WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Daniel Pinegar
Case No. D2014-2142
1. The Parties
The Complainant is LEGO Juris A/S, Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Daniel Pinegar, Alexandria, Virginia, United States of America, self-represented
2. The Domain Name and Registrar
The disputed domain name <legos.toys> (the “Domain Name”) is registered with 1&1 Internet AG (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2014. On December 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 12, 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 December 18, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2015.
On January 7, 2015 the Respondent sent to the Center an email requesting a 60 day extension of time to seek legal counsel and respond to the Complaint. It also asserted that the Respondent had not been properly served with a hard copy of the Complaint by “legally certified mail”.
On January 8, 2015 the Complainant requested a suspension of this proceeding until February 7, 2015. On January 8, 2015 the Center ordered a suspension of this proceeding until February 8, 2015. On January 26, 2015, the Complainant requested that the suspension be lifted. On January 26, 2015, the Complainant also lodged a “Supplemental Filing” (the “Supplemental Filing”). On January 27, 2015 the Center indicated to the Complainant that the Rules contained no provision allowing the Supplemental Filing and it would be at the discretion of the Panel whether to consider the Supplemental Filing.
On February 2, 2015, the Respondent sent an email to the Center asking it to explain why his original request for an extension of time had been ignored, and alleging the Center was biased in favour of the Complainant. On February 4, 2015 the Center sent an email to the Respondent declining his request for an extension of time. The email stated this decision had been reached taking into account that (a) the Respondent’s request was received on the deadline for the due date for Response, (b) that the proceeding was suspended from January 7, 2015 until February 8, 2015, and (c) that there did not appear to be exceptional circumstances, as required by Rules, paragraph 5(d) to grant such an extension. The email also stated that the Respondent’s communication would be transmitted to the Panel (when appointed) and if the Respondent wishes to make a late Response to the Complaint, the Center will bring the Response to the Panel’s attention (when appointed), and it will be at the sole discretion of the Panel to consider it.
On February 4, 2015, the Respondent sent an email to the Center again alleging bias and requesting the removal of the case manager assigned to the case, and complaining about the process used to appoint the Panel.
The Center appointed Nick J. Gardner as the sole panelist in this matter on February 5, 2015. 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. On February 5, 2015, the Center notified the parties of the appointment of the Panel.
On February 9, 2015 the Panel made Procedural Order No 1 in the following terms:
“Having regard to [the procedural background as stated above], and the Rules and in particular the Panel’s powers under paragraph 10 of the Rules, the Panel determines and orders as follows:
1) The Respondent was properly served with the Complaint in accordance with the Rules;
2) The Panel is properly appointed in accordance with the Rules;
3) There is no basis to remove the case manager assigned by the Center;
4) The Supplemental Filing will be considered by the Panel in conjunction with the Complaint;
5) The Respondent is allowed until February 20, 2015 to lodge a Response relating to both the Complaint and the Supplemental Filing. The Response should comply with the Rules;
6) The due date for the Panel’s decision is extended until March 6, 2015.”
On February 21, 2015, the Respondent lodged his Response. The Panel takes no issue with regard to this being lodged one day late.
4. Factual Background
The Complainant is a Danish company. It manufactures and sells one of the most popular children’s toys in the world, namely a range of interconnecting building bricks, although its products have expanded widely beyond that basic concept. Its products are marketed under the name LEGO and it is the owner of trade mark registrations for the LEGO word and stylised LEGO word trade marks in numerous countries worldwide, including the United Sates (the “Trade Marks”). Such registrations predate the date of registration of the Domain Name. The Complainant has been enormously successful, carries on business on a very substantial scale and its products and the LEGO name are very widely known and recognised.
The Respondent is an individual with an address in the United States. He is an attorney.
The Domain Name was registered on July 30, 2014. After registration the Domain Name was connected to a website with “pay per click” links to third party sites.
The Complainant first tried to contact the Respondent on October 21, 2014, through a cease and desist letter sent by email. The Complainant advised the Respondent about the unauthorized use of the LEGO trademark within the Domain Name, requested a voluntary transfer of the Domain Name and offered compensation for the expenses of registration and transfer fees (not exceeding out of pocket expenses). The Respondent replied by stating that the Domain Name was registered as part of the fair use doctrine, among other doctrines, and not for commercial purposes. The Respondent also stated that once the website was complete it would be patently unaffiliated with the Lego Group with appropriate disclaimers.
