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WIPO Arbitration and Mediation Center


LEGO Juris A/S v. Juan Mares / WhoisGuard Protected / WhoisGuard, Inc.

Case No. D2015-1724

1. The Parties

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

The Respondent is Juan Mares of Bakersfield, California, United States of America; WhoisGuard Protected / WhoisGuard, Inc. of Panama.

2. The Domain Name and Registrar

The disputed domain name <legoworld.website> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2015. On September 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 29, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant 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 1, 2015 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 amended Complaint on October 1, 2015.

The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on October 8, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 28, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2015.

The Center appointed Jon Lang as the sole panelist in this matter on November 9, 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.

4. Factual Background

The Complainant is based in Denmark and is the owner of the LEGO trademark, and all other trademarks used in connection with the famous LEGO brand 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 close to 4,300 domain names containing the term “lego”.

Not having participated in these proceedings, nothing is known of the Respondent other than that he registered the disputed domain name <legoworld.website> (hereafter the Domain Name) on June 6, 2015.

5. Parties’ Contentions

A. Complainant

General Background

The trademark LEGO is among the best-known trademarks in the world as a result, inter alia, of decades of extensive advertising. Indeed, the LEGO trademark and brand have been recognized as being famous – it is included in a list of the official top 500 Superbrands for 2015, provided by Superbrands UK, which ranks LEGO as winner in the category “Child Products - Toys and Education”. Moreover, the Reputation Institute nominated the LEGO Group as number 9 on their list of “the World’s Most Reputable Companies” 2014, and recently, TIME announced LEGO to be the “Most Influential Toy of All Time”. 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 Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

The Complainant is the owner of the very well-known trademark LEGO and the Domain Name is confusingly similar to that trademark.

The dominant part of the Domain Name comprises the term “lego”, which is identical to the registered trademark LEGO, registered by the Complainant as a trademark (and in domain names) in countries all over the world.

The Domain Name also comprises the generic term “world”. That term is closely linked and associated with the Complainant’s brand and trademark - “LEGO World” is an annual LEGO builders’ convention that is attended by over 70,000 people. Inclusion of the term “world” therefore only serves to underscore and increase the confusing similarity between the Domain Name and the Complainant’s trademark.

The addition of the generic Top-Level Domain (“gTLD”) “.website” does not have any impact on the overall impression of the dominant portion of the Domain Name and is therefore irrelevant in determining confusing similarity between trademark and the Domain Name.

There is a considerable risk that the public will perceive the Domain Name as a domain name owned by the Complainant, or that there is some kind of commercial relationship with the Complainant.

By using the trademark as a dominant part of the Domain Name, the Respondent is exploiting the goodwill and image of the Complainant’s trademark which may result in dilution and other damage to the mark.

The Respondent has no rights or legitimate interests in respect of the Domain Name

It would appear that the Respondent has no registered trademarks or trade names corresponding to the Domain Name.

The Complainant has discovered nothing that would suggest that the Respondent has been using LEGO in any other way that would give him any legitimate rights in the Domain Name. No license or authorization of any kind has been given by the Complainant to the Respondent. The Respondent is not an authorized dealer in the Complainant’s products and has never had a business relationship with it, yet there is no disclaimer on the website to which the Domain Name resolves to explain this.

Given the lack of evidence that the Respondent is using the name “Lego” as a company name or has any other legal rights in the name, it is clear that the Respondent is simply trying to capitalize on the Complainant’s world famous trademark.

The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. The Respondent chose a domain name based on the Complainant’s registered trademark so as to generate traffic and income through a commercial website that has links directing Internet users to another commercial website, namely “www.amazon.com”, which offers all kinds of products from a wide range of different brands, besides those of the Complainant.

The Domain Name was registered and is being used in bad faith

The trademark LEGO has a substantial reputation throughout the world and the considerable value and goodwill of the LEGO mark is most likely a large contributing factor in the Respondent registering the Domain Name.

The date of registration of the Domain Name post dates registration of the LEGO trademark in the European Union and elsewhere, by decades. It is the fame of the trademark that has motivated the Respondent to register the Domain Name. The Respondent cannot claim to have been using the trademark LEGO, without being aware of the Complainant’s rights in it.

