WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Alexander Newton
Case No. D2014-2086
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Alexander Newton of Herts, United Kingdom of Great Britain and Northern Ireland ("UK").
2. The Domain Names And Registrar
The disputed domain names <lego.bid> and <lego.london> (the "Domain Names") are registered with Webfusion Ltd. trading as 123-reg (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 26, 2014. On November 27, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On November 28, 2014, the Registrar 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 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 28, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 29, 2014.
The Center appointed Bruce E. O'Connor as the sole panelist in this matter on January 6, 2015. 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 LEGO trademark, which initially was adopted and used for toy building blocks. That trademark is protected by hundreds of trademark registrations worldwide for goods and services in multiple classes. The registrations most germane to this proceeding include UK Registration No. A 1,405,685 dated July 30, 1957 and Community Registration No. 39,800 dated October 5, 1998.
The Complainant's licensees are authorized to exploit the Complainant's intellectual property rights, including its trademark rights, in the United Kingdom where the Respondent resides and elsewhere. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including the United Kingdom.
The Complainant is also the owner of more than 2400 domain names containing the term LEGO.
The LEGO trademark is among the best-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO trademark on all products, packaging, displays, advertising, and promotional materials. Indeed, others have recognized the LEGO trademark as being famous.
The Complainant has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. The Complainant also maintains an extensive website under the domain name <lego.com>.
The Respondent registered the Domain Names on October 6, 2014, which Domain Names are being used in conjunction with advertising pages including sponsored listings of links to commercial third party websites. On each advertising page, the pertinent Domain Name is prominently displayed at the top of the page, in addition to being used and displayed as part of the URL of the page. Each page also bears the logo of the Registrar and a disclaimer of any relationship between the company preparing the advertising page and the domain name owner, on the one hand, and the advertisers in the sponsored listings, on the other hand.
5. Parties' Contentions
A. The Complainant
Identical or confusingly similar
The Domain Names comprise the term LEGO, identical to the Complainant's world famous LEGO trademark. The fame of the trademark has been confirmed in numerous previous UDRP decisions. The relevant comparison to be made is between only the second-level portion of the Domain Names and the LEGO trademark. Accordingly, the addition of the new generic Top-Level Domains ("gTLDs") ".london" and ".bid" does not have any impact on the overall impression of the dominant portion of the Domain Names and is therefore irrelevant in determining the first element of the Policy.
Summarizing, the Domain Names are identical to the Complainant's LEGO trademark.
Rights or legitimate interests
The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the Domain Names. When carrying out a reverse WhoIs regarding the Respondent it came to the Complainant's attention that the Respondent had registered over 1800 domain names, some of which had incorporated other famous brands and trademarks.
It is also clear, that no license or authorization of any other kind, has been given by the Complainant to the Respondent, to use the LEGO trademark.
The Respondent is not an authorized dealer of the Complainant's products and has never had a business relationship with the Complainant. There are no visible disclaimers stating that the advertising pages using the Domain Names are not endorsed or sponsored by the Complainant.
It is clear that the Respondent knew of the Complainant's legal rights in the LEGO trademark at the time of the registrations. It is rather obvious that it is the fame of the trademark that has motivated the Respondent to register the Domain Names. That is, the Respondent cannot claim to have been using LEGO, without being aware of the Complainant's rights to it.
The Respondent is today not using the Domain Names in connection with a bona fide offering of goods or services. Instead the Respondent has intentionally chosen domain names based on a registered trademark in order to generate traffic and income through websites with sponsored links. By this, the Respondent is using the LEGO trademark in order to mislead Internet users to commercial websites.
No evidence has been found that the Respondent uses LEGO as a company name or has any other legal right in the name.
Referring to the above, the Respondent has no rights or legitimate interests in respect of the Domain Names.
Bad faith registration and use
The LEGO trademark in respect of toys has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the whole Community and throughout the world. The awareness of the LEGO trademark is considered, in the whole Community in general, to be significant and substantial. For example, the number of third party domain name registrations comprising the LEGO trademark in combination with other words has skyrocketed the last years, resulting in over twenty UDRP proceedings since 2011.
The Respondent registered the Domain Names on October 6, 2014. The trademark registrations for LEGO predate these domain name registrations by decades. As with the many UDRP proceedings involving third party domain name registrations mentioned above, it is rather obvious that it is the fame of the trademark that has motivated the Respondent to register the Domain Names. Considering that LEGO is a world famous trademark and that the Domain Names incorporate this trademark in its entirety, without having a legitimate interest in the name, it is clear that the Respondent knew of the Complainant's legal rights at the time of the registrations.