At some stage after the Complainant contacted the Respondent, the web site connected to the Domain Name was removed. This was the position at the date the original Complaint was filed. By the time the Supplemental Filing, a different website had been connected to the Domain Name. This comprises three pages – Home, Gallery and News. The home page commences with a box containing the text “If you are looking to BUY LEGO bricks, people or play sets, we are unaffiliated with that business; please try your web search again. *** This is an educational and news website delivering independent information about this toy”. It then states “Welcome to our website. We hope that everyone plays nice! Our website is currently UNDER DEVELOPMENT. Please come back again soon!” There is then a limited amount of commentary within the rest of the site, of which the following is a typical example:
“No, we are not affiliated with this toy beheamoth [sic], but not everything about it is "awesome." In fact, when Greenpeace came out with its own anti-LEGO®/Shell marketing campaign video earlier this year urging LEGO to dump its USD 116 million dollar co-marketing agreement with Dutch Shell, initially the CEO rejected the assertion and attempted with its Warner Brothers partner to squash all online videos and websites describing LEGO toys. Later, the public fury reached a tipping point and LEGO® finally dropped the marketing agreement. One has to ask, what was the psychology by Shell and LEGO for the agreement in the first place except to imbed the oil company (and hence gasoline purchases once those kiddies finally got behind the wheel) with our young impressionable kids?”
The photo/gallery page contains (as at the date of this decision) one photograph of a letter apparently written by a child complaining that there are not enough Lego toys for girls, and eight YouTube videos which appear to relate to issues such as the hazards of choking on small toys.
5. Parties’ Contentions
The Complainant has submitted detailed evidence as to the nature and extent of its activities. The main points emerging from this evidence may be summarised as follows.
The Complainant is the owner of the trademark LEGO and various other trademarks used in connection with what it describes as “the famous LEGO brand of construction toys and other LEGO branded products”.
Predecessors to the Complainant and its licensees commenced use of the LEGO mark in the United States during 1953, to identify construction toys made and sold by them. Since then the Complainant and its licensees, or their predecessors, have made extensive, exclusive and continuous use of the LEGO mark. Over the years, the business of making and selling LEGO brand toys has grown remarkably. By way of example, the revenue for the LEGO Group in 2008 was more than USD 1.8 billion. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in the United States.
The Complainant says that the trademark LEGO is among the best-known trademarks in the world. In support of this claim it refers to a list of the top 500 “Superbrands” for 2009/10, provided by Superbrands UK, showing LEGO as winner in the category of “Childs Products – Toys and Education”. TIME magazine has announced LEGO to be the “Most Influential Toy of All Time”.
The Complainant maintains an extensive web site under the domain name <lego.com>. The Complainant is also the owner of more than 2,400 domain names containing the term “lego”.
So far as the Policy is concerned the Complainant’s main contentions can be summarised as follows.
A. The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
The Domain Name is confusingly similar to the Trade Marks. The dominant part of the Domain Name is simply the plural of the word “lego”, which is identical to the Complainant’s registered trade mark LEGO.
The addition of the new generic Top-Level Domain (new gTLD) “.toys” does not distinguish the Domain Name from the Complainant’s trademark. Instead, taking into account that the Complainant is world famous for making and selling LEGO branded toys, the new gTLD is contributing to the confusing similarity between the trademark and the Domain Name does not have any impact on the overall impression of the dominant portion of the Domain Name and are therefore irrelevant to determine the confusing similarity between the Trade Marks and the Domain Name.
Anyone who sees the Domain Name is bound to mistake it for a domain name related to the Complainant. The likelihood of confusion includes an obvious association with the Trade Marks of the Complainant. With reference to the reputation of the trade mark LEGO there is a considerable risk that the trade public will perceive the Domain Name either as a domain name owned by the Complainant or that there is some kind of commercial relation with the Complainant. The Trade marks also risk being tarnished by being connected to the website. By using the trademark LEGO as a dominant part of the Domain Name, the Respondent exploits the goodwill and the image of the Trade Marks, which may result in dilution and other damage for the Trade Marks. Anyone looking at the Domain Name, even without being aware of the content, is likely to think that the Domain Name is in some way connected to the Complainant (“initial interest confusion”).
