WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. John Sherack
Case No. D2014-1811
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, of Sweden.
The Respondent is John Sherack of Stroudsburg, Pennsylvania, United States of America, self-represented.
2. The Domain Name and Registrar
The Disputed Domain Name <legoboss.com> is registered with Domain.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2014. On that day the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 16, 2014, the Registrar 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”), 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 October 21, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was November 10, 2014. On October 23, 2014 the Respondent replied by email to the Center’s notification of the Complaint, indicating a preparedness to assign the Disputed Domain Name to the Complainant upon payment of his expenses and advising that he had registered the Disputed Domain Name to generate click stream revenue for two charities. When the Complainant offered in response the reimbursement of the Respondent’s registration fee, the Respondent on October 28, 2014 declined on the grounds that the amount offered did not adequately compensate him for the effort and expense he had put into the website to which the Disputed Domain Name resolves. The Center on October 29, 2014 advised the Respondent that his October 28, 2014 email would be taken as the Response if he provided nothing further by the filing deadline. Nothing further was received from the Respondent before the delivery of the Panel’s decision on December 4, 2014.
The Center appointed Philip N. Argy as the sole panelist in this matter on November 21, 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 paragraph 7 of the Rules.
All other administrative requirements appear to have been satisfied.
4. Factual Background
The following facts, taken from the Complaint, remain uncontested.
The Complainant, 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 has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in the United States of America.
The Complainant is also the owner of more than 2,400 domain names containing the letters LEGO and it is the strict policy of the Complainant that all domain names containing the word LEGO should be owned by the Complainant.
In addition to its use on construction toys the LEGO brand extends to computer hardware and software, books, videos, and computer-controlled robotic construction sets. The LEGO Group also maintains an extensive website under the <lego.com> domain name.
Public awareness of the LEGO brand is very high and it was the winner of the “Child Products – Toys and Education” category in the top 500 Superbrands for 2014. Moreover, the Reputation Institute nominated the LEGO Group as number 10 on their list of “the World’s Most Reputable Companies” in 2013.
The Disputed Domain Name was registered on May 2, 2014.
5. Parties’ Contentions
The Complainant alleges that the Disputed Domain Name <legoboss.com> is identical or confusingly similar to its LEGO trademark, that the Respondent has no right or legitimate interest in respect of the Disputed Domain Name and that the Disputed Domain Name was registered and is being used in bad faith.
In doing so, it invokes the three grounds of the Policy and seeks to substantiate its Complaint as follows.
In relation to the first limb, the Complainant submits that the dominant part of the Disputed Domain Name comprises the term “lego” which is identical to the Complainant’s registered trademark LEGO. The Complainant submits that the Disputed Domain Name is also confusingly similar to the Complainant’s trademark because the suffix “boss” does nothing to dissociate the Disputed Domain Name from the Complainant.
The dot.com generic Top level Domain (“gTLD”) has no impact on the overall impression of the dominant portion of the Disputed Domain Name and is therefore irrelevant in determining whether there is any confusing similarity between the Complainant’s trademark and the Disputed Domain Name. Anyone seeing 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. Because the public will perceive the Disputed Domain Name to be owned or with the Complainant, the Respondent is exploiting the goodwill and image of the Complainant’s trademark, which may result in dilution and other damage to the Complainant’s trademark.
In relation to the second limb of the Policy the Complainant submits that the fame of its LEGO trademark and the absence of any licence or authorisation granted by the Complainant to the Respondent precludes the Respondent from being able to claim any legitimate or bona fide use of the Disputed Domain Name. The Complainant notes that the Respondent is not an authorised dealer of the Complainant’s products and has never had a business relationship with the Complainant. Accordingly, so the Complainant submits, the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. Instead the Respondent has chosen the Disputed Domain Name to generate traffic and income through a website offering LEGO products, as well as promoting products from other brands not related to the Complainant. By this means the Respondent is using the LEGO trademark to mislead Internet users and attract them to his commercial website. Accordingly, the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
By a similar process of reasoning as that adopted in respect of the second limb, the Complainant notes the fame of its worldwide trademark LEGO and notes especially that the website to which the Disputed Domain Name resolves displays the Complainant’s famous logo and LEGO products in addition to numerous nonLEGO products from the Complainant’s competitors.
