WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. Todd Ahlstrom Case No. D2009-1712 1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Todd Ahlstrom of Lehi, Utah, United States of America, appearing pro se. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. The domain name was registered on October 8, 2008. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2009. On December 15, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On December 18, 2009, GoD, Inc. 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 23, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2010. The Response was filed with the Center on January 11, 2010.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on February 5, 2010. 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 the owner of the trademark LEGO and all other trademarks used in connection with the famous Lego brand of construction toys and other Lego branded products. The Complainant's licensees are authorised to exploit the Complainant's intellectual property rights, including its trademark rights, in the United States and elsewhere. The Complainant and its licensees, consisting of the LEGO Group of Companies, through their predecessors commenced use of the LEGO mark in the United States during 1953. The use of the LEGO mark has been extensive and continuous since then. Over the years, the business of making and selling LEGO branded toys has grown remarkably. By way of example, the revenue for the LEGO Group of Companies in 2008 was more than US$1.8 billion. The Complainant has subsidiaries and branches throughout the world and products marked LEGO are sold in more than 130 countries including in the United States.
The Complainant is also the owner of more than 1,000 domain names containing the term LEGO. These are set out at Annex 7 to the Complaint. The Complainant has a strict policy that all domain names containing the word LEGO should be owned by the Complainant.
The trademark LEGO is among the best known trademarks in the world, due in part to many years of extensive advertising which prominently depicts the LEGO mark on all producst, packaging, displays, advertising and promotional materials. The LEGO trademark has been recognised as being a famous mark. By way of illustration at Annex 8 is a list of the top 500 Superbrands for 2009/2010 provided by Superbrands UK showing LEGO as number eight in the list of the most famous trademarks and brands in the world.
The LEGO Group has expanded its use of the LEGO trademark to include, inter alia, computer hardware and software, books videos and computer controlled robotic construction sets. The LEGO Group also maintains extensive websites under the domain name .
In the absence of evidence to the contrary, the Panel accepts the truth of the above facts. 5. Parties' Contentions A. Complainant
The Complainant contends:-
1. The domain name is identical or confusingly similar to a trademark or servicemark in which the Complainant has rights. In particular, the Complainant submits that the dominant part of the domain name comprises the word ‘lego' which is confusingly similar as well as identical to the registered trademark LEGO.
2. The Respondent has no rights or legitimate interests in respect of the domain name.
3. The Complainant submits that it has not found any evidence of trademarks or trade names corresponding to the domain name which would give the Respondent legitimate rights in the name “lego” as used in the domain name.
4. The domain name was registered and is being used in bad faith. The Complainant relies upon the resolution of the domain name to the Joomla Home Page. It also relies upon the content of correspondence passing between the Complainant's representative and the Respondent prior to the commencement of the Complaint. B. Respondent
The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
1. The Respondent submits that the letters L E G O are common in the English language and that the fact that the domain name in dispute contains these four letters is not confusing.
2. The Respondent has no rights or legitimate interests in respect of the domain name.
This point is not specifically addressed by the Respondent.
3. The domain name was registered and is being used in bath faith.
The Respondent denies that the domain name is being used in bad faith and that he is not acting for commercial gain by directing traffic to the Joomla website. He asserts that there is nothing on the Joomla site that benefits him in any way. He submits that he registered the domain name as part of a project that he planned on doing with his son. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel is satisfied on the evidence set out above that the Complainant has rights in the trademark LEGO. It is also satisfied that the dominant part of the domain name comprises the word LEGO.
In his response, the Respondent submits that the letters L E G O are common in the English language and the fact that the domain name in dispute happens to contain those four letters in addition to another four letters would confuse no-one into thinking that the Respondent was related to the Complainant.
In the Panel's view, the Respondent's argument is highly artificial and does not deal with the reality of the form of the domain name. The Respondent is not using the letters L E G O but is using the letters put together in a way which constitutes the word mark LEGO.
The Panel considers that the mark LEGO is the dominant part of the domain name and that the word ‘links' is merely descriptive. It accepts the argument of the Complainant that the use of the suffix ‘links' does not have any impact on the overall impression of the dominant part of the domain name.
The Panel therefore finds that the domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant relies on the fact that the Respondent has no registered trademarks or trade names corresponding to the domain name nor is there any evidence that the Respondent has been using Lego in any way which would give any legitimate rights in the name. The Complainant also confirms that no licence or authorisation of any other kind has been given by the Complainant to the Respondent to use the trademark LEGO. For example, the Respondent is not an authorised dealer of the Complainant's products and has never had a business relationship with the Complainant.
The Panel has accepted that the mark LEGO is a famous mark which has been registered as a trademark in numerous jurisdictions for very many years. The domain name in dispute was registered as recently as October 8, 2008. The Panel finds that, given the famous nature of the mark and the Respondent's own confirmation that he registered the domain name because in part he “had a fondness” for Lego means that the Respondent was well aware of the Complainant's rights at the date of registration. The panel notes here that neither is the Respondent making a legitimate non-commercial or fair use of the domain name in line with paragraph 4©(iii) of the Policy.
In these circumstances, the Panel is satisfied that the Respondent has no rights or legitimate interest in respect of the domain name. C. Registered and Used in Bad Faith
The domain name is registered and is being used in bad faith.
At Annex 10 to the Complaint is an extract from the CMS system Joomla commercial website. By using the domain name in dispute, the user is linked to this website.
The dispute began when the representatives of the Complainant Melbourne IT Digital Brand Services wrote a demand letter to the Respondent on August 12, 2009 informing the Respondent of the Complainant's rights and requesting that the Respondent transfer the domain name to the Complainant. This was followed by a series of emails which are set out at Annex 11 to the Complaint in which the Respondent denies that he is violating the rights of the Complainant.
In particular, on August 12, 2009, the Respondent emails the Complainant's representatives and states that:-
“As a lifelong fan of Lego products, I registered as a project for my son and I to work on together. My son is now 8 years old and he has shown a fondness for your client's product just as I have. I thought building a fan site together would be a great project for us. You should be able to tell from looking at the site that I am not a domain squatter and have no desire for financial gain derived from your client's trademark.”
He then goes on to state that if the Complainant had an offer to quickly settle the matter he would be open to hearing it. He stated that:-
“I am truly a fan of Legos (sic) and will be more than willing to consider Lego product in lieu of cash. Let me know what you are prepared to offer.”
On August 19, 2009 the Respondent denies acting in bad faith. On September 14, 2009, the Respondent denies infringing the Complainant's trademark and states that he would “happily turn the domain over to them if you would cover my costs.”
There appears to be no further correspondence prior to the commencement of the present proceedings.
In the Response, the Respondent denies acting for commercial gain. He states that the Joomla website is a widely used free content management system that was installed automatically when he set up his hosting account and that he deliberately left the site undeveloped. He then refers to the correspondence set out above.
In the Panel's view, the difficulty that the Respondent has to overcome is the fact that the domain name resolves to the Joomla website. Whatever the intention of the Respondent in creating this link, it undoubtedly has the ability to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant. In the Panel's view, the fact that the Joomla website is not being used by the Respondent for any immediate commercial activity does not detract from the fact that in accessing the domain name, the Complainant's mark is being used for a commercial purpose unconnected with the Complainant's activities.
In the Panel's view that clearly satisfies paragraph 4(b)(iv) of the Policy whereby by using the domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's 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 a website or location or of a product or service on the Respondent's website or location.
It follows that the Complainant has succeeded in proving all three elements within paragraph 4(a) of 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.
Clive Duncan Thorne
Sole Panelist
Dated: February 16, 2010
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