B. The Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant has not found that the Respondent has any registered trade marks or trade names corresponding to the Domain Name. The Complainant has also not found anything that would suggest that the Respondent has been using LEGO in any other way that would give him any rights or legitimate interests in the domain name.
No licence or authorisation of any other kind has been given by the Complainant to the Respondent to use the Trade Marks. The Respondent is not an authorised dealer of the Complainant’s products and has never had a business relationship with the Complainant.
The mere registration of a domain name does not give the owner a rights or a legitimate interest in respect of the domain name.
LEGO is a famous trade mark worldwide and an extremely valuable asset. It is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in the name at the time of registration. It is rather obvious that it is the fame of the trade mark that has motivated the respondent to register the Domain Name. That is, the Respondent cannot 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.
The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. Use which intentionally trades on the fame of another can not constitute a bona fide offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy. The Respondent cannot plausibly argue that he did not intentionally register the Domain Name so as to benefit from the goodwill of the LEGO mark.
C. The Domain Name was registered and is being used in bad faith.
The Respondent registered the Domain Name on July 30, 2014. This date is subsequent to when the Complainant registered the trademark LEGO in the United States, where the Respondent resides, and elsewhere by several decades (see Annex 6AB). Considering that LEGO is a world famous trademark it is highly likely that the Respondent knew of the Complainant’s rights in the trademark LEGO at the time of the registration and intended to use the trademark’s popularity to direct traffic to its commercial website with sponsored links. Indeed, the Complainant’s official website “www.lego.com” is extremely popular, ranked the 537th most visited website in the United States and the 1,317 most visited website in the world on the Alexa Traffic Rank.
The Complainant says in its Supplemental filing that the Respondent has also registered the domain names <hasbro.toys>, <giJoe.toys> and <nerf.toys>, all incorporating trademarks owned by the Complainant’s competitor, the toy manufacturer Hasbro, Inc., which may in itself constitute evidence of a pattern of bad faith conduct. The website connected to “www.hasbro.toys” is under construction with no real content except for a statement declaring that it is a “news and social commentary website about toys in the modern age”, similar to the current website connected to the Domain Name.
The Respondent should be considered to have registered and to be using the Domain Name in bad faith.
The Respondent has provided a Response which is overly-long (it exceeds the 5000 word limit provided by the Supplemental Rules though the Panel intends to ignore this), argumentative and replete with irrelevant material. In this section the Panel summarises as briefly as it sensibly can the key arguments that the Respondent appears to advance. It is worth observing that although the Respondent is an attorney he apparently does not accept that by his act of registering the Domain Name he has contractually bound himself to the Policy and the Rules in the event of a UDRP Complaint like the present one being brought against him. He has raised numerous procedural points with the Center to this effect and indeed in his Response he continues to object to the process used to appoint the Panel, the timing involved and other procedural matters, and reserves his rights to continue to object to such issues. Many of his procedural arguments in the view of the Panel fail to appreciate the correct position and are wholly misplaced. The Panel therefore summarises them only very briefly. The Respondent’s case is, as the Panel understands it, as follows:
The Complainant has failed to show that it properly filed the Complaint, that the Center is the appropriate forum and venue, and that U.S. laws pertaining to trademarks, including the Federal Rules of Civil Procedure and the Federal Rules of Evidence, are not applicable and binding. The Respondent goes on to argue at length that applicable United States law means he is not bound by the Policy.
The Complaint was not a Legal Rights Objections (LRO), filed under either the Trademark Clearinghouse TMCH) or the Uniform Rapid Suspension System (URS) mechanisms which were available in relation to the .toys gTLD. The Respondent relies on the fact that he says the Complainant took no steps to proactively protect its brand through available procedures as new top level domains became available. He says as a result it is now barred by the doctrines of laches and estoppel from bringing the present Complaint.
The Respondent says he is a well known consumer rights advocate in the United States. He says he maintains a popular Internet presence and is a “watch-dog for consumer protection”, as evidenced by his Twitter account “Consumer Protection @LegalCenter” and that he joined and has been advocating for various consumer interests since April, 2009.
