WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Brock Flanagan, BJF Web Design
Case No. DAU2016-0027
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Brock Flanagan, BJF Web Design of Capalaba, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <legoman.com.au> is registered with Web Address Registration Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2016. On June 29, 2016, the Center transmitted by email to Web Address Registration Pty Ltd a request for registrar verification in connection with the disputed domain name. On June 30, 2016, Web Address Registration Pty Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 8, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2016. The Respondent submitted informal communications on July 10, 11 and 13, 2016. The Response was filed with the Center on July 18, 2016. On July 19, 2016, the Respondent confirmed that his Response was complete. On August 3, 2016, the Respondent submitted further informal communication.
The Center appointed James A. Barker as the sole panelist in this matter on August 5, 2016. 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 LEGO and other trademarks used in connection with the famous LEGO brands of construction toys and other LEGO branded products.
The trademark LEGO is widely known, due in part to decades of advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials. In Australia, the Complainant is the registered owner of Australian Trademark Registration LEGO, No. 129258, registered on September 17, 1956.
The Complainant has subsidiaries and branches throughout the world, and its licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights, in Australia, where the Respondent is domiciled, and elsewhere. The Complainant’s LEGO products are sold in more than 130 countries. Moreover, the Complainant is the owner of over 5,000 domain names containing the term “lego”, including <lego.com.au>.
The disputed domain name was registered on November 17, 2015, as confirmed by the Registrar.
The Complainant submitted a screenshot of the website at the disputed domain name. That webpage had no content on it, other than the word “Home” above a red horizontal strip (replicating the texture of the Complainant’s products), a part picture of the Complainant’s products, and a banner displaying the words “LEGO MAN” together with various links. At the date of this decision, the disputed domain name resolves to a somewhat more developed homepage, with a similar red horizontal strip, a part picture of the Complainant’s products in one upper corner, and the term “KEN” in the other upper corner, immediately above the word “Home”. Beyond that, the website did not appear to be functional or display any substantive content.
5. Parties’ Contentions
The disputed domain name is confusingly similar to the Complainant’s trademark LEGO. The fame of the Complainant’s trademark has been confirmed in numerous previous decisions under the Uniform Domain Name Dispute Resolution Policy (“UDRP”). For example, in LEGO Juris A/S v. Level 5 Corp, WIPO Case No. D2008-1692, the panel found that “the Complainant has established that LEGO and LEGOLAND are well-recognized and world famous trademarks and that the trademarks are distinctive”.
In addition to the trademark LEGO, the disputed domain name comprises the generic suffix “man”. The Complainant points to previous UDRP cases including Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488, in which 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, the suffix does not detract from the overall impression.
Secondly, the Complainant says that the Respondent has no rights or legitimate interests in 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 in the WhoIs details that would suggest that the Respondent has been using the Complainant’s mark in any other way that would give him any legitimate rights in the name. Consequently, the Respondent may not claim any rights established by common usage. Neither has the Complainant given a license or authorization of any other kind to the Respondent to use the trademark LEGO.
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 appears to still be under construction to some extent but that is clearly intended for commercial use.
Thirdly, the Complainant says that the disputed domain name was registered or has subsequently been used in bad faith. The Complainant points to a large number of abusive domain name registrations of its mark which have been the subject of proceedings under the UDRP, as evidence of the considerable value and goodwill in its LEGO mark.
In this case, the Respondent registered the disputed domain name on November 17, 2015, subsequent to the Complainant’s registration of its mark in Australia by several decades. Given the fame of the Complainant’s mark, and the content of the Respondent’s website, it is clear that the Respondent knew of the Complainant’s legal rights in the LEGO mark at the time of the registration.
The Complainant first tried to contact the Respondent on December 17, 2015, through a cease-and-desist letter. In response, the Respondent demanded to be reimbursed with AUD 4,000 to transfer the disputed domain name, as he believed that he should also be reimbursed for any loss of future income from his claimed business (intended for the website).
The Complainant’s trademark is famous worldwide. It is clear that the Respondent was aware of the rights the Complainant has in the trademark and the value of that trademark, at the point of the registration. There is no connection between the Respondent and the Complainant. The disputed domain name is connected to a website that appears to still be under construction to some extent but that is clearly intended for commercial use. Indeed, there is a tab on the website connected to the disputed domain name labelled “Online Store”. The only plausible explanation for this is that the Respondent is preparing to use the website to offer the Complainant’s, or related, products for sale. There is no disclaimer on the website and a modified version of the Complainant’s famous LEGO logotype is displayed.
The Respondent says that his intention was never to cause any problems for anyone when he originally registered the disputed domain name.
The Respondent says that his son has numerous severe health problems that he and his wife have had to deal with through his life so far.
The Respondent states that his son is incredibly socially withdrawn, and that he would never be able to cope in real world situations. The Respondent started introducing him to the Minifigures collectable range produced by the Complainant. These are collectable figures that come in sets of usually around 16-20. A new set is released roughly each year.
