WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Earl Jones - HY

Case No. D2014-1783

1.The Parties

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

The Respondent is Earl Jones - HY of Tempe, Arizona, United States of America.

2. The Domain Name and Registrar

The disputed Domain Name <legos.biz> is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2014. On October 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Name. On October 14, 2014, the Registrar transmitted by email to the Center its verification response providing the contact details and contact information for the disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 20, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on October 20, 2014.

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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 10, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 11, 2014.

The Center appointed Michel N. Bertschy as the sole panelist in this matter on November 26, 2014. 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 owner of LEGO, and all other trademarks used in connection with the LEGO brands of construction toys and other LEGO branded products. The Complainant's licensees are authorized to exploit the Complainant's intellectual property rights, including its trademark rights. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries. The Complainant is also the owner of more than 2400 domain names containing the term LEGO.

The trademark LEGO is among the most well-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 website under the domain name <lego.com>.

The Respondent registered the disputed Domain Name on June 17, 2014.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions are the following:

1. The disputed Domain Name is identical or confusingly similar to a trademark or service trademark in which the Complainant has rights;

The disputed Domain Name comprises the term LEGO, identical to the trademarks LEGO, registered by the Complainant as trademarks and in domain names in numerous countries all over the world. The disputed Domain Name <legos.biz> is thus confusingly similar to the Complainant’s trademark LEGO. The fame of the trademark has been confirmed in numerous previous UDRP decisions. In addition to the trademark LEGO, the disputed Domain Name also comprises the suffix “s”. Previous panels have stated that it is long-established precedent that confusing similarity is generally recognized when well-known trademarks are paired up with different kinds of generic prefixes and suffixes. In this case, the suffix “s” does not detract from the overall impression. Moreover, the trademark risks being tarnished by being paired up with the suffix “s”. In fact, the LEGO group has taken steps to protect the LEGO trademark from dilution by imposing the use of the trademark as an adjective, not as a noun, the use of a plural being thus prohibited by group rules.

The Complainant further contends that the addition of the Top-Level Domain (gTLD) “.biz” does not have any impact on the overall impression of the dominant portion of the disputed Domain Name and is therefore irrelevant to determine the confusing similarity between the trademark and the disputed Domain Name.

Anyone who sees the disputed Domain Name is bound to mistake it for a name related to the Complainant. The likelihood of confusion includes an obvious association with the trademark of the Complainant. With reference to the reputation of the trademark LEGO there is a considerable risk that the public would perceive the Respondent’s disputed Domain Name either as a domain name owned by the Complainant, or that there is some kind of commercial relation with the Complainant. By using the trademark as a dominant part of the disputed Domain Name, the Respondent exploits the goodwill and the image of the Complainant’s trademark, which may result in dilution and other damage for the trademark.

The disputed Domain Name is thus clearly confusingly similar to the Complainant’s registered trademark LEGO. The suffix “s” does not detract from the overall impression.

2. The Respondent has no rights or legitimate interests in respect of the disputed Domain Names;

The Complainant contends that LEGO is a famous trademark worldwide. Previous panels have found that any use of such a trademark in a domain name would violate the rights of the trademark owner. Given the notoriety of the Complainant's trademark, any use which the Respondent would make of any domain name, which incorporates the Complainant's trademark or one confusingly similar thereto, would likely violate the exclusive trademark rights which the Complainant has long held in its mark. The fame of the LEGO trademark motivated the Respondent to register the disputed Domain Name in the first place. The Respondent cannot therefore claim to have been using LEGO, without being aware of the Complainant’s rights to it. This, among other facts, proves that the Respondent’s interests cannot have been legitimate.

Further, the Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed Domain Name. Neither has the Complainant found anything that would suggest that the Respondent has been using LEGO in any other way that would give them any legitimate rights in the name. Consequently, the Respondent may not claim any rights established by common usage. No license or authorization of any other kind, has been given by the Complainant to the Respondent, to use the trademark LEGO so that no actual or contemplated bona fide or legitimate use of the disputed Domain Name could be claimed by Respondent. Further, the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. The Respondent is nowadays not using the disputed 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 and income through a website offering LEGO products.

