WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Michael Smith / Legonail

Case No. D2018-0520

1. The Parties

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

The Respondent is Michael Smith / Legonail of Los Angeles, California, United States of America (“United States”), self-represented.

2. The Domain Name and Registrar

The disputed domain name <legonail.com> is registered with Google Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2018. On March 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 March 14, 2018 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 March 15, 2018.

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 proceedings commenced on March 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 8, 2018. The Response was filed with the Center on April 6, 2018.

The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on April 23, 2018. 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, based in Denmark, is the owner of the trademark LEGO, which is widely associated with a certain type of construction toy based on coloured plastic bricks and components that click together, and other LEGO branded products. The Complainant sells LEGO products in more than 130 countries.

The Complainant is the owner of over 200 trademarks. Representative trademarks are:

LEGO (word), Canadian Intellectual Property Office, registered April 26, 1957, registration number TMA106457, classes 7, 9, 12, 16, 20, 28;

LEGO (design), Canadian Intellectual Property Office, registered March 25, 1983, registration number TMA278026, classes 16, 18, 25, 41.

The Complainant also owns more than 5000 domain names containing the term LEGO.

The Respondent sells cases, made in a similar style to the Complainant’s “Lego” coloured brick toys, intended for use with electronic devices. The disputed domain name was apparently first registered on October 27, 2017, and it resolves to a website displaying information of the Respondent’s products.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions are summarised below.

The Complainant asserts rights in the trademark LEGO in numerous jurisdictions worldwide and has produced copies of registration documents in respect of the Canadian trademarks listed in section 4 above.

The Complainant contends that the disputed domain name, <legonail.com>, is identical or confusingly similar to the Complainant’s trademark LEGO. The word LEGO is dominant in the disputed domain name and the suffix “nail” is not distinguishing. The generic Top-Level Domain (gTLD) “.com” is well established as being of no consequence in the determination of confusing similarity.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not authorised the use of its trademark in any way by the Respondent. There is no dealership or other business relationship between the Complainant and the Respondent. The Respondent’s name is not that of the disputed domain name. There is no evidence to show that the Respondent has been commonly known by the disclosed Registrant Organisation name of “Legonail”, or that it holds a “Legonail” trademark, or that a business by that name is registered California, being the Respondent’s stated domicile.

The Complainant also contends that the disputed domain name was registered and is being used in bad faith by the Respondent. The Complainant says its trademark is famous and the Respondent should be considered to have known about it at the time of registration of the disputed domain name.

The Complainant says the Respondent has misappropriated the Complainant’s trademark with intent to redirect Internet users by confusion to the website of the disputed domain name in order to offer competing products for commercial gain. The Respondent’s website displays the Complainant’s LEGO trademark logo and colour scheme. There is a likelihood that Internet users who follow the disputed domain name to its website will be confused into believing erroneously that the Respondent is associated with the Complainant.

The Complainant submits that, in the circumstances of the present case, the mere registration of the disputed domain name, because it is confusingly similar to the Complainant’s famous and widely known trademark, creates a presumption of bad faith on the part of the Respondent.

The Complainant says the disputed domain name was registered with a privacy service at the time the Complaint was initially filed, which in certain circumstances in previous cases under the Policy has been held to be indicative of registration and use in bad faith.

The Complainant also says the Respondent failed to reply to cease and desist letters sent on November 28, 2017, December 7, 2017, December 14, 2017 and February 8, 2018, and that in previous cases under the Policy a failure to respond to a cease and desist letter has been a factor contributing to a finding of registration and use of a domain name in bad faith.

The Complainant has cited or quoted from a number of previous cases under the Policy, including a number of decisions in favour of the Complainant.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent denies the Complaint.

It is appropriate in this instance to reproduce the Response to the Complainant’s allegations entirely:

“My domain was made respectfully as an artistic endeavor, selling hand-fused and cut Lego cases for personal electronics devices. At no point have I intended to defame, deteriorate, or otherwise immorally impersonate the Lego brand. At no point has anyone been mistaken that this is not an official Lego brand.”

6. Discussion and Findings

A. Procedural Matters

Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:

“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith”.

The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.

