WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. Domains by Proxy, Inc. / Eric Williams Case No. D2009-1315 1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services AB, Sweden.
The Respondent is Domains by Proxy, Inc. of Scottsdale, Arizona, United States of America / Eric Williams of Buckeye, Arizona, United States of America (collectively the “Respondent”). 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2009. On October 6, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On October 8, 2009, GoD, Inc. 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 October 9, 2009, 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 amendment to the Complaint on October 12, 2009. The Center verified that the Complaint together with the amendment to 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 October 14, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 9, 2009. The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on November 9, 2009. 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 that makes and sells the famous LEGO brand of construction toys and other Lego branded products.
The Complainant and its associated companies are the owners of many international trademarks for LEGO. In particular, the Complainant is the registered owner of trademark registered No.1018875 registered with the United States Patent and Trademark Office on August 26, 1975, which together with the Complainant's many other international trademarks for LEGO are referred to hereafter as “the LEGO mark”.
The Complainant and its licensees and predecessors commenced use of the LEGO mark in the United States of America (“the United States”) during 1953 and the use of the mark has been extensive, exclusive and continuous since then. Over the years, the Complainant's business of making and selling LEGO branded toys has grown considerably, and it is now the most prominent manufacturer of toys and one of the most prominent brands in the world. In 1980 its revenue was more than USD 1.8 billion. The Complainant's Lego products are now sold in more than 130 countries, including in the United States where the Respondent is domiciled.
The Complainant and its associated companies have expanded their use of the LEGO mark to include computer hardware and software, books, videos and computer controlled robotic construction sets.
The Complainant is also the owner of more than 1000 domain names containing the term “Lego” and operates its own website.
The domain name was registered by the Respondent on March 21, 2009. 5. Parties' Contentions A. Complainant
The Complainant alleges that the domain name, should no longer be registered with the Respondent, but that it should be transferred to the Complainant.
It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain name is confusingly similar to the Complainant's registered LEGO mark, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.
In support of its case on the first of these three elements, the Complainant relies on the registered LEGO mark to which reference has already been made. It then says that the domain name is confusingly similar to the LEGO mark as the domain name incorporates the whole of the LEGO mark and merely adds the word “location” which is a word in common usage, suggesting that the domain name is owned by the Complainant and that it will lead to a website providing information on the location of stores where the Complainant's products may be bought. Accordingly it is submitted that the addition of the word “location” does not detract from or diminish the confusing similarity arising from the use of the LEGO mark in the domain name.
The Complainant then contends, to establish the second element, that the Respondent has no rights or interests in the domain name because he has used the famous LEGO mark in his domain name, the facts show an obvious intention by the Respondent to benefit from the reputation of the well-known LEGO mark in an illegitimate manner, the domain name is not being used for a bona fide offering of goods and services and the Respondent has not been authorized to use the mark in a domain name or anywhere else.
The Complainant then contends, to establish the third element, that the domain name has been registered and used in bad faith, because the facts show that the Respondent registered the domain name primarily to trade off the Complainant's famous LEGO mark and that the Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's 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 the Respondent's website or location or of a product or service on the site or location. That is so because the Respondent is not an authorised distributor of the Complainant's products, but he has linked the domain name to a website with sponsored links that advertise the Complainant's famous goods such as its toys and kits without its permission. It is also submitted by the Complainant that all of the facts constitute bad faith both with respect to the registration and the use of the domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In that regard, the Panel also notes that the fact that the Respondent has not made a submission does not avoid the necessity of examining the issues and of doing so in the light of the evidence. The onus remains on the Complainant to make out its case and past WIPO UDRP panels have said many times that despite the absence of a submission from a respondent, a complainant must nevertheless show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.
However, as the Panel will illustrate later, it is possible to draw inferences from the evidence that has been submitted and in some cases from silence. Indeed, paragraph 14 of the Rules incorporates both of those notions into the procedures of the Panel.
The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.
For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
It is to be noted that paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn. A. Identical or Confusingly Similar
The Panel accepts the evidence submitted by the Complainant that together with its associated companies it owns the registered LEGO trademarks to which reference has been made and therefore has rights in those marks.
The domain name is confusingly similar to the LEGO mark as the domain name incorporates the whole of the LEGO mark and merely adds the word “location” and the gTLD suffix “.info”. The word “location” that has been added is a word in common usage and does not detract from or diminish the confusing similarity arising from the use of the LEGO mark in the domain name. It is well-known that products of the fame of Lego products are sold from particular stores and retail outlets and that it is a common practice for potential purchasers to inquire about the location of the nearest store where they may buy the products of their choice. Thus, the public, faced with both the domain name and the LEGO mark would naturally assume that the domain name was owned by the Complainant or connected with it and that it would lead to a website where they could find information about where they could buy goods supplied under the LEGO mark.