The Disputed Domain Name was registered on May 2, 2014 whereas the Complainant registered its LEGO trademark in the United States of America, where the Respondent resides, many decades earlier. It is plainly beyond doubt that the Respondent was aware of the Complainant’s legal rights in the name LEGO at the time of his registration of the Disputed Domain Name. The Complainant first tried to contact the Respondent on June 23, 2014, through a cease and desist letter by which the Respondent was requested to voluntarily transfer the Disputed Domain Name to the Complainant in return for reimbursement of his expenses of registration together with any transfer fees. After a follow-up communication the Respondent asserted that a disclaimer in the form “Lego is a registered trademark of the Lego corporation, all rights reserved” on the website to which the Disputed Domain Name resolves would cure any violation of the Complainant’s trademark rights. In addition, the Respondent claimed to generate income, not only for itself but for the Complainant by selling its products. In response the Complainant submits that a disclaimer cannot cure bad faith when bad faith has been established by other factors. Since the website to which the Disputed Domain Name resolves contains many links to other commercial websites at which all kinds of products from a wide range of competing brands are offered, the Complainant asserts that it is clear that bad faith has been established by these other factors. The Complainant goes on to submit that the sponsored links and click-through arrangements associated with the website to which the Disputed Domain Name resolves cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Disputed Domain Name. In addition, the Respondent cannot be considered as a reseller of LEGO products as the Respondent simply acquires revenue when a visitor clicks through to a website from which those products can be acquired from others.
The Complainant asserts that it is clear that the Respondent is using the Disputed Domain Name to intentionally attempt to attract Internet users to his website for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of his website. Pursuant to paragraph 4(b)(iv) of the Policy the Complainant submits that this constitutes evidence of both bad faith registration and bad faith use, for the purposes of paragraph 4(a)(iii) of the Policy.
As noted above, the Respondent did not file a document formally responding in turn to each of the grounds of the Complaint. His emails dated October 23 and October 28, 2014 are the only communications received from the Respondent by the Center in respect of the Complaint. The Panel discerns the following putative contentions from those emails.
The Respondent claims to have created the Disputed Domain Name (as well as <legobytes.com>) “in good faith to promote and create more sales” for the Complainant and “donating all of the funds to the disabled Veterans”. He goes on to state that “I have not earned any affiliate revenue from these sites but the charity organisation was my full goal which I thought would create more sales” for the Complainant.
The Respondent says that he had “no bad intentions when creating these sites and even posted on my sites that Lego was a registered trademark of” the Complainant.
The Respondent concludes his October 23 communication by saying “if you can offer me a fair price for the sites and pay through PayPal I will transfer these sites to the Lego Corp immediately. I am disabled myself and meant to do no harm by creating these sites”.
The Complainant having offered only re-imbursement of the Respondent’s expenses of registering and transferring the Disputed Domain Name, the Respondent’s October 28, 2014 communication expanded upon his stance of October 23 by clarifying that “as far as your offer to just pay me the actual costs and all the hassle you want me to go through with receipts, etc, forget about it I will not give up the sites. Do what you have to do and see how much you can sue a disabled person and I’ll make a big stink that the sites were created for the disabled veterans. See how far that goes for USA sales for Lego. Stop emailing and harassing me and do what you need to do and I will do what I have to and post where ever I can about the charity organisation sites I have made”.
6. Discussion and Findings
The Complainant bears the onus of proof on all elements of the Policy. Accordingly, in the context of this particular case, it is for the Complainant to persuade the Panel, on the balance of probabilities, that the Disputed Domain Name <legoboss.com> is identical or confusingly similar to its LEGO trademark, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and that the Disputed Domain Name was registered and is being used in bad faith.
The Panel will consider each of these grounds in turn.
A. Identical or Confusingly Similar
Although the Complainant’s LEGO trademark is wholly contained within the Disputed Domain Name the suffixing of “boss” renders it sufficiently different to avoid a finding of identicality. However, for the reasons given by the Complainant in its submission, the “boss” suffix does nothing to dissociate the Disputed Domain Name from the Complainant or counteract the association engendered by the inclusion of its famous LEGO trademark. Accordingly, the Panel has no difficulty in concluding that the Disputed Domain Name is confusingly similar to the Complainant’s LEGO trademark.
B. Rights or Legitimate Interests
Whilst no formal Response has been filed, and whether the Panel treats the Respondent’s communications of October 23 or October 28, or both of them together, as the Response, or simply as evidence or submissions before the Panel, it is abundantly clear that the website to which the Disputed Domain Name resolves, either directly or as a result of clicking through further hyperlinks there displayed, offers for sale products not associated with the Complainant as well as products bearing the LEGO brand being sold without the authority of the Complainant. That conduct creates no rights or legitimate interests on which the Respondent can rely. The Respondent having asserted no other basis for his conduct the Complainant’s submissions on this limb of the Policy must prevail. Accordingly, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
C. Registered and Used in Bad Faith
Even if the Panel were to believe the Respondent’s claim that he registered the Disputed Domain Name in good faith with a view to generating profits from click-through revenue that he could donate to worthy charitable causes, the fact remains that he was leveraging the Complainant’s LEGO trademark portion of the Disputed Domain Name to attract Internet users to that website for commercial gain within the meaning of paragraph 4(b)(iv) of the Policy. The Panel notes that the Respondent was apparently doing the same with <legobytes.com>. As this constitutes evidence of both bad faith registration and bad faith use of the Disputed Domain Name, for the purposes of paragraph 4(a)(iii) of the Policy, the Panel finds that the Complainant has made out that third limb of the Policy.
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 <legoboss.com> be transferred to the Complainant.
Philip N. Argy
Date: December 4, 2014