(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among UDRP panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of proving that the respondent has rights or legitimate interests in the disputed domain name will then shift to the respondent.

The Complainant has substantiated a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy, and the burden of rebuttal is correspondingly shifted to the Respondent.

The Respondent does not contest the Complainant’s assertions with regard to the domain name <legobuilder.com>. However, with regard to <legoworkshop.com>, the Respondent argues that the use of the disputed domain name in connection with the Respondent’s son’s website featuring his own LEGO creations constitutes fair use under the Policy. It is well established that a respondent is not entitled to rely on the defense set out in paragraph 4(c)(iii) of the Policy where there is evidence of commercial use of the disputed domain name. Based on the information available to the Panel in the present proceeding, the disputed domain name was used in connection with a parking website with pay-per-click (PPC) advertising links, the content of which was changed only after the Respondent had first been contacted by the Complainant. The Respondent did not provide any evidence regarding demonstrable preparations of fair use but uploaded the present website after having received the Complainant’s cease and desist letter (which preceded the first Complaint in LEGO Juris A/S v. Domain Administrator, Matthew Griffith, WIPO Case No. D2011-1263). Although paragraph 4(c)(iii) of the Policy, unlike its paragraph 4(c)(i), does not include a reference to the point of time when a respondent has to make a legitimate noncommercial or fair use of the domain name, it is clear that a respondent can only rely on the defense set out in paragraph 4(c)(iii) of the Policy if it has used the disputed domain name in such way before any notice of the dispute. It is this the commercial use which was being made of the disputed domain name <legoworkshop.com> prior to notice of the present dispute, and not the seemingly noncommercial use made of it thereafter, which must form the principal basis of this Panel’s conclusion of the merits of this case.

Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain names under paragraphs 4(a)(ii) and 4(c) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:

(i) circumstances indicating that the respondent has registered or 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out of pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent 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 the respondent’s website or location or of a product or service on its website or location.

The Panel is satisfied that the Respondent registered the disputed domain names with full knowledge of the Complainant and its rights in the famous LEGO Mark. Based on the Complainant’s longstanding and extensive use of the LEGO Mark in the United States, where the Respondent is located, is inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant’s rights. Furthermore, the Respondent itself stated that it registered the first of the disputed domain names <legobuilder.com> for its son, who allegedly “wanted to do something with Lego”. Allowing both disputed domain names to be used for an extended period for pay-per-click commercial advertising, regardless of whether the Respondent himself profited thereby, is inconsistent with the stated noncommercial intent. The Panel is therefore satisfied that the Respondent registered both of the disputed domain names in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

Based on the information available to the Panel in this proceeding, the Respondent also used the disputed domain names in bad faith. Firstly, by fully incorporating the LEGO Mark into the disputed domain names and by using the websites at such domain names as parking websites providing links to commercial third parties, the Respondent allowed the respective registrars to divert traffic intended for the Complainant’s website. The use and exploitation of trademarks to obtain click-through revenues from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623, with further references). Secondly, the finding of bad faith is supported by the fact that the Respondent registered further domain names including third parties’ trademarks, such as <disneyrebate.com>, <bmwbroker.com> and <bmwisetta.com> and has therefore engaged in a pattern of conduct aimed at exploiting well-known marks or preventing owners of a trademark or service mark from reflecting their marks in a corresponding domain name as required under paragraph 4(b)(ii) of the Policy.

It may very well be true that, in the case of the two disputed domain names in the current proceeding, the Respondent had in mind some eventual noncommercial use of the disputed domain names comporting with relevant principles of fair use under United States trademark law. The Respondent denies direct involvement with the advertising use of the two disputed domain names, which extended for months or years, respectively. Even assuming that the registrars parked the disputed domain names and kept the resulting advertising revenues, however (which appears to be a common practice), the Respondent controlled those disputed domain names and could have avoided their prolonged use to advertise the commercial products of third parties. Both registrars allow registrants to direct where their domain names will be hosted or to have the domain names resolve to pages displaying “under construction” or equivalent messages. Dotster, Inc.’s registration agreement, attached to the Complaint, expressly discloses that the disputed domain name will be parked initially but indicates that it can be “unparked” as soon as registration is completed. Under both registration agreements, consistent with ICANN policy, it is clear that the registrant is ultimately responsible for the lawful use of the domain names. In the circumstances such as these in the present case, when an apparently experienced registrant such as the Respondent knowingly selects a domain name incorporating another party’s well-established trademark, the registrant cannot, in good faith, simply allow the domain name to be exploited for commercial purposes for any substantial period of time, and expect apparently noncommercial use initiated only after notice of a dispute with the trademark holder to provide insulation from responsibility for such prior commercial exploitation.

The Panel thus concludes that there was registration and use of both disputed domain names in bad faith for purposes of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <legobuilder.com> and <legoworkshop.com> be transferred to the Complainant.

Brigitte Joppich
Presiding Panelist

Torsten Bettinger
Panelist

W. Scott Blackmer
Panelist

Dated: June 28, 2012