The Respondent states that he found some amazing results once his son started to work his way through his first collection, where he would actively engage with extended family members about his “little men” these were members of the family that he had previously never even made eye contact with let alone spoken to. The Respondent then took him to his first ever Lego expo and sure enough he started to talk to other collectors that were there about his “little men”. Before long he was asking strangers if they had any of the figures that he was missing.
Being somewhat alarmed at this the Respondent and his wife decided that they needed to find a safer environment for their son to interact with. So the Respondent had the idea of setting up a website with the intention of running a forum for other fellow collectors could make contact with each other to trade figures. This was the main purpose behind the Respondent’s registration of the disputed domain name.
This was one of the first domains that the Respondent had searched and was surprised that it was available, and so purchased it to set the forum up on. During his time collecting the figures the Respondent had amassed a fairly large collection and had started looking at ways to display them in his son’s room. The Respondent was able to purchase a deep picture frame and mount the figures from each set into these, allowing them to be wall mounted in both his bedroom and the Respondent’s Lego room. The Respondent had also toyed with the idea of setting up a small web commerce module on this site to sell the frames to other collectors if they also liked his idea. These were the only reasons behind the Respondent’s registration of the disputed domain name.
The Respondent says that he was extremely shocked to receive a “cease-and-desist” email from the Complainant within ten days of registering the disputed domain name. The Respondent understands that the disputed domain name that he has registered does contain the letters of the Complainant’s name, however, the Respondent assumed that if this was a domain name that they are interested in for their company then they would have already registered it themselves.
The Complainant has claimed that the Respondent is taking an unfair commercial advantage of the LEGO trademark and that somehow the Respondent and his son would be cutting into their market share. All the Respondent initially asked for was AUD 4,000 (USD 3,037.48) to cover expenses and time that the Respondent has put into this project. As a gesture of good faith the Respondent states that he is willing to lower his request to AUD 3,000 (USD 2,277.53) and will then transfer the disputed domain name over to the Complainant. The Respondent does not believe that this request is out of line nor unjustified.
The Response is generally similar to the claims made by the Respondent in correspondence with the Complainant between December 17, 2015 and June 23, 2016.
6. Discussion and Findings
For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a name, 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 was registered in bad faith or subsequently used in bad faith.
The onus is on the Complainant to establish each of the above circumstances.
The Panel notes that the Policy is, with some notable exceptions discussed below, substantially similar to the UDRP and, as such, the Panel has drawn on authority concerning the UDRP, in relation to similar terms of the Policy.
A. Identical or Confusingly Similar
There is no dispute that the Complainant has rights in its LEGO mark. The Respondent does not directly address the issue of whether the disputed domain name is confusingly similar to that mark. That said, the Panel has little doubt that there is such confusing similarity, having regard to findings in similar cases.
The Complainant’s mark is wholly incorporated in the disputed domain name, with only the addition of the generic word “man”. A large number of previous cases under the Policy and the UDRP, which involved the addition of a generic word to the Complainant’s mark, were decided in the Complainant’s favour.
One recent example is LEGO Juris A/S v. WhoisGuard Protected, WhoisGuard, Inc. / Michael Schutt, WIPO Case No. D2016-1082, which involved the addition of the word “shop” to the Complainant’s mark. In that case, the panel noted that: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark. See Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505. In this case, the disputed domain name contains the Complainant’s trademark LEGO in its entirety. The addition of the suffix ‘shop’ does nothing to diminish this confusing similarity.”
Another recent example is LEGO Juris A/S v. Whois Privacy Protection Service by VALUE-DOMAIN / Kazuhiko Seki, WIPO Case No. D2016-1080, involving the addition of the word “happy”. The panel found that “The dominant portion of the disputed domain name, <lego-happy.com>, is ‘lego’, which is identical to the Complainant’s trademark. Neither the hyphen nor ‘happy’ detracts from the overall impression. LEGO is a widely-known trademark and it has no other meaning than the name of the Complainant. Consumers may mistake the disputed domain name to be associated with the Complainant.”
These are only two examples decided in the Complainant’s favour from a large number.
In this case, there is little relevant difference with many of these previous cases. Taking a similar approach, the Panel also finds that the disputed domain name differs from the Complainant’s trademark only by the addition of the generic word “man” and therefore is confusingly similar to the Complainant’s mark.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The second thing that the Complainant must establish is that the Respondent has no rights or legitimate interests in the disputed domain name.
The consensus view among UDRP panels is that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name the burden shifts to the respondent to come forward with evidence of such rights or legitimate interests. This general position under the UDRP is the same as that under the Policy: see the auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”), paragraph 2.1. The Complaint in this case established a sufficient prima facie case through its arguments and evidence.
The Respondent does not explicitly address the issue of whether he has rights or legitimate interests. However, the Respondent stated, in further correspondence to the Center on July 10, 2016, that the purpose of his domain name registration was “to establish a forum where other collectors could come together and exchange / swap figures to help them complete their sets.” The Respondent had produced some deep picture frames to display lego figures. In the Response, the Respondent also stated that “I had also toyed with the idea of setting up a small web commerce module on this site to sell the frames to other collectors if they also liked my idea.”
Paragraph 4(c) of the Policy sets out a three circumstances any one of which, if established, may demonstrate a respondent’s rights or legitimate interests.
