The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Owen Jones of Phichai, Uttaradit, Thailand. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with Wild West Domains, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2011. On March 24, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 25, 2011, 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 March 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2011. The Response was filed with the Center on April 12, 2011.
The Center appointed Tony Willoughby as the sole panelist in this matter on April 20, 2011. 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 very well-known for its construction toys which have been sold throughout the world for several decades under and by reference to the trade mark LEGO. The Complainant is the registered proprietor of numerous trade mark registrations around the world of the word “Lego” including, by way of example, Community Trade Mark registration number 39800 filed April 1, 1996 (registered October 5, 1998) LEGO (word) for various goods and services in classes 3, 9, 14, 16, 20, 22, 24, 25, 28, 38, 41 and 42.
The Domain Name was registered on November 27, 2010 and is connected to a website devoted to the Complainant’s brand. Its homepage includes the following text:
“Lego sets have come a long way since my brother and I had Lego sets in the UK. Lego UK is an off-shoot of the original Danish company called Lego. However, Lego UK might just as well be considered a separate company in its own right. These days Lego sets are a lot more than just boxes of interlocking building blocks, Lego sets are themed now to make them more relevant to a child’s particular interests. Lego UK is seeing a reassurgeance [sic].”
The homepage also features images of certain of the Complainant’s products and GoogleAds comprising links to other sites selling the Complainant’s products.
On January 23, 2011 the Complainant’s representative wrote to the Respondent drawing the latter’s attention to the Complaint’s rights and seeking transfer to the Complainant of the Domain Name. The Respondent did not reply to that letter nor to any of the ‘chasers’, which followed it.
On March 28, 2011 following the filing of the Complaint the Respondent sent an email to the Center in the following terms:
“Hi Well, what do I do now? This is just gibberish to me. Do you have any guidelines?”
On March 29, 2011 the Center responded providing the Respondent with the link to the guidelines on the Center’s website.
On April 5, 2011, following the filing of the Response, the Complainant’s representative made another attempt to resolve the dispute amicably stating:
“Thank you for your response to the filed UDPR complaint for LEGO.
First I would like to say that my client prefer [sic] to solve this matter in an amicable fashion. We have previously sent you Cease and Desist letters in which we have informed you about the unauthorized use of the LEGO trademark within the Domain Name. In the letter LEGO requested a voluntary transfer of the Domain Name and offered compensation for the expenses of registration and transfer fee (not exceeding out of pocket expenses). No reply was ever received to our letters therefore we decided to take this to UDRP.
LEGO needs to be very protective with the Brand name not to confuse consumers. Unfortunately your use of the Brand name LEGO in the domain name is a trademark infringement. LEGO does not allow any 3rd parties, including resellers, to use the LEGO or LEGOLAND brands (or other brands owned by the LEGO group) in domain names. It is the strict policy of the LEGO Group that all domain names containing the word LEGO and LEGOLAND should be owned by the LEGO Group. I hope you see LEGO’s point of view.
What [sic] regards the reimbursement, the LEGO Group will reimburse you the registration fee and possible transfer cost as soon as the domain name has been transferred, we do not compensate any cost exceeding that amount. I kindly ask you to send me a copy of the registration cost, or a print screen where the cost is displayed. We prefer to pay the money via PayPal, please let me know if you have any registered PayPal email address that we can use.
What [sic] regards the sponsored links that we were mentioning in the complaint, please see your own website here below, under the text in the middle of the page there are four sponsored links, or ads by google.”
The Respondent rejected the Complainant’s offer. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to its LEGO trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith. B. Respondent
The Respondent’s Response is relatively short and can be quoted verbatim:
“I really do not understand what all the fuss is about. I am just trying to support my family by using the Internet because I may not work where I live. I do this by buying URL's that I see have searches for keywords for which URL's do not exist. This research takes quite a lot of time, but it is not rocket science. I then create an interesting and informative website and put Google ads on it. Nothing more than that.
There is no evil intent. I have 130 such sites. Some, maybe five or six, have brand names in them, but the overwhelming majority do not. It is not a deciding factor for me. Nobody has ever complained in two years except Lego and I do not understand their complaint really. Anyone who buys Lego through my site ultimately buys from Lego.
