WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Whois Agent, Whois Privacy Protection Service, Inc. / Nicholas Dove
Case No. D2017-0051
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America ("United States") / Nicholas Dove of San Diego, California, United States.
2. The Domain Name and Registrar
The disputed domain name <operationlegos.com> is registered with Name.com, Inc. (Name.com LLC) (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 11, 2017. On January 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 12, 2017, 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 January 13, 2017 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 January 16, 2017.
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").
Prior to the commencement of the proceedings, the Center received an email communication from the Respondent inquiring about the Complaint that had been filed against him.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2017. The Respondent did not submit any further response. Accordingly, the Center notified the Parties on February 9, 2017 that it would proceed to Panel appointment.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on February 17, 2017. 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 a Danish company that owns the famous LEGO brand of construction toys.
The Complainant has subsidiaries and branches throughout the world. LEGO products are sold in more than 130 countries, including in the United States.
The Complainant owns several LEGO trademark registrations in multiple countries, including one in the United States that has been registered in 1975. The Complainant is also the owner of numerous domain names containing the term "lego".
The Respondent registered the disputed domain name <operationlegos.com> on July 11, 2016.
The Panel accessed the disputed domain name on February 28, 2017, when it was linked to a website containing reproductions of the LEGO trademark and toys, stating it is "your go to LEGO news & product website!". The website at the disputed domain name also contains a "Shop" section, linked to eBay offers of LEGO products.
5. Parties' Contentions
The Complainant makes the following contentions:
- The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The dominant part of the disputed domain name comprises the term LEGO, registered by the Complainant as trademarks and domain names in numerous countries all over the world. 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 word "operation" and the plural indicator "s". In Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488, ,it was stated that it is a 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, neither the word "operation" nor the plural indicator "s" detract from the overall impression. In fact, the LEGO group has been working hard to protect the LEGO trademark from dilution by distinguishing the trademark from being used as the noun "LEGOs". See for example, the LEGO Group's Fair Play Policy regarding proper use of the LEGO trademark where it is stated: "If the LEGO trademark is used at all, it should always be used as an adjective, not as a noun. For example, say "Models built of LEGO bricks". Never say "Models built of LEGOs"". The addition of the Top-Level Domain (TLD) ".com" does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to determining 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 will perceive the 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 Respondent has no rights or legitimate interests in respect of the disputed domain name. 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, including the WhoIs details, that would suggest that the Respondent has been using LEGO in any other way that would give them any legitimate interests 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. Further, the Respondent is not an authorized dealer of the Complainant's products and has never had a business relationship with the Complainant. LEGO is a famous trademark worldwide and in Deutsche Bank Aktiengesellschaft v New York TV Tickets Inc, WIPO Case No. D2001-1314. it was established that any use of a famous trademark in a domain name would violate the rights of the trademark owner. The Respondent is 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 that is commercial through links incorporated in pictures of LEGO products directing Internet users to another commercial website, namely "www.ebay.com", offering all kinds of products from a wide range of different brands, besides the Complainant's. Consequently, the disputed domain name is clearly being used for a commercial purpose. As no evidence has been found that the Respondent is using the name LEGO as a company name or has any other legal rights in the name, it is quite clear that the Respondent is simply trying to sponge off the Complainant's world famous trademark. Moreover, the Respondent has incorporated the Complainant's logotype without consent, in order to create a false link to the Complainant.
- The disputed domain name was registered and is 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 world. The number of third party domain name registrations comprising the trademark LEGO in combination with other words has skyrocketed the last years. The considerable value and goodwill of the mark LEGO is, most likely, a large contribution to this and also what made the Respondent register the disputed domain name. The Respondent registered the disputed domain name on July 11, 2016. This date is subsequent to the date of registration by the Complainant of the trademark LEGO in the United States where the Respondent resides, and elsewhere, by decades. It is obvious that it is the fame of the trademark that has motivated the Respondent to register the disputed domain name. That is, the Respondent cannot claim to have been using the trademark LEGO, without being aware of the Complainant's rights to it. Moreover, the Respondent is displaying numerous pictures of the Complainant's LEGO products on the website connected to the disputed domain name. The Complainant first tried to contact the Respondent on September 3, 2016, through a cease-and-desist letter sent by email. The Complainant advised the Respondent that the unauthorized use of the LEGO trademark within the disputed domain name and requested a voluntary transfer of the same. The Complainant also offered compensation for the expenses of registration and transfer fees (not exceeding out-of-pocket expenses). Despite the reminders sent, no reply was ever received. Since the efforts of trying to solve the matter amicably were unsuccessful, the Complainant chose to file a UDRP complaint . The Panel in Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273 stated that, "[t]he incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith". As mentioned above, the disputed domain name is connected to a website directing Internet users to another commercial website, namely "www.ebay.com", offering all kinds of products from a wide range of different brands, besides the Complainant. The Complainant's logo, along with its trademarked minifigure head design is prominently displayed on the website, contributing to create a confusing similarity with the Complainant. The Panel in LEGO Juris A/S v. Sony Laksono, N/A / PrivacyProtect.org,WIPO Case D2011-2268, concluded: "the use of the Domain Name as described above is in this case a clear indication of bad faith". Same argumentation should be applied in the current case where the Respondent is using the disputed domain name to attract visitors by using links to a similar third party website. The Complainant also refers to Inter IKEA Systems B.V. v. Oneandone Private Registration / James Truax, WIPO Case No. D2014-1665, in which a well- known mark was used on a site redirecting visitors to "www.ebay.com". In this case, the Panel held: "Given that the Complainant's trade mark is both invented and extremely well-known, and given that the Respondent's website contains links to websites offering goods for sale similar to those of the Complainant, the Respondent must have known of the likelihood of confusion between the Complainant's trade mark and the disputed domain name at the time of the registration of the disputed domain name. Further, the operation of a "pay-per-click" website at the disputed domain name evidences an intention to profit from that confusion. This is a classic case of registration and use in bad faith under the Policy".