One circumstance is where the Respondent is making a legitimate non-commercial or fair use of a disputed domain name (paragraph 4(c)(iii) of the Policy). In this case, the Respondent gives essentially two reasons for registering the disputed domain name. As noted above, the first was to establish a website as a forum for collectors. The second reason was in consideration of using the website to sell frames for the display of LEGO figures. By the Respondent’s admission, he had a mix of commercial and non-commercial reasons in mind. The Panel also notes that the Respondent’s website has not been developed to the point of actual use and contains minimal information.
In this connection, the difficulty for the Respondent’s case under paragraph 4(c)(iii) of the Policy is that it requires a non-commercial use to be entire. That is, a mix of commercial and non-commercial purposes does not qualify an activity as “non-commercial or fair use” within the meaning of paragraph 4(c)(iii) of the Policy. See, e.g., Sierra Wireless, Inc. v. Fabio Bianchini, WIPO Case No. D2009-0920. A further hurdle for the Respondent is that he has not yet got to the point of “making” a non-commercial or fair use. See Red Bull GmbH v. Maxwell Arnold, WIPO Case No. D2014-1589.
Another circumstance is where the Respondent (as an individual, business, or other organisation) has been commonly known by the domain name, even if it acquired no trademark or service mark rights (paragraph 4(c)(ii) of the Policy). The Respondent does not suggest that he is commonly known by the disputed domain name. For completeness, the Panel also notes that the registration and use of a disputed domain name, in connection with a website, does not by itself support a conclusion that the Respondent is commonly known by the domain name. Yakka Pty Ltd v. Mr. Paul Steinberg, WIPO Case No. D2004-0502.
The third circumstance is where the Respondent is making a bona fide use of, or demonstrable preparations to use, the disputed domain name in connection with an offering of goods or services (paragraph 4(c)(i) of the Policy). The Panel accepts on their face the Respondent’s statements of making “demonstrable preparations” to use the disputed domain name for the two purposes outlined above (a users’ forum and a web commerce module). The difficulty is whether that proposed use is “bona fide” as that term is used under the Policy.
As relevantly stated in the auDA auDRP Overview 1.0, paragraph 2.1: “To determine whether a respondent’s use of a domain name is in good faith requires a consideration of the respondent’s motivation for undertaking that use; which, in turn, requires an evaluation of all the facts and evidence. Relevant facts include: the degree of similarity of the domain name to the complainant’s mark; the respondent’s awareness of the complainant’s business conducted under its mark; the likelihood of customer confusion; and whether the domain name is genuinely being used for its descriptive meaning.”
Considering these factors, the disputed domain name is confusingly similar to the Complainant’s LEGO mark. The Respondent was, by his own admission, obviously aware of the Complainant and its business. The Panel considers that there is a reasonable likelihood of consumer confusion with the Complainant’s mark, based on the whole incorporation of the Complainant’s mark and the non-distinctive nature of the added term “man”. It does not seem clear that the disputed domain name, as a whole, was used for a descriptive meaning. Although the Respondent chose the Complainant’s mark because it was, in one sense, descriptive of the Complainant’s products, the conjoined term “legoman” is not itself clearly descriptive of a particular product or service.
In the circumstances, the Panel is of the view that the commercial intent on the part of the Respondent in relation to the Complainant’s mark, as outlined above, does not allow for a finding that the Respondent has rights or legitimate interests in the disputed domain name.
For all of these reasons, the Panel finds that the Respondent does not have relevant rights or legitimate interests in the disputed domain name.
In making this finding, the Panel notes that the Respondent provides a reasonable, plausible and consistent explanation for his motivation in registering the disputed domain name. However, the Panel is obligated to apply the terms of the Policy, and have regard to previous decisions that elucidate it. Applying those decisions leads the Panel to find in the Complainant’s favour.
C. Registered or Subsequently Used in Bad Faith
The third matter which the Complainant must establish is that the disputed domain name was registered or subsequently used in bad faith. As stated by the panel in Mandarin Oriental Services B.V. v Control Alt Delete, WIPO Case No. D2000-1671: “The essential question for the Panel is whether or not the Respondent registered the Domain Name with the Complainant specifically in mind.” The Respondent does not deny that he had the Complainant’s products in mind in registering the disputed domain name.
Further, where a domain name is identical or confusingly similar to a trademark or name in which the complainant has rights, auDRP panels typically find that use of the domain name by the respondent to resolve to a website – whether of the respondent or some third party – is use in bad faith pursuant to paragraph 4(b)(iv) of the Policy. See the auDA auDRP Overview 1.0, paragraph 3.1D. As noted above, and having regard to the very large number of past cases involving the Complainant’s mark under the Policy and UDRP, the disputed domain name is confusingly similar to the Complainant’s mark. The disputed domain name also resolves to a website with a clear, and admittedly commercially intended, relationship with the Complainant’s products without any indication on the website as to the nature of the relationship, or lack thereof, between the parties.
For these reasons, the Panel also finds that the Complainant has established its case under paragraph 4(a)(iii) of the Policy.
For all 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 <legoman.com.au> be transferred to the Complainant.
James A. Barker
Date: August 19, 2016