The Complainant initially named Contact Privacy Inc., Customer 1241866477, of Toronto, Canada, as the Respondent. Having been advised of the identity of the underlying registrant, the Complainant, as is its prerogative, submitted an Amended Complaint in which the present Respondent, with an address in California, United States, was substituted for Contact Privacy Inc. The Amended Complaint continues to make certain references to the Respondent being in Canada. These discrepancies have not had any bearing on the Decision in this case.

B. Identical or Confusingly Similar

The Panel is satisfied on the evidence produced that the Complainant has rights in the trademark LEGO as required under paragraph 4(a)(i) of the Policy.

The disputed domain name is <legonail.com>. The generic Top-Level Domain (gTLD) designation, in this instance “.com”, may be disregarded in the determination of confusing similarity. On an objective comparison, the Complainant’s trademark LEGO is readily perceived in the disputed domain name, followed by the generic word “nail”, which the Panel does not find to be distinguishing. The Panel finds the disputed domain name to be confusingly similar to the trademark LEGO and accordingly finds for the Complainant under paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The Complainant has stated a prima facie case to the effect that it has not authorised the use of its trademark by the Respondent and has had no business or other relationship with the Respondent.

Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:

“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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 at issue”.

The Respondent has stated by implication that the purpose of the website to which the disputed domain name resolves is for the sale of artistic cases, made in “Lego” style, for electronic devices. Irrespective of whether the cases in “Lego” style may legitimately be made and sold, the Panel finds that the offering of the stated goods or services through the disputed domain name and the corresponding website, by their reliance on the prominent incorporation and display of the Complainant’s trademark, cannot constitute a bona fide offering of goods or services in the terms of paragraph 4(c)(i) of the Policy.

There is no evidence that the Respondent as an individual or business has been commonly known by the disputed domain name. The Respondent’s website is clearly commercial and the disputed domain name is not found to be in any legitimate noncommercial or fair use. Accordingly the Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the 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”.

The Complainant has produced a screen capture of the website page to which the disputed domain name has resolved, and for comparison, a screen capture of one of the Complainant’s own websites featuring its LEGO trademark and logo. The Complainant’s logo on its own website is constructed in a characteristic and unusual font, comprising lettering in a broad, softly-rounded font of white surrounded by black, with an italic slant, the whole word LEGO having a yellow halo effect against a bright red background. The prominent banner “LEGONAIL” on the Respondent’s website is indistinguishable in style from that of the Complainant’s LEGO logo, having an apparently identical font in the same white on black with a yellow halo, the same italic slant and the same bright red background. The Respondent’s website page makes further references to “Legonail” including “© 2018 Legonail” and an apparent internal link to “Legonail Kits”. The page displays pictures of four items described respectively as “Legonail #0008 in Extreme Slyme with Tip Jar”, “Legonail #0006 in Brick Yellow”, “Legonail #0005 in Brick White” and “Legonail #0004 in Famitsu”. Two of these items incorporate plaques (also partly visible in a third item) that reproduce the “LEGONAIL” banner just described, in white, black, yellow and red. Prices range from $199.99 to $274.99 and a shopping cart indicates space for a running total, thus the website portrays a commercial operation.

The display of a “LEGONAIL” banner on the Respondent’s website and on items pictured thereon in a style and colour scheme indistinguishable from that of the Complainant’s distinctive LEGO trademark logo, combined with the Respondent’s own assertion to be “selling hand-fused and cut Lego cases for personal electronics devices”, would render it implausible that the Respondent was unaware of the Complainant’s trademark at the time of registration of the disputed domain name.

On the evidence, and on the balance of probabilities, the Panel finds the disputed domain name, in the terms of paragraph 4(b)(iv) of the Policy, to be in use for commercial gain with intent to confuse visitors into believing that the website to which it resolves, and the products on offer at the website, are endorsed by the Complainant. The Panel further finds, on the totality of the evidence and on the balance of probabilities, that the disputed domain name was registered for the purpose for which it has been used. Accordingly the Panel finds registration and use of the disputed domain name in bad faith by the Respondent in the terms of paragraph 4(a)(iii) of the Policy.

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 disputed domain name <legonail.com> be transferred to the Complainant.

Clive N.A. Trotman
Sole Panelist
Date: April 30, 2018