It has also long been held that suffixes such as the gTLD suffix “.info” cannot negate confusing similarity where it otherwise exists, as it does in the present case.
The Panel finds that the Complainant has therefore made out the first of the three elements that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name. But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
Thus, if the Respondent proves any of these elements or indeed anything else that shows it has a right or interest in the domain name, the Complainant will have failed to discharge its onus and the Complaint will fail.
A panel's task in deciding if a respondent has any rights or legitimate interests in a domain name is made more difficult when the respondent is in default and does not file a response or any other form of submission. The Respondent in the present case was given notice that he had until November 3, 2009 to send in his Response, that he would be in default if he did not do so and that, by virtue of paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.
It is also well established that, as it is put in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions:
“…a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
The Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name.
The prima facie case is based on the facts that:
(i) the LEGO mark is one of the most famous in the world;
(ii) it indicates one of the most famous manufacturers of construction toys, computer hardware and software, books, videos and computer controlled robotic construction sets in the world including in the United States where the Respondent is domiciled;
(iii) the Respondent chose this prominent trademark as part of the domain name and made only a minor addition to it implying a reference to locations where the famous Lego products could be acquired so that the resulting domain name emphasised the confusing similarity that automatically arose from using the LEGO mark in the domain name;
(iv) the Respondent then linked the domain name to a website that on the unchallenged evidence advertised the Complainant's products;
(v) the Respondent is not an authorised distributor of the Complainant's products and has not been authorized by the Complainant to make such a use of the LEGO mark or name in a domain name or anywhere else or to use it to advertise the Complainant's products.
The Respondent has not made any attempt to rebut this prima facie case, and the Panel therefore concludes that the Respondent has no rights or legitimate interests in the domain name.
The Panel finds that the Complainant has therefore made out the second of the three elements that it must establish. C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or 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 the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's 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 the respondent's website or location or of a product or service on the site or location.
The Complainant relies on paragraphs 4(b)(iv) and also on the general notion of bad faith, which it is clearly entitled to do, for there have been many UDRP panel decisions that have held that bad faith is not limited to the factors set out in paragraph 4(b) of the Policy.
The Panel finds that the evidence submitted by the Complainant makes out a strong case that the domain name was registered and is being used in bad faith. In particular, the facts bring the case squarely within the provisions of paragraph 4(b)(iv) of the Policy. That is so for the following reasons.
The evidence shows that there was incorporated in the domain name when it was registered the Complainant's famous LEGO trademark with an addition suggesting that the domain name would lead to information on where the Complainant's famous toy kits and related products could be purchased. This raises the preliminary assumption that the domain name was registered and has since been used for some illegitimate purpose. It was open to the Respondent to show that this was not so, but he has declined the opportunity to do so.
Secondly, the evidence is that the Respondent has used the domain name to provide a link to a website with a “Lego” banner and carrying advertisements by way of sponsored links for the Complainant's products that are manufactured and sold under the LEGO mark. The Panel has not been able to verify this for itself as the domain name no longer resolves to an active website. However, the Panel accepts the submission of the Complainant and the evidence attached to the Complaint, including a screen shot showing the website in question as it was on October 2, 2009 and which is Annex 10 to the Complaint. That screenshot shows advertisements for several of the Complainant's well-known products that are in fact being promoted on the website under the name Lego. This evidence thus shows that the Respondent was improperly using a well-known trademark to mislead consumers looking for the Complainant's official website to obtain information about where to buy the Complainant's goods so that they would instead be offered the Complainant's goods via the Respondent's unauthorised website. As the evidence is also that the Respondent is not an authorised distributor of the Complainant's products, the Respondent has thus been acting in bad faith to generate Internet traffic by creating confusion with the LEGO mark for his own benefit.
That conclusion makes it clear that the facts of the present case bring it squarely within the provisions of paragraph 4(b)(iv) of the Policy.
Moreover the whole modus operandi of the Respondent in acquiring and using such a famous trademark without any authority or legitimate purpose brings the registration and subsequently the use of the domain name within the general notion of bad faith on which the Complainant also relies.
The Panel therefore finds that the Respondent has registered and used the domain name in bad faith.
The Panel finds that the Complainant has thus made out the third of the three elements that it must establish under the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
The Honourable Neil Anthony Brown QC
Sole Panelist
Dated: November 11, 2009
Full & Egal Universal Law Academy