WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Steven McCracken, Funky Lemon Web Ltd
Case No. D2018-1676
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Steven McCracken, Funky Lemon Web Ltd of Edinburgh, Scotland, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
2. The Domain Name and Registrar
The disputed domain name <legobuilda.com> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2018. On July 25, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 25, 2018, 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 July 26, 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 July 30, 2018. On the same date, the Respondent sent an email communication to the Center. On July 31, 2018, the Center sent the Parties an email regarding possible settlement.
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 August 10, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2018. The Center received informal email communications from the Respondent on July 30, 2018, on August 11, 2018, on August 13, 2018, on August 19, 2018, on August 21, 2018, on September 3, 2018, and on September 5, 2018. On August 21, 2018, the Complainant informed the Center that would continue with the proceedings. The Respondent did not submit a formal response. Accordingly, the Center notified the Parties that would proceed to panel appointment on September 4, 2018.
The Center appointed Taras Kyslyy as the sole panelist in this matter on September 13, 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 is based in Denmark. It is the owner of the LEGO brand used in connection with 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 LEGO group has expanded its use of the LEGO trademark to computer hardware and software, books, videos and computer controlled robotic construction sets. The Complainant is the owner of over 5,000 domain names containing the term LEGO.
The Complainant owns numerous registrations worldwide for the trademark LEGO, the earliest registration dating from 1954 (Danish Reg. No. VR 1954 00604, registered on May 1, 1954). LEGO is a well-known trademark.
The disputed domain name <legobuilda.com> was registered on April 1, 2018 and is used for a website offering LEGO toys.
The Complainant addressed the Respondent with three cease and desist letters regarding the disputed domain name, however, the Respondent never replied.
5. Parties’ Contentions
The disputed domain name is identical or at least confusingly similar to the Complainant’s trademarks. Dominant part of the disputed domain name is identical or confusingly similar to the Complainant’s LEGO trademark. The addition of the suffix “builda” will not have any impact on the overall impression of the dominant part of the name, LEGO, recognizable as a world famous trademark. Addition of the generic Top-Level Domain (“gTLD”) “.com” does not add any distinctiveness to the disputed domain name. The use of the disputed domain name contributes to the confusion.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name. No license or any other authorization was issued by the Complainant to the Respondent to use LEGO trademark. LEGO is a famous trademark, and it is highly unlikely that the Respondent did not know of the Complainant’s respective trademark rights when registering the disputed domain name. The Respondent has intentionally chosen a domain name based on the Complainant’s well-known trademark in order to generate traffic and income through a website which offers or attempts to sell the Complainant’s products.
The disputed domain name was registered and is being used in bad faith. LEGO is a well-known trademark. The Respondent’s use of the disputed domain name constitutes a disruption of the Complainant’s business and qualifies as bad faith registration. The Respondent ignored the Complainant’s cease and desist letters. The Respondent was aware of the Complainant’s trademark rights when registering the disputed domain name. There is no connection between the Respondent and the Complainant. By using the disputed domain name the Respondent does not make a legitimate noncommercial or fair use, but is misleadingly diverting consumers for its own commercial gain.
The Respondent resents the accusation that disputed domain name and its website were together used in bad faith. The Respondent claims that he has incurred in costs of around GBP 200 regarding the disputed domain name, the hosting and the website. The Respondent alleges that the website sells only the Complainant’s products and only via “Amazon” as an associate seller. The Respondent recognizes that he is not directly authorised by the Complainant but argues that he is “indirectly authorised by virtue of LEGO making it’s products available to sell via Amazon associate program”. The Respondent has disassociated the disputed domain name with his “eCommerce/AmazonAssociate website” and has offered the transfer of the disputed domain name at the compensatory charge of GBP 200 to cover his costs.
6. Discussion and Findings
A. Identical or Confusingly Similar
The gTLD “.com” in the disputed domain name is viewed as a standard registration requirement and may be disregarded for the purposes of the confusing similarity test (see, e.g., Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).
According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing.
According to section 1.8 of the WIPO Overview 3.0 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.
The disputed domain name includes the Complainant’s trademark, adding descriptive suffix “builda” associated with the Complainant’s business and the gTLD “.com”, which does not preclude a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.
Considering the above the Panel believes the disputed domain name is confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.
Furthermore, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain name.
The Respondent is not commonly known by the disputed domain name, which could demonstrate its right or legitimate interest (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642).
The Complainant did not license or otherwise agree for use of its priory registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875).
According to section 2.8.1 of the WIPO Overview 3.0 resellers, distributors using a domain name containing complainant’s trademark to undertake sales related to the complainant’s goods may be making a bona fide offering of goods and thus have a legitimate interest in such domain name. Outlined in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (the “Oki Data Test”), the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods at issue;
(ii) the respondent must use the site to sell only the trademarked goods;
(iii) the site must accurately and prominently disclose the registrant’s relationship with trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names reflecting trademark.
The Panel finds that the Respondent failed to satisfy at least the third above requirement and did not (prominently) disclose its actual relationship with the Complainant, and thus failed to pass the Oki Data Test. The Respondent’s use of the disputed domain name misleads consumers into thinking that the website is operated by or affiliated with the Complainant. As such, the Respondent’s use of the disputed domain name cannot be considered bona fide.
The disputed domain name incorporates the LEGO trademark of the Complainant in its entirety and it is its distinctive element. Since LEGO is a well-known trademark, and the disputed domain name is associated with the website offering LEGO products, the Panel finds that the Respondent must have been aware of the LEGO trademark when it registered the disputed domain name, and that it chose to target the LEGO trademark because of the likelihood that it will attract traffic to the Respondent’s website. In the Panel’s view, such conduct cannot be regarded as giving rise to rights or legitimate interests on the part of the Respondent to register and use the disputed domain name (see, e.g., LEGO Juris A/S v. Andrei Novakovich, WIPO Case No. D2016-1513).
In addition, the fact that the Respondent is part of an “Amazon associate program” and that the Complainant’s products are available to sell via “Amazon associate program” is not relevant for the purpose of the analysis under the second element in this proceeding as this cannot show rights or legitimate interests in the disputed domain name for the purpose of the Policy. The Panel has to consider the registration and use of a disputed domain name comprised of the LEGO trademark by the Respondent, which in the circumstances of this case, do not grant rights or legitimate interests for the Respondent in the disputed domain name.
Considering the above the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Respondent’s use of the disputed domain name to purport to sell the Complainant’s products shows that at the time of the registration of the disputed domain name the Respondent clearly knew and targeted the Complainant’s prior registered and famous trademark, which confirms the bad faith (see, e.g., The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).
According to section 3.1.4 of the WIPO Overview 3.0 the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: (i) actual confusion, (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful, (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name, (iv) redirecting the domain name to a different respondent-owned website, even where such website contains a disclaimer, (v) redirecting the domain name to the complainant’s (or a competitor’s) website, and (vi) absence of any conceivable good faith use. The Panel finds that these criteria apply in the present case and the Respondent is using the disputed domain name in bad faith.
Moreover, the Respondent failed to respond to the Complainant’s cease and desist letter, and did not provide any good reason to justify this, which confirms the bad faith (see, e.g., Compagnie Generale des Etablissements Michelin v. Vaclav Novotny, WIPO Case No. D2009-1022).
Considering the above the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <legobuilda.com> be transferred to the Complainant.
Date: September 25, 2018