Finally, the Respondent is not an authorized reseller. In the present case, the Respondent does not adequately disclose the relationship, or lack thereof, between the Respondent and the Complainant, and does therefore convey the false impression that the Respondent is authorized to use the Complainant’s trademark. Accordingly, the Respondent is not using the disputed Domain Name in connection with a bona fide offering of goods or services. Instead, the Respondent is using the LEGO trademark in order to mislead Internet users to his commercial website. Consequently, the Respondent is tarnishing the trademark LEGO.

The Respondent has therefore no rights or legitimate interest in respect of the disputed Domain Name.

3. The disputed Domain Names were registered and are being used in bad faith.

The trademark LEGO in respect of toys belonging to the Complainant has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the whole Community and throughout the world. The awareness of the trademark LEGO is considered, in the whole Community in general, to be significant and substantial. The number of third party domain name registrations comprising the trademark LEGO in combination with other words has increased in the last years and have been object of many UDRP cases.

The Respondent registered the disputed Domain Name on June 17, 2014. This date is subsequent to when the Complainant registered the trademark LEGO in the United States, where the Respondent most likely resides, by several decades. Considering that LEGO is a world famous trademark and that the website connected to the disputed Domain Name displays the Complainant’s famous logo and LEGO products, it is clear that the Respondent knew of the Complainant’s legal rights in the name LEGO at the time of the registration.

The Complainant first tried to contact the Respondent on June 26, 2014, through a cease and desist letter sent by e-mail. The Complainant advised the Respondent that the unauthorized use of the LEGO trademark within the disputed Domain Name, requested a voluntary transfer of the disputed Domain Name and offered compensation for the expenses of registration and transfer fees (not exceeding out of pocket expenses). Two additional reminders were sent, however, the Respondent never replied. Following the cease and desist letter, the Respondent hid its contact details under a private Whois. Considering that the registration date, registrar and website content still are the same, it is quite obvious that the registrant has not changed. Taking into account the apparent risk of cyberflight, the Complainant did not choose to file another cease and desist letter to the private Whois address. Since the efforts of trying to solve the matter amicably were unsuccessful, the Complainant chose to file a complaint according to the UDRP process.

The disputed Domain Name is currently connected to an unauthorized website offering LEGO products; it is thereby clearly stating a commercial purpose. There are links on the website connected to the disputed Domain Name directing Internet users to another commercial website, namely “www.amazon.com”, offering all kinds of products from a wide range of competing different brands. Panels have previously found that where a domain name is connected to a website containing sponsored links providing a click-through to the “www.amazon.com” website, the respondent makes use of the confusing similarity with the trademark of the complainant. The use cannot therefore be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. This is the case in the present instance. In addition, the Respondent is using the disputed Domain Name to attract visitors by promoting the Complainant’s products as well as competing brands by displaying links to a third party website.

Consequently, the Respondent is using the disputed Domain Name to intentionally attempt to attract Internet users to websites for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the websites.

The Respondent should therefore be considered to have registered and to be using the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the complainant to prove that the respondent has registered a domain name which is: (i) 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 Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. The complainant must prove each of these three elements.

A. Identical or Confusingly Similar

The Complainant has rights in the LEGO marks. Under the UDRP, the test for identity or confusing similarity typically involves a comparison between the trademark and the disputed domain name to determine likelihood of Internet user confusion. To satisfy the test, the trademark to which the disputed domain name is said to be identical or confusingly similar would generally need to be recognisable as such within the disputed domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent Internet user confusion. Application of the identity of confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the disputed domain name.

As numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety in a domain name may be sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. The addition of other generic terms in a domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark (Stanley Black & Decker, Inc. v. Above.com Domain Privacy / Ready Asset, Nish Patel, WIPO Case No. D2014-1446; Comerica Bank v. Rodica Ilea, WIPO Case No. D2013-1861; Aktiebolaget Electrolux v. Ngoc Tien Nguyen, WIPO Case No. D2012-2318; Gabrielle Studio, Inc., The Donna Karan Company LLC v. djis sdi, WIPO Case No. D2012-1704; Amegy Bank National Association v. Whois Privacy Services Pty / 21562719 Ont Ltd, WIPO Case No. D2012-1129; Federal-Mogul Corporation v. Whois Privacy Services Pty Ltd / Bryan Stapp, WIPO Case No. D2014-1595 and references therein).