The Complainant first tried to contact the Respondent on October 8, 2014, through a cease and desist letter sent by e-mail. Despite that reminders were sent, no response was ever received. The failure of a respondent to respond to a cease and desist letter, or a similar attempt at contact, has been considered relevant in a finding of bad faith.
As stated above, the Respondent has intentionally chosen the Domain Names based on the Complainant's registered trademark in order to generate traffic and income through commercial websites which appear to still be under construction to some extent. However, the websites connected to the Domain Names are already commercial through sponsored advertisements. The only rational reason for using the Domain Names would be to attract some of the Complainant's customers to the Respondent's sites.
Whether or not the Respondent has influenced what links should be included on the websites is irrelevant for the finding of bad faith. It is also without relevance whether or not the Respondent is actually getting revenue from the websites himself.
In conclusion, the Respondent registered and used the Domain Names in bad faith.
B. The Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion And Findings
In view of the Respondent's failure to submit a response, the Panel will decide this proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.
In order for the Complainant to obtain a transfer of the Domain Names, paragraph 4(a) of the Policy requires that the Complainant must demonstrate to the Panel that:
(i) the Domain Names are identical or confusingly similar to the LEGO trademark; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established rights in the LEGO trademark, by reason of its registrations including those cited above.
The Domain Names differ from the LEGO trademark only by the addition of the gTLDs ".london" and ".bid". These differences do not distinguish the Domain Names, as it is well established that the addition of a gTLD typically does not distinguish a domain name from a trademark.
The Panel finds that the Domain Names are confusingly similar to the LEGO trademark, and that the Complainant has met its burden of proof under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists three circumstances in particular, but without limitation, that demonstrate rights or legitimate interests of a domain name registrant to a domain name for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice of the dispute, the Respondent's 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 and services; or
(ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; 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 Panel finds that the Complainant has made a prima facie showing that the Respondent does not come under these circumstances.
Notice of this dispute occurred in October 2014, when the Complainant's representative sent its emailed notice of infringement to the Respondent.
Long prior to that time, it is evident that the LEGO trademark had achieved the notoriety of a world famous trademark. The submissions by the Complainant, especially the prior UDRP decisions noted in the Complaint, establish this fame. And, the Panel takes notice of the fame of the trademark from the Panel's own experience.
The Respondent's Domain Names are resolving to websites displaying advertising pages and commercial links. In view of the fame of the LEGO trademark, it is immaterial whether the sponsored listings: are or are not chosen by the Respondent; or, are or are not for products competitive with toys and good related to toys. For this Panel, it is the unauthorized use of the LEGO trademark that attracts Internet users to these pages. In any event, the links in this case are based on the trademark value of LEGO, and the Domain Names here do not consist of dictionary words. Such use is not bona fide.
The Respondent is not known by the Domain Names, and the advertising pages associated with the Domain Names are commercial.
Given the evidence, the Panel finds that none of the circumstances enumerated in paragraph 4(c) of the Policy apply.
Because the Respondent has not submitted any response to the Complaint, the Complainant's prima facie showing meets the Complainant's burden of proof under paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The circumstances of paragraph 4(b) of the Policy are illustrative but not exhaustive of the circumstances under which bad faith registration and use under Policy paragraph 4(a)(iii) can be established.
Paragraph 4(b) of the Policy reads:
The following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(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 online 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.
In each of the circumstances listed in Policy paragraph 4(b), or otherwise, the Complainant must establish that the Respondent intentionally and actively registered and used the Domain Names in bad faith as provided under the Policy.
Lack of rights or legitimate interests under Policy paragraph 4(a)(ii) does not automatically translate into a finding of bad faith under Policy paragraph 4(a)(iii). A sufficient showing under Policy paragraph 4(a)(iii) generally requires more than assertions of bad faith.
The Complainant has amply demonstrated in its evidence and arguments that the Respondent's actions fall within the circumstances in Policy paragraphs 4(b)(iii) and 4(b)(iv).
Central to the following findings is the uncontroverted evidence of fame of the LEGO trademark, which establishes that the Respondent knew or should have known of that trademark.
Regarding registration in bad faith, the Panel cannot discern any reason why the Respondent would have registered the Domain Names, other than the reason of intent to disrupt the business of the Complainant. If the Respondent had such a reason, it should have said so either in response to the Complainant's cease and desist letter or in response to this Complaint.
Regarding use in bad faith, the Respondent's advertising pages rely on the likelihood of confusion between the LEGO trademark and the Domain Names. The only conclusion that the Panel can draw, absent a reason from the Respondent, is that the Respondent used the Domain Names with intent to attract Internet users to those advertising pages, as per paragraph 4(b)(iv).
The Panel finds that the Complainant has met its burden of proof 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 Domain Names <lego.bid> and <lego.london> be transferred to the Complainant.
Bruce E. O'Connor
Date: January 18, 2015