The Respondent advances arguments about the location of the Registrar and the applicable jurisdiction for the dispute. The Panel does not understand those arguments which do not in any event seem to go to any issue which is before the Panel so does not repeat them further here.
The Respondent says that insofar as the Domain Name was initially connected to a parking page this was effected by the Registrar and had nothing to do with him.
The Respondent says the Complainant is bringing this Complaint to quash legitimate public dissent about its products and to interfere with the Respondent’s right of free speech. The Respondent cites as examples of public interest the choking hazard associated with the Complainant’s products, the Complainant’s toys being gender biased in favour of boys.
The Respondent also says this Complaint is improperly brought to protect the Complainant’s commercial interests and affiliations with commercial organisations such as Shell Oil, and this amounts to Reverse Domain Name Hijacking(“RDNH”). The Respondent goes on to describe in some detail a campaign by the pressure group Greenpeace seeking to disrupt the Complainant’s relationship with Shell Oil (the Complainant was apparently selling some toys branded with Shell logos) and suggests this was leading to “insurmountable public pressure” on the Complainant which is in some way relevant to the bringing of the Complaint.
The Complainant also relies on the fact (and cites various decisions) that the Complainant has lost patent protection for its products and failed to maintain trade mark protection for the shape of its products.
The Respondent also says that the Domain Name is not confusingly similar to that of the Complainant. As the Panel understands it this is because he says no one uses or looks in the “.toys” Top Level Domain and the algorithms used by search engines will readily distinguish any website located at the Domain Name from those of the Complainant. He also says the addition of the “s” distinguishes the Domain Name and removes any possibility of confusing similarity.
The Respondent relies on the current contents of his website as being clearly unrelated to the Complainant. He also relies upon specific text and disclaimers contained on the site. The Respondent says his website is “an educational website designed to educate parents and consumers”. He also says it has not been developed further because he has been diverted from doing so by the Complainant having brought this Complaint.
The Respondent also says the Complainant has “manufactured evidence”.
He also says that the Complainant’s supplemental filing is inadmissible as it relates to material generated during settlement discussions.
6. Discussion and Findings
6.1. Procedural Matters
So far as the Panel is concerned the evidence in this case establishes that the Respondent as the registrant of the Domain Name is a party to an agreement which contractually binds him to the Policy and the Rules. The Respondent has also been duly served with the Complaint in accordance with the relevant applicable requirements of the Rules and the Policy and the Panel concludes this proceeding is properly constituted and it is able and required to proceed to render a decision. The Panel in any event notes that the record clearly shows the Respondent has been in receipt of the Complaint since on or about December 18, 2014, and has had more than adequate time to prepare his Response, particularly given he is an attorney.
The Respondent’s multiple objections to the Complaint and/or the jurisdiction of the Panel based on what he says are applicable US principles including constitutional rights to free speech are not for the Panel to determine (although the Panel notes that this Complaint is directed only at preventing the use of the Domain Name and does not seek to suggest he is prevented from expressing his views under another non-abusive domain name). It is the function of the Panel to decide this dispute in accordance with the Policy and the Rules. Any wider relief the Respondent considers he is entitled to (and the Panel offers no opinion as to whether such relief is appropriate) is something he should pursue elsewhere. The Panel notes that in his Response the Respondent has stated that “Other legal proceedings are now being commenced in the United States against Complainant to protect the rights of the Respondent should the Panel not rule in its favor”. That is a matter for the Respondent and does not prevent the Panel deciding this case on the material before it.
The Panel also declines to find that either laches or estoppel prevent the Complainant from bringing this Complaint. There is no obligation upon brand owners to have availed themselves of whatever procedures were available for their benefit during the processes involved in the creation of new top level domains such as the “.toys” gTLD in issue here. Failure to do so does not raise any sort of estoppel. Laches is as a general rule not relevant in UDRP proceedings but in any event in the present case the Complainant has acted expeditiously and the Panel concludes that further consideration of the relevant principles is unnecessary.
The Panel does not need to rule on the Respondent’s objection to the content of the Complainant’s Supplemental Filing at least in so far as it relates to matters allegedly discussed in settlement discussions. The Panel can determine this case without recourse to the disputed material. The Panel does admit the Complainant’s evidence that the Respondent has registered various other domain names, as this is a matter of public record and has not been disputed by the Respondent.