The Complainant first tried to contact the Respondent on June 23, 2015, through a “cease and desist” letter, sent by email, requesting a voluntary transfer of the Doman Name. The Complainant also offered payment of the expenses of registration and transfer fees (not exceeding out of pocket expenses). Despite reminders, no reply was ever received.

As mentioned earlier, the Domain Name resolves to a website which directs Internet users to another commercial website, namely “www.amazon.com”. Potential visitors viewing the Domain Name could easily assume that it is operated or endorsed by the Complainant and end up at a commercial website with links to a third party website (Amazon) promoting products from a variety of brands. This is strong evidence of bad faith use.

The Respondent is not making a legitimate noncommercial or fair use of the Domain Name, but is misleadingly diverting consumers for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.

In summary, the Respondent registered and is using the Domain Name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and nothing is known of his position as he did not reply to communications from the Complainant.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a 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. A complainant must prove each of these three elements to succeed.

A. Identical or Confusingly Similar

The Complainant clearly has rights in the LEGO trademark.

Ignoring the gTLD “.website” (as the Panel may do for comparison purposes), the Domain Name comprises the Complainant’s LEGO trademark, followed by the generic word “world”. As the LEGO mark and Domain Name are not identical, the issue of confusing similarity must be considered. Under the UDRP, the test for confusing similarity involves a comparison between the trademark and the domain name to determine the likelihood of Internet user confusion. To satisfy the test, the trademark to which the domain name is said to be confusingly similar, would generally need to be recognizable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent Internet user confusion. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name.

The mark LEGO is clearly recognizable within the Domain Name. It is a famous mark and the first (and most prominent) element of the Domain Name. The only real issue is therefore whether the addition of the word “world” renders the Domain Name something other than confusingly similar to the Complainant’s LEGO mark. In the Panel’s view, the addition of the word “world” would certainly not detract from a finding of confusing similarity. Indeed, inclusion of the word “world”, given the “LEGO World” event referred to earlier, which is attended by over 70,000 people, may well enhance the confusing similarity of the Domain Name with the LEGO mark.

For these reasons, and even if one were to adopt a possibly more stringent test and require, as some UDRP panels have done, a risk that Internet users may actually believe that there is a real connection between the Domain Name and the Complainant and/or its goods and services, the Complainant would satisfy this first element of the three part test. The impression created by the Domain Name may well give rise to the possibility that Internet users would think that the owner of the Domain Name is in fact the owner of the LEGO mark to which it is similar, or that there is some form of association between the Respondent and the Complainant.

The Panel finds that the Domain Name is confusingly similar to the LEGO mark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established.

B. Rights or Legitimate Interests

By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to ask whether there would be anything inappropriate in such a finding.

A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with the complainant. For instance, it can show that it has been commonly known by the Domain Name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark in issue.

Here, however, the Respondent is not known by the Domain Name. Moreover, given the nature of the website to which the Domain Name resolves as earlier described, the Panel would not accept that there is a legitimate noncommercial or fair use. In any event, any noncommercial or fair use must be without intent to mislead, but it is likely in fact (in the absence of any alternative explanation), that the very purpose of the Respondent choosing the Domain Name was to deliberately create a false impression of association with the Complainant. In Drexel University v. David Brouda, WIPO Case No. D2001-0067, the panel stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. That seems to be the case here.

A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. In some circumstances, that might be possible to do even if the respondent is an unauthorized reseller of the trademark owner’s goods. However, it would be difficult to accept that the Respondent’s website, to which the confusingly similar Domain Name resolves, could be a bona fide offering when it includes, inter alia, links to another site i.e., “www.amazon.com”, which sells numerous other products apart from those of the Complainant and which, furthermore, contains no disclaimer or explanation as to the Respondent’s relationship with the Complainant.

There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. The Respondent certainly hasn’t provided any. The contentions of the Complainant, by which it has made out a prima facie case that the Respondent has no rights or legitimate interests, have not been contradicted or challenged, or cast into doubt by the brief analysis set out above.

Accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

One way a complainant may demonstrate bad faith registration and use is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. Given that these are the circumstances in the present case (as earlier described), the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.

Given this finding, it is unnecessary to go on to consider other possible grounds for a finding of bad faith registration and use.

In all the circumstances, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.

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 Domain Name <legoworld.website> be transferred to the Complainant.

Jon Lang
Sole Panelist
Date: November 27, 2015