In this case, the disputed Domain Name incorporates the Complainant’s LEGO mark in its entirety and is clearly the dominant element. The addition of the suffix “s” does not alleviate the risk of confusion.

Given the distinctive nature of the LEGO mark which is readily recognisable within the disputed Domain Name, the Panel is satisfied that the disputed Domain Name <legos.biz> is confusingly similar to the Complainant’s trademarks and thus this element of paragraph 4(a) of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the disputed Domain Name. Once the Complainant establishes a prima facie case showing that none of the three circumstances establishing rights or legitimate interests apply, the burden of production on this element shifts to the Respondent. The burden of proof, however, remains with the Complainant to prove each of the three elements of paragraph 4(a) of the Policy (Stanley Black & Decker, Inc. v. Above.com Domain Privacy / Ready Asset, Nish Patel, WIPO Case No. D2014-1446; Comerica Bank v. Rodica Ilea, WIPO Case No. D2013-1861; Aktiebolaget Electrolux v. Ngoc Tien Nguyen, WIPO Case No. D2012-2318; Gabrielle Studio, Inc., The Donna Karan Company LLC v. djis sdi, WIPO Case No. D2012-1704; Amegy Bank National Association v. Whois Privacy Services Pty / 21562719 Ont Ltd, WIPO Case No. D2012-1129; Federal-Mogul Corporation v. Whois Privacy Services Pty Ltd / Bryan Stapp, WIPO Case No. D2014-1595 and references therein).

The Complainant has established a prima facie case that the Respondent lacks rights and legitimate interests in respect of the disputed Domain Name and there has been no rebuttal by the Respondent. Nothing in the record gives reason to believe that the Respondent has any rights or legitimate interests in respect of the disputed Domain Name, given that the disputed Domain Name currently is connected to an unauthorized website offering Lego products but also apparently competing products. The Panel further notes that the site is not disclosing any (lack of) relationship with the Complainant.

Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed Domain Name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the disputed Domain Name registration to the complainant (the owner of the trademark 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 disputed Domain Name; or

(ii) circumstances indicating that the respondent registered the disputed Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding disputed Domain Name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the disputed Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online 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 examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another” (Stanley Black & Decker, Inc. v. Above.com Domain Privacy / Ready Asset, Nish Patel, WIPO Case No. D2014-1446; Comerica Bank v. Rodica Ilea, WIPO Case No. D2013-1861; Aktiebolaget Electrolux v. Ngoc Tien Nguyen, WIPO Case No. D2012-2318; Gabrielle Studio, Inc., The Donna Karan Company LLC v. djis sdi, WIPO Case No. D2012-1704; Amegy Bank National Association v. Whois Privacy Services Pty / 21562719 Ont Ltd, WIPO Case No. D2012-1129; Federal-Mogul Corporation v. Whois Privacy Services Pty Ltd / Bryan Stapp, WIPO Case No. D2014-1595 and references therein).

In this case, the disputed Domain Name differs from the Complainant’s marks by the sole addition of the letter “s”. Noting also the content of the website at the disputed Domain Name, the Panel finds more likely than not that the Respondent has intentionally registered the disputed Domain Name, which is confusingly similar to the Complainant’s trademarks, and has intentionally diverted Internet users to a website offering sponsored links promoting, inter alia, the same or similar products as those offered by the Complainant. Such registration and use can only be motivated by commercial gain. The Panel fails to see what other legitimate motivation the Respondent’s conduct can have and the Respondent has failed to present any good faith use.

The Panel therefore considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed Domain Name within the meaning of paragraph 4(b)(iv) of the Policy.

Accordingly, the Complainant has satisfied all three elements of paragraph 4(a) of the Policy.

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 <legos.biz> be transferred to the Complainant.

Michel N. Bertschy
Sole Panelist
Date: December 9, 2014