The Panel also does not agree with the Respondent’s arguments that the present claim is improperly brought because it relates to wider commercial interests that the Complainant has such as its alleged dispute with Greenpeace concerning the Complainant’s affiliation with Shell Oil. Such allegations are fanciful in the extreme, given the nature and size of the Complainant’s business and appear to the Panel to be wholly irrelevant and are one example of the many obfuscations introduced into this case by the Respondent. Nothing in the material before the Panel suggests this claim was brought other than as a genuine claim in relation to a domain name the Complainant considered to be abusive. The Panel also fails to understand the submission by the Respondent that the Complainant has “manufactured evidence” and declines so to find.
6.2. Substantive Matters
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) The Domain Name is identical with or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Marks acquired through registration and use. The evidence clearly establishes the LEGO trademark and the Trade Marks as being well known. The Panel notes that numerous previous UDRP panels have reached a similar conclusion (see Lego Juris A/S v. Hu Liang/Dolego, WIPO Case No. D2009-0848; LEGO Juris A/S v. Whois Privacy Protection Service, Inc./ Stop2Shop, G V, WIPO Case No. D2009-0784; LEGO Juris A/S v. Private, Registration / Dohe Dot, WIPO Case No. D2009-0753; LEGO Juris A/S v. EcomMutual, WIPO Case No. D2009-0685; LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680; LEGO Juris A/S v. Deng Yi Xia, WIPO Case No. D2009-0644; LEGO Juris A/S v. Mohamed Ouattara / Integral Assets Ltd, WIPO Case No. D2009-0564; Lego Juris A/S v. Gioacchino Zerbo, WIPO Case No. D2009-0500; LEGO Juris A/S v. Mike Morgan, WIPO Case No. D2009-0438; LEGO Juris A/S v. Bladimir Boyiko, WIPO Case No. D2009-0437; LEGO Juris A/S v. Domainproxyagent.com and Compsys Domain Solutions Private Limited, WIPO Case No. D2009-0381; LEGO Juris A/S v. Zhijun Guo, WIPO Case No. D2009-0184; LEGO Juris A/S v. P N S Enterprises, WIPO Case No. D2009-0170; LEGO Juris A/S v. David Palmer, WIPO Case No. D2008-1826; LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715; and LEGO Juris A/S v. Level 5 Corp., WIPO Case No. D2008-1692.)
The Respondent’s arguments that the Complainant has lost patent protection for its products, and failed to maintain trademark protection for the shape of its products are (assuming they are factually correct) wholly irrelevant for the purpose of this element of the Policy and are another example for this Panel of an obfuscation the Respondent has introduced into these proceedings. It is clear that the Complainant has trade mark rights in the word LEGO in many jurisdictions throughout the world, including the United States, where the Respondent is located. By way of example only, the Complainant is the proprietor of US registered trademark number 78882203 registered on June 3, 2008, for the word LEGO. The Respondent appears to suggest that even in this respect the Complainant’s rights are in some way flawed or limited but the Panel does not understand this submission and does not accept it. The Complainant has shown it has relevant rights in the trademark LEGO. That is all that is required in relation to this issue.
In the present case the only difference between the Domain Name and the Complainant’s LEGO trade mark (ignoring for this purpose the “.toys” new generic top level domain suffix) is the addition of the letter “s”. That is manifestly insufficient to distinguish the Domain Name from the LEGO trade mark. So far as the “.toys” suffix is concerned the Panel agrees with the Complainant that because this suffix corresponds to the Complainant’s area of activity the possibility of confusion is increased. The Panel adopts and agrees with the reasoning of the panel in Conair Corp. v. Pan Pin, Hong Kong Shunda International Co. Limited, WIPO Case No. D2014-1564, where the panel stated that: “Commonly, it is permissible for a panel to ignore the top level domain identifier when assessing identity and confusing similarity for the purposes of paragraph 4(a)(i) of the Policy. However, in this case the top level domain identifier “.pro”, while descriptive (and in that sense, generic), is precisely descriptive of the market for which the Complainant claims that its electrical hair stylers are suitable, namely the professional market, and its presence in the Domain Name therefore renders the risk of confusion all the more likely.”