Lego's lawyers say that I have 'sponsored links' and some personal deals or something on my site. If 'sponsored links' is a posh way of saying Google Ads, then OK, yes, I do; but I do not sell anything personally and I think that these lawyers ought to prove what they say or be held responsible for telling lies in order to get me into trouble. They are supposedly lawyers specializing in the Internet and computers judging by the domain name in Sandra Looft's email address. There can be no reason for her saying that about me unless it was malicious. I did not set out to upset anyone and the site is not vital to my plans.
Lego can have the URL, if they recompense me fairly for my four month's work. Among all the obvious work of finding the URL and creating the site, I wrote articles to support and promote it and did this to the extent that the URL has 20,000 backlinks and rates on Google's first page for the keyword. When Lego has this URL it will benefit from all my work. I will accept any reasonable offer from Lego that takes my work into account.
Sandra Looft seems intent on stealing the fruits of my research for a few dollars in order to impress her clients and enhance her reputation. If she really had her client's interests at heart she would have bought my site for a reasonable price and asked me to sign a declaration NEVER to use the word Lego in a URL again, which I would agree to. Instead, she offers me $20 and takes me to court, which boosts her salary and costs her client far more.
I make money online by working hard, not by hijacking names. Miss Looft says that Lego has over 1,000 URL's with the word Lego in them. Doesn't it seem strange then that they did not buy ? It seems a no-brainer to me. Miss Looft is trying to build her reputation on my hard work. What would she do for $20? One law for her and another one for me.” 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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. B. Identical or Confusingly Similar
The Domain Name comprises the Complainant’s LEGO trade mark, the geographical indicator “uk” and the generic “.com” domain suffix. For the purposes of assessing identity and confusing similarity under this head of the Policy, it is now well-established that the domain suffix may be ignored.
The “uk” geographical indicator detracts in no way from the distinctiveness of the Complainant’s trade mark. The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests
The Complainant contends that the Respondent registered the Domain Name with the Complainant’s registered trade mark in mind, but without having sought the permission of the Complainant to do so and with the intention of deriving a commercial gain from its use.
The nature of the Respondent’s website is such that the Complainant’s allegations in this regard cannot seriously be countered. The website, comprising the Respondent’s text and illustrations and the Google Ads advertising links, all of which are devoted to the Complainant’s products, make this abundantly clear.
While the Respondent denies any bad faith intent, he does not seek to deny that his intention all along has been to make a living from the Domain Name and the others in his portfolio.
Can this use be said to be a bona fide use of the Domain Name within the meaning of paragraph 4(c)(i) of the Policy? The Panel does not believe so. It is not as if the Respondent is actually trading in the Complainant’s goods. Moreover, he is deriving income via the Google Ads as a result of visitors being attracted to his site by way of the Domain Name. The text in his website makes it clear that he regards “Lego UK” as being a reference to the United Kingdom (“UK”) arm of the Complainant. He must therefore appreciate that a significant proportion of visitors to his site will visit the site erroneously believing it to be a site of “Lego UK”, the name which, on his site, he uses as the name of the Complainant’s UK arm. By his use of the Complainant’s name and trade mark in the Domain Name he is effectively deceiving Internet users. This is not a bona fide use of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
The Respondent contends that he did not register the Domain Name in bad faith, yet, from the use he has made of it, it is apparent that he saw a commercial value in setting up a site devoted to the Complainant’s products connected to a Domain Name, the primary element of which is the Complainant’s trade mark. He must surely have realized that by his choice of domain name a significant number of visitors to his site would be visiting the site recognizing the Domain Name as the UK arm of the Complainant or as he puts it in his text at the website “Lego UK is an off-shoot of the original company called Lego …”.
By his registration and use of the Domain Name the Respondent has effectively impersonated the Complainant. The fact that some visitors on reaching the site may immediately appreciate that they are not at a site of the Complainant is no answer. At that stage the Respondent will have achieved for himself a commercial opportunity that he would not have achieved had he not made unauthorized use of the Complainant’s trade mark.
Even if the Panel were to assume that the Respondent has acted throughout in the genuine belief that he is entitled to do what he has been doing, that would still not be an answer to the Complainant’s bad faith allegations. There has to be an objective element to the test. However well-intentioned the Respondent may have been, at the very least he must be taken to have appreciated the natural and probable consequences of his actions.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) 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.
Tony Willoughby
Sole Panelist
Dated: April 29, 2011
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