WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Contact Privacy Inc. Customer 0152907274 / Maksym Zaremba, LegoAvengers
Case No. D2019-0324
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Contact Privacy Inc. Customer 0152907274 of Toronto, Ontario, Canada / Maksym Zaremba, LegoAvengers of Alverca, Portugal, self-represented.
2. The Domain Name and Registrar
The disputed domain name <legoavengers.com> (the “Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2019. On February 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 12, 2019, 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 February 14, 2019 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 February 18, 2019.
On February 14, 2019 and February 18, 2019, the Respondent submitted its response to the Complaint by four emails.
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 February 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 12, 2019. On February 21, 2019 and February 22, 2019, the Respondent submitted two further emails. On February 26, 2019, the Respondent confirmed it will not submit any further response. On February 27, 2019, the Complainant submitted an email in response to the Respondent’s emails. Accordingly, on February 27, 2019, the Center notified the Parties that it would proceed with panel appointment.
The Center appointed Nick J. Gardner as the sole panelist in this matter on March 5, 2019. 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. 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 trademark registrations for the LEGO word and stylised LEGO word trademarks in numerous jurisdictions worldwide, including Portugal – for example Portuguese trademark no 144331 for the word LEGO registered on December 18, 1957 (these trademarks are referred to in this decision as the “LEGO trademarks”). Such registrations predate the date of registration of the Disputed Domain Name. The Complainant has been very successful, carries on business on a very substantial scale and its products and the Lego name are very widely known and recognised.
The Complainant is the owner of over 5,000 domain names containing the term “lego”.
The LEGO Group has expanded its use of the LEGO trademarks to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. The LEGO Group also maintains an extensive website linked to the domain name <lego.com>, which features its various toy products, including products relating to Lego Marvel Avengers – these are a range of Lego toys based upon the “Marvel” characters depicted in a number of well-known comic books and films. The word “avengers” is registered as a trademark by Marvel Characters, Inc. and used by the Complainant pursuant to an agreement the Complainant has with that company.
The Respondent is an individual with an address in Portugal.
The Disputed Domain Name was registered on October 10, 2018. It is linked to a website operated by the Respondent (the “Respondent’s Website”).
Prior to receipt of a cease-and-desist letter sent on November 21, 2018, the Respondent’s Website offered for sale Lego toys – it described itself as follows: “legoavengers is a store and website that was designed specifically to offer various collections of Minifigures from popular movies and videogames.” The Respondent replied to the cease-and-desist letter indicating he wished to settle the matter amicably and was prepared to transfer the Disputed Domain Name but wished to be reimbursed for not only his out-of-pocket acquisition costs but also “for PR campaigns, Backlinks and other promotion of the domain's positions in Google’s ranking”. The Complainant responded saying it would only reimburse direct out-of-pocket acquisition costs.
On December 4, 2019 the Respondent sent a further email (replying to a second cease-and-desist letter sent by the Complainant). This email read as follows “After receiving your complaint I have immediately stopped using legoavengers.com domain for commercial purposes, however, I have decided to keep it for non-commercial purposes, as my personal blog where I will post interesting facts and news related to LEGO. If you are really interested in this domain, I might sell it to you if you make a decent offer”.
He sent another email the same day which stated as follows “My website legoavengers.com is not being monetized, it doesn’t breach any fair-play policies. It has a disclaimer and doesn’t have any advertisements or redirects to third party websites. It’s just a blog where people getting news related to LEGO. People are interested in reading such blog and I am doing that for non-commercial purposes. I think this blog is good for both of us. I am receiving nice feedback from people who are reading my blog and basically I am doing free advertising of LEGO. I can also put a link to the official LEGO website if it’s necessary. I have put lots of efforts into this domain and your reimbursement of registration fees will not cover that. I have been promoting my blog and it has around 25 thousand visits from all over the world (in almost two months), I can't just change domain name and lose all of my readers. If you really need that domain, please make a decent offer”.