The Panel does not agree with the Respondent’s various submissions to the contrary, which are difficult to follow and ultimately make no sense. Quite simply the term “legos” is similar to the trade mark LEGO and the addition of the new gTLD “.toys” corresponding as it does to the Complainant’s field of activity increases that confusing similarity.
Accordingly the Panel finds that the Domain Name is confusingly similar to the Complainant’s Trade Marks and the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to the Respondent of the dispute, use 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 trade mark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Domain Name or to use the Trade Marks. The Complainant has prior rights in the Trade Marks which precede the Respondent’s registration and use of the Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the Domain Name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003 0455).
The Respondent’s case is that he is in the course of developing a bona fide campaigning web site seeking to draw to the public’s attention certain issues of interest concerning the Complainant or its products. The Panel views this claim with skepticism but this is addressed further below in relation to the question of bad faith.
For the purpose of the question of rights and legitimate interest the Panel takes the view that even if the Respondent’s statement was true, this does not entitle him to use a domain name which is confusingly similar to the Complainant’s LEGO trade mark for this purpose. In this regard, noting that the Complainant is not a US entity, the Panel adopts and agrees with the view set out as “View 1” in relation to paragraph 2.4 “Can a criticism site generate rights or legitimate interests in the disputed domain name” in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). View 1 is as follows: “The right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant's trademark. That is especially the case if the respondent is using the trademark alone as the domain name (i.e.,<trademark.tld>) as that may be understood by Internet users as impersonating the trademark owner. Where the domain name comprises the protected trademark plus an additional, typically derogatory term (e.g., trademarksucks.tld>), some panels have applied View 2 below.” In the present case no additional terminology is included within the Domain Name to indicate the Respondent’s alleged purpose in operating an information/consumer protection website.
Accordingly the Panel finds that the Respondent has failed to produce sufficient evidence to establish he has rights or legitimate interests in the Domain Name. The second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of a respondent:
“By using the disputed domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
If this issue were to be considered solely in relation to the material contained in the original Complaint it would be straightforward to conclude the registration and use in question were in bad faith. At that stage the only use had been in respect of a parking page with pay- per-click links. The evidence is clear that LEGO is a well known trademark that enjoys a worldwide reputation. This has been confirmed by many previous UDRP decisions (see above). In previous UDRP decisions, panels have considered that in certain circumstances when a trademark is well known, the respondent’s bad faith could be inferred (AT&T Corp. v. LaPorte Holdings, Inc., WIPO Case No. D2004 1088: “Bad faith can be presumed based on the fame of Complainant’s marks, such that the Respondent was aware or should have been aware of Complainant’s well-known marks and claims of rights thereto.”)
More particularly, previous UDRP panels have asserted, in relation to the LEGO trademark that:
“Given the world-wide fame of Lego, it seems clear that the Respondent was aware of the Complainant and at least the goodwill in the name Lego (and perhaps also the Lego trademark), when it registered the Domain Name”. (LEGO Juris A/S v. Mohamed Ouattara / Integral Assets Ltd, WIPO Case No. D2009-0564).
The use of the domain name for a parking page is well understood. The domain name owner “parks” the domain name with a domain name parking service. The service provider then generates a page that incorporates sponsored links or links to sponsored links. When an Internet user clicks on these sponsored links, the entity sponsoring that link will make a payment. This “click-through revenue” typically may be split between the domain name parking service provider and the owner of the domain name (see for example Owens Corning v. NA, WIPO Case No. D2007-1143).
Traffic is attracted to the website by virtue of the confusing similarity between the Domain Name and the trademark of the Complainant. Such confusion is clearly intended to result in commercial gain given the fact that revenue will be earned from the parking site as a result of this “pay per click” traffic to the linked sites. In this case the Panel does not know whether the Respondent earned income himself from this arrangement or whether it was retained by the service provider. That does not matter. As has been pointed out in previous UDRP decisions (See, Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007 1912), it is not relevant to know whether Respondent itself derived income on a pay-per-click basis from the links displayed on the parking site to which the domain name resolved. Paragraph 4(b)(iv) of the Policy requires a respondent to intend to attract Internet users “for commercial gain”, but this gain does not need to be derived by the respondent itself.
