WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Billy Alsbrooks, Blessed Factory
Case No. D2014-2028
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Billy Alsbrooks, Blessed Factory of Deland, Florida, United States of America (the “United States”).
2. The Domain Name and Registrar
The disputed domain name <legobuddies.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2014. On November 18, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 18, 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” 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 November 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 15, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 17, 2014.
The Center appointed Emre Kerim Yardimci as the sole panelist in this matter on December 24, 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 LEGO Juris A/S is the owner of the trademark LEGO and other trademarks used since 1953 in connection with the LEGO brand toys which are sold in more than 130 countries including the United States, where the Respondent is located. The United States trademark registration number is 3440699 for LEGO logo.
The Complainant registered more than 2,400 domain names containing the term “LEGO”.
The trademark LEGO is among the best-known and most famous trademarks in the world as shown by the evidence presented by the Complainant.
The Respondent has registered the disputed domain name with the Registrar on February 25, 2014 and redirected it to its website to “www.kickstarter.com” for obtaining funds for its cartoon book project called “Blessed Buddies”.
The Complainant tried to contact the Respondent on October 21, 2014 through a cease and desist letter by email and requested a voluntary transfer of the disputed domain name where the Respondent requested from the Complainant to submit an offer highlighting that he received many interesting offers from certain Chinese companies.
5. Parties’ Contentions
The dominant part of the disputed domain name comprises the word “lego”, which is identical to the Complainant’s registered trademark LEGO. The disputed domain name also comprises the suffix “buddies” and this suffix “buddies” does not detract from the overall impression and the disputed domain name is clearly confusingly similar to the Complainant’s registered trademark LEGO.
The fame of the LEGO trademark has been confirmed in numerous previous UDRP decisions.
By using the disputed domain name, the Respondent exploits the goodwill and the image of the LEGO trademark, which may result in dilution and other damage for the Complainant’s trademarks.
The Respondent does not own any registered trademark or trade names corresponding to the disputed domain name.
The Complainant claims that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and instead the Respondent has intentionally chosen the disptued domain name in order to generate traffic and income through a website requesting monetary donations to produce books and school kits part of a project called “Blessed Buddies”.
It is clear that the Respondent was aware of the rights the Complainant has in the trademark and the value of said trademark, at the point of the registration.
The Respondent is using the disputed domain name to attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name <legobuddies.com> wholly incorporates the Complainant’s distinctive trademark and a descriptive term “buddies” as it refers to LEGO characters.
The Panel is of the opinion that the Respondent’s addition of the term “buddies” is insufficient to distinguish the disputed domain name from relevant LEGO trademarks in accordance with LEGO Juris A/S v. Domain Admin, PrivacyProtect.org / Andrey Zvezdin, WIPO Case No. D2012-1963 concerning the domain name <legofriends.info> where the panel concluded that:
“In this Panel’s opinion, the addition of the term “friends” in the disputed domain name is not relevant and leads the public to believe that the Complainant is the owner of the disputed domain name.”
Additionally, in LEGO Juris A/S v. Matthew Griffith, Merlix LLC, Domain Administrator, WIPO Case No. D2012-0443 involving the domain name <legobuilder.com>, the panel found that the term “builder” should be disregarded for the purpose of this analysis.
For the reasons mentioned above, the Panel finds that the disputed domain name <legobuddies.com> is confusingly similar to the Complainant’s famous LEGO trademark.
The Complainant has thus fulfilled paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has alleged that the Respondent has not indicated any sort of legitimate reason for having registered the disputed domain name and has not provided any plausible bona fide reason for having it registered. It is also clear from the undisputed evidences submitted by the Complainant that the Respondent appears to be interested in selling the disputed domain name.
The Complainant has made a prima facie case in support of its allegations and, therefore, the burden of production shifts to the Respondent to show that it does have rights or legitimate interests in the disputed domain name, according to paragraph 4(a)(ii) of the Policy. The Respondent did not reply to the Complainant’s contentions and, therefore, did not submit any evidence of rights or legitimate interests over the disputed domain name in accordance with paragraph 4(c) of the Policy.
The Panel examined the website “www.kickstarter.com” where the Respondent is requesting funds to produce books and school kits part of a project called “Blessed Buddies”. The Panel does not find such use as a bona fide offering of goods or services - which is also corroborated by the fact that the Respondent is in the meantime allegedly trying to sell the disputed domain name to third parties.
The Complainant, having made a prima facie case that the Respondent lacks rights or legitimate interests with the disputed domain name, which remains unrebutted, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant and its trademark LEGO is a well-known mark in the United States as well as worldwide and was long established and achieved to well-known trademark status prior to the registration by the Respondent of the disputed domain name. The Panel is of the view that at the time the Respondent registered the disputed domain name, the Respondent is more than likely to have been well aware of the LEGO trademarks.
The exchange of correspondence with the Complainant clearly shows in the Panel’s view the Respondent’s intention to have the disputed domain name registered primarily for the purpose of selling it to the right owner for valuable consideration exceeding out-of-pocket expenses. The fact that the Respondent did not approach the Complainant first does not change this evaluation, since the Respondent did not specify his own alleged business intentions, but offered to sell the disputed domain name for apparently more than out-of-pocket expenses by threatening to sell it to Chinese companies and implying through its statement “You might want to study up on Chinese law and their court system” to factually block the transfer of the disputed domain name.
These facts show the apparent intention of the Respondent to intimidate the Complainant to buy the disputed domain name for more than out-of pocket expenses.
Therefore, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
The Complainant has established the requirements of paragraph 4(a)(iii) 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 <legobuddies.com> be transferred to the Complainant.
Emre Kerim Yardimci
Date: January 16, 2015