The Complainant replied as follows “Thank you for your email and response. Please note the LEGO Group has a strict policy against unauthorized third-party domain name registrations containing their trademarks. For more information I direct you to the LEGO Fair Play Policy which can be found here: https://www.lego.com/en-gb/legal/legal-notice/fair-play. In light of the above, we respectfully request that you agree to transfer the domain name to the LEGO Group with immediate effect. As stated in our letter to you, the LEGO Group is willing to reimburse you those fees directly related to the registration of the domain name”.
After receipt of the November 21, 2018 cease-and-desist letter the content of the Respondent’s Website was changed, removing the offers for sale and adopting a “blog” format.
The Complainant says that at some stage the Respondent’s Website was taken down and the Disputed Domain Name was linked to a Sedo parking page where it was offered for sale for USD 500. However at the date of this decision the Respondent’s Website is presented as a blog which commences with an entry entitled “LEGO® SETS LEAK UNVEILED THE DETAILS OF THE UPCOMING AVENGERS 4: ENDGAME MOVIE”. If a reader scrolls down a considerable distance a footer is reached which states “LEGO® is a trademark of the LEGO® Group, which does not sponsor or endorse this blog. If you have any questions or concerns, please contact at [...]@legoavengers.com”.
5. Parties’ Contentions
The Complainant has filed lengthy submissions and cited numerous previous UDRP decisions in support of its arguments. The Panel does not feel it necessary to repeat all that material here. So far as the Policy is concerned the Complainant’s main contentions can be summarised as follows.
The Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights – the inclusion of a third party trademark (“Avengers”) in the Disputed Domain Name does not avoid confusion. The addition of the Top-Level Domain (“TLD”) “.com” does not distinguish the Disputed Domain Name from the Complainant’s trademark. 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 LEGO trademarks of the Complainant. With reference to the reputation of the LEGO trademarks there is a considerable risk that the trade 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. The LEGO trademarks also risk being tarnished by being connected to the Respondent’s Website. By using the trademark LEGO as a dominant part of the Disputed Domain Name, the Respondent exploits the goodwill and the image of the LEGO trademarks, which may result in dilution and other damage for the LEGO trademarks. Persons seeing the Disputed Domain Name even without being aware of the content, are likely to think that the Disputed Domain Name is in some way connected to the Complainant, (“initial interest confusion”).
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant says that the Respondent does not have any registered trademarks or trade names corresponding to the Disputed 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 legitimate rights in the name. No licence or authorisation of any other kind has been given by the Complainant to the Respondent to use the LEGO trademarks. 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 right or a legitimate interest in respect of the domain name.
The Complainant says that LEGO is a famous trademark 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 LEGO trademark that has motivated the Respondent to register the Disputed 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 Disputed Domain Name in connection with a bona fide offering of goods or services. Use which intentionally trades on the fame of another cannot 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 adopt his website so as to benefit from the goodwill of the LEGO trademarks.
The Complainant says that before the Respondent received a cease-and-desist letter from Complainant, the Respondent was using the Disputed Domain Name to offer the Complainant’s products without the Complainant’s authorization. Although, UDRP panels may find that resellers using a domain name containing the complainant’s trademark to undertake sales related to the complainant’s goods or services have a legitimate interest in such domain name; the “Oki Data test”, which was devised to ascertain if a respondent is making a bona fide offering, requires the following cumulative conditions to be met:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.
In the present case, the Respondent failed to provide any disclaimer on the website at the Disputed Domain Name to disclose that he had no affiliation with the Complainant. After reception of the cease-and desist letter, the Respondent changed the content of the Disputed Domain Name so that it appeared to be a blog and added a disclaimer at the very bottom of the page. However, the page now displays leaked information about the next Lego movie – this is in fact the title of the so-called blog: “LEGO® SETS LEAK UNVEILED THE DETAILS OF THE UPCOMING AVENGERS 4: ENDGAME MOVIE.” The Complainant does not wish to have information about future products and movies be leaked to the public before they are ready to share them. The Respondent claims to be receiving positive feedback but even if so this is to the detriment of the Complainant.