Given the fame of the LEGO trademark, if all that was involved was the use of the Domain Name for a web site with pay –per –click links, the Panel would find that the Domain Name was registered in bad faith. It is however in the present case also necessary for this Panel also to consider matters which have occurred since the Complaint was filed, and the justification now advanced by the Respondent, namely that his purpose in registering the Domain Name was to provide some sort of consumer information site. Having considered all the material that is before it, the Panel declines to accept the Respondent’s explanation. That is for the following reasons:
The Respondent says he is “a well known consumer rights advocate in the United States” and a “watch-dog for consumer protection”. He says he has been engaged in this activity since 2009. The Respondent has not produced a shred of evidence to support his claim, beyond a passing and unexplained reference to a Twitter account he says he has established which on its own evidences nothing. As an attorney it is to be assumed the Respondent would understand the basic principles of evidence and be able to adduce credible supporting materials if his claim were true. Such materials would be expected to comprise some or all of the following - press coverage of his activities, web sites relating to other campaigns he has conducted, correspondence with organisations he was campaigning against, correspondence with other campaigners, contemporaneous e mails about his activities, details of relevant litigation he has been involved with and so on. He has not done so - which simply defies belief if his account were true.
Nowhere has the Respondent provided any explanation of why he has an interest in toys in particular as the focus for his supposed campaigning activities. Most campaigning or criticism web sites usually start with a person who has some personal reason for starting a campaign, or some connection with the subject matter of the campaign. No detail of any such background has been provided by the Respondent in this case which adds to the air of unreality associated with the Respondent’s claims.
Prior to objection from the Complainant the Domain Name was connected to a web page with links to third party sites, not a bona fide consumer interest page. If the Respondent’s claim was genuine, one would have expected the Domain Name to have been used differently. Even assuming the Respondent’s explanation is correct and that this was effected by the Registrar without his knowledge the Panel finds it significant that the page that is now connected to the Domain Name purports to be a campaigning/consumer interest site but is rudimentary in the extreme and simply contains material culled from the Internet or YouTube that the Panel considers could have been assembled in a matter of hours. It has all the hallmarks of a smokescreen created after the event in an attempt to legitimize what was illegitimate. The Panel does not find the Respondent’s protestation that the actions of the Complainant have prevented him further developing this site to be convincing.
The Respondent has registered <hasbro.toys>, <gijoe.toys> and <nerf.toys>, all incorporating trademarks owned by the Complainant’s competitor, the toy manufacturer Hasbro, Inc. The Respondent has not explained these at all. Conceivably the Panel imagines the Respondent might say these relate to some sort of wider campaign the Respondent has involving other toys. However at the date of this decision the “www.hasbro.toys” site is connected to a website that is even more rudimentary than that connected to the Domain Name, and which has no substantive content at all. Attempting to access a web site at the domain name <gijoe.toys> redirects to what appears to be a third party site concerning the “GI Joe Museum” which contains the history and other material about the toy of that name. Attempting to access a web site at www.nerf.toys redirects to the www.hasboro.toys website.
Looking at the evidence as a whole the Panel on the balance of probabilities does not accept the explanation offered by the Respondent. The Panel is conscious that proceedings under the UDRP are of a limited and restricted nature, do not involve oral hearings, discovery or cross examination, and hence are only applicable to clear cut cases, and it is not usually appropriate to decide disputed questions of fact or matters of truth or falsehood. That does not however mean the Panel cannot reach a conclusion as to the veracity of a case that is being advanced where the only evidence that is provided is in the form of conclusory statements that are inherently not credible, and which are not supported by relevant corrobative or third party evidence. The Panel considers this to be such a case. The Respondent’s case is simply not credible and the Panel concludes that on the balance of probabilities the Respondent’s claim to be involved in establishing a bona fide consumer interest site is not true.
The Panel does not know precisely what purposes the Respondent had in mind when registering the Domain Name, and whether such uses extended beyond the parking page with click through links which was first associated with the Domain Name. In any event the Panel infers, in the absence of a credible explanation from the Respondent, that the intended use was an illegitimate attempt to take advantage of the reputation and fame of the Complainant’s well known name and Trade Marks. As such this amounts to registration and use in bad faith.
As a result, the Panel finds that the Domain Name has been registered and used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <legos.toys>, be transferred to the Complainant. It also follows that the Respondent’s claim that the Complainant be found to have engaged in Reverse Domain Name Hijacking fails.
Nick J. Gardner
Date: March 6, 2015