Consequently, the Respondent is using the disputed domain name to intentionally attempt to attract Internet users to its website 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.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel has no doubt that "lego" is a term directly connected with the Complainant's construction toys worldwide.
Annex 6 to the Complaint shows registrations of LEGO trademarks obtained by the Complainant, including in the United States, since 1975.
The trademark LEGO is wholly encompassed within the disputed domain name.
The disputed domain name differs from the Complainant's trademark basically by the addition of "operation" and the plural indicator "s", as well as of the gTLD ".com".
Previous UDRP decisions have demonstrated that descriptive additions (such as "operation" for action toys or the plural indicator "s") do not alter the underlying meaning of a domain name, and do not avoid confusing similarity. This has been held in many UDRP cases (see, e.g., Inter-IKEA Systems B. V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc., WIPO Case No. D2000-0927).
It is also well established that the addition of a gTLD such as ".com" is irrelevant when determining whether a domain name is confusingly similar to a complainant's trademark.
As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark, and that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent 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 at issue.
Based on the Respondent's default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed nor authorized the use of its trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain name.
The disputed domain name is currently linked to a website containing reproductions of the LEGO trademark and toys, as well as a "Shop" section, linked to eBay offers of LEGO products. However, the Respondent is not an authorized reseller of LEGO toys and the site does not accurately and prominently disclose the registrant's relationship with the trademark holder (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).
The Respondent's website neither qualifies as a fan page in order to characterize a registration and use of the disputed domain name in good faith. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.5, a respondent does not have rights or legitimate interests in expressing its view, even if positive, on an individual or entity by using an identical or confusingly similar domain name, if the respondent is intentionally misrepresenting itself as being (or as in some way associated with) that individual or entity, or seeks to derive commercial advantage from its registration and use.
As referred above, the website linked to the disputed domain name contains a "Shop" section, in which LEGO products are offered for sale. The website also contains an express reference that "Operation Legos is a participant in the Amazon Services LLC Associates Program, an affiliate advertising program designed to provide a means for sites to earn advertising fees by advertising and linking to amazon.com".
In a similar WIPO UDRP case, the Panel stated that "Based on the evidence provided by the Complainant, it appears that the Domain Name is connected to a website containing sponsored links and provides a click-through to the Amazon.com website. In the Panel's view, the Respondent makes use of the confusing similarity with the LEGO trademark of the Complainant, which cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. In addition, the Respondent cannot be considered as a reseller of the Lego Star Wars products, the reseller is Amazon.com, while the Respondent is acquiring revenue when a visitor clicks through on the links provided." (see LEGO Juris A/S v. Sony Laksono, N/A / PrivacyProtect.org, supra.).
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted 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 its website or location or of a product or service on its website or location.
When the disputed domain name was registered by the Respondent (in 2016) the trademark LEGO was already well-known and directly connected to the Complainant's construction toys.
The disputed domain name encompasses the trademark LEGO, together with a descriptive word related with the Complainant's products ("operation") and with the plural indicator ("s"). Also, it is currently linked to a website that contains reproductions of the Complainant's trademark and toys, as well as a shopping section.
Therefore, the Panel concludes that it is very unlikely that the Respondent was not aware of the Complainant's trademark and that the adoption of the expression "operationlegos" was a mere coincidence.
Actually, in doing so, the Respondent:
(i) creates a likelihood of confusion with the Complainants' trademark; and
(ii) potentially obtains revenue through advertising programs or by intermediating the selling of LEGO toys to consumers; and
(iii) deprives the Complainant from selling its products to prospective clients.
Furthermore, the absence of a reply from the Respondent is further evidence of bad faith from the Respondent in the present case.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element 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 <operationlegos.com> be transferred to the Complainant.
Date: March 3, 2017