The Complainant also says that the Respondent realised that the Complainant would not refund more than the registration costs for the Disputed Domain Name and seeing that his request for “a decent offer” from the Complainant would not result in an offer he would be interested in, the Disputed Domain Name was then offered for sale at sedo.com for USD 500, an amount that far exceeds the Respondent’s out-of-pocket expenses in registering the Disputed Domain Name.
The Disputed Domain Name was registered and is being used in bad faith. The Complainant says the Respondent registered the Disputed Domain Name in bad faith in full knowledge of the Lego brand and in order to sell Lego products. The Complainant relies on the correspondence with the Respondent described above. It says the Respondent’s use of the Disputed Domain Name constitutes a disruption of the Complainant’s business and qualifies as bad faith registration and use under Policy because the Disputed Domain Name is confusingly similar to the Complainant’s trademarks and the website linked to the Disputed Domain Name was being used to offer the Complainant’s goods or services without the Complainant’s authorization or approval, and is now being used to reveal information the Complainant is not yet ready to share with the public. Past UDRP panels have confirmed that using a confusingly similar domain name to mislead consumers is evidence of bad faith registration and use. By using these elements for directly competing services and to sell the Complainant's products, the Respondent was diverting for commercial gain Internet users to its website, and was doing so in a manner likely to cause consumers to believe that the Disputed Domain Name was somehow associated with, affiliated with, and/or endorsed by the Complainant. Accordingly the Complainant says the Respondent should be considered to have registered and to be using the Disputed Domain Name in bad faith.
It is simplest to repeat verbatim the substantive content of the Response. It reads as follows:
“My website legoavengers.com is not being monetized, doesn't show any commercial content and it doesn't breach any fair-play policies according to LEGO FAIR PLAY brochure https://www.lego.com/en-us/legal/legal-notice/fair-play. It has a disclaimer and doesn’t have any advertisements or redirects to third party websites. It’s just a blog where people getting news related to LEGO. People are interested in reading such blog and I am doing that for non-commercial purposes. I think this blog is good for both of us. I am receiving nice feedback from people who are reading my blog and basically I am doing free advertising of LEGO. I can also put a link to the official LEGO website if it’s necessary. I have put lots of efforts into this domain. I have been promoting my blog and it has around 30 thousand visits from all over the world (in almost three months), I can’t just change domain name and lose all of my readers because somebody decided to take it away from me for no legitimate reason.”
6. Discussion and Findings
6.1 Procedural Matters
The Panel declines to admit the Complainant’s email of February 27, 2018 as a further filing. It does not in the Panel’s opinion add anything significant over what is already apparent from the Complaint and its associated evidence.
The Panel notes this is a case where one Respondent (“Contact Privacy Inc. Customer 0152907274”) appears to be a privacy or proxy service.
The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”
In the present case the Panel considers the substantive Respondent to be Maksym Zaremba and references to the Respondent are to that person.
6.2 Substantive Matters
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel considers the Disputed Domain Name to be confusingly similar to the Complainant’s LEGO trademarks. The Respondent has simply taken the Complainant’s trademark and combined it with another well-known trademark in a manner which manifestly continues to include the Complainant’s trademark as an obvious reference within the Disputed Domain Name. As stated in section 1.12 of WIPO Overview 3.0, it is a well-established principle that a domain name that wholly incorporates a trademark is found to be confusingly similar for purposes of the Policy, despite the fact that the disputed domain name may also contain another third-party’s distinctive mark: “Where the complainant’s trademark is recognizable within the disputed domain name, the addition of other third-party marks (i.e., <mark1+mark2.tld>), is insufficient in itself to avoid a finding of confusing similarity to the complainant’s mark under the first element.” See also for example Hoffmann-La Roche Inc. v. Charlie Kalopungi, WIPO Case No. D2010-1826, where the panel found that “the inclusion of the trademarks of other parties in the disputed domain name does not detract from the confusing similarity”.
It is also well established that the TLD, in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar to the Complainant’s trademark. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
The Panel finds the LEGO trademark is, on the evidence before the Panel, a term in which the Complainant has over many years developed a very significant reputation.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a 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 has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; 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 or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use LEGO trademark. The Complainant has prior rights in the LEGO trademark which precede the Respondent’s registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, 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).
As the Panel understands the position the Respondent does not dispute that his use was commercial but says he stopped this use when he received the Complainant’s cease-and-desist letter – see above. So far as that commercial use is concerned the Panel does not consider it was bona fide. The Disputed Domain Name is in the Panel’s opinion likely to give consumers the impression it is a domain name owned by or approved by the Complainant and is likely to attract customers on that inaccurate basis. See WIPO Overview 3.0 at section 2.5 “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry” and at section 2.5.1 “Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner”.
Applying those principles here the Panel does not consider the Respondent establishes bona fide use.
Generally speaking this issue is to be assessed before the Respondent receives notice of the dispute i.e., before the Respondent received the Complainant’s cease-and-desist letter. The Panel has however also considered the position if this issue were to be assessed by reference to the Respondent’s conduct after the cease-and-desist letter was received. The Respondent then removed from the Respondent’s Website the commercial offering of Lego products for sale and instead published a blog about Lego products. The Respondent says that he is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. He expressly says that his blog is within the Complainant’s own “fairplay” guidelines as found at "https://www.lego.com/en-us/legal/legal-notice/fair-play". The Panel disagrees – the published policy referenced by the Respondent clearly states as follows: “The LEGO Trademark cannot be used in an Internet Address. The LEGO trademark should not be incorporated into an Internet address. Internet addresses have become useful tools for people to identify the source of a homepage. Using ‘LEGO’ in the domain name would be creating the misleading impression that the LEGO Group sponsored the homepage.” The Respondent manifestly uses LEGO trademark within the Disputed Domain Name. More generally the Panel is in any event sceptical as to the Respondent’s motives and ultimately does not accept he is acting without intent for commercial gain. He has in the correspondence (see above) clearly sough to solicit offers from the Complainant for the Disputed Domain Name that exceed his out-of-pocket costs, and it also appears he has offered the Disputed Domain Name for sale via a Sedo parking page for USD 500 (he has not disputed the Complainant’s evidence on this issue). On balance it seems likely to the Panel that the adoption of a blog format for the Respondent’s Website is intended to confer an argument of apparent legitimacy whilst the Respondent continues to seek some sort of commercial return from the Disputed Domain Name. Overall the Panel concludes the Respondent has failed to establish any rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
(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 web site 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 web site or location or of a product or service on your web site or location.
The Panel concludes that on the balance of probabilities the Respondent’s actions in registering and using the Disputed Domain Name fall within paragraph 4(b)(iv) above – the Respondent was seeking to attract customers who would purchase LEGO products from him by using the Disputed Domain Name which would be taken to be a domain name associated with the Complainant. The Panel does not consider the Respondent’s subsequent conduct and the changes he has made to the Respondent’s Website alter this analysis. As discussed above the Respondent still appears to be trying to derive commercial benefit from the Disputed Domain Name, such potential benefit arising because it includes the LEGO trademark as its dominant feature. His conduct in this regard would in the Panel’s view fall within paragraph 4(b)(i) above and represents an alternative basis for finding registration and use in bad faith.
For completeness the Panel would add that it does not think the Complainant’s case that the Respondent is using his blog to leak details of a forthcoming LEGO movie is correct. It seems to the Panel that he is in fact pointing out that a current range of LEGO Avenger toys might themselves reveal something about a forthcoming Marvel Avengers film. However, the Panel does not consider this point matters given its analysis above.
As a result, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <legoavengers.com> be transferred to the Complainant.
Nick J. Gardner
Date: March 19, 2019