The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Ken Hansen of North Highlands, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Wild West Domains, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2011. On April 14, 2011, the Center transmitted by email to Wild West Domains, Inc., a request for registrar verification in connection with the disputed domain name. On April 14, 2011, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name.
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 April 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 8, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 9, 2011.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on May 23, 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, based in Denmark, is the owner of the trademark LEGO. The name LEGO is widely associated with a certain type of construction toy based on coloured plastic bricks and components that click together, and an assortment of other LEGO branded products. According to the Complainant, the revenue for the LEGO Group in 2009 was more than USD 2.8 billion. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries. The LEGO trademark has been in use since 1953.
The Complainant is the owner of numerous Community, United States Patent and Trademark Office (USPTO), and foreign national trademarks. The list of world trademarks appended to the Complaint runs to 36 pages. Specimen trademarks registered to the Complainant are:
LEGO (word), Community trademark, No. 000039800, registered October 5, 1998, classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41, 42;
LEGO (word), USPTO trademark, No. 1018875, registered August 26, 1975, class 28.
The Complainant also owns more than 1000 domain names containing the term LEGO.
In the absence of a Response nothing is known about the Respondent except for the information filed with the registration of the disputed domain name, which was apparently registered on October 18, 2010. 5. Parties’ Contentions A. Complainant
The Complainant has documented extensive lists of the trademarks that it owns. In 2009/2010 the trademark LEGO was ranked by Superbrands UK as number 8 of the most famous trademarks and brands in the world.
The Complainant says that what it regards as the dominant part “lego” of the disputed domain name causes it to be confusingly similar to the Complainant’s trademarks for the word LEGO. Furthermore, the prefix “minotaurusby”, referring to one of the Complainant’s games “Minotaurus”, will not have any impact on the overall impression of the dominant part of the disputed domain name being the trademark LEGO.
The Complainant further contends that the Respondent does not have rights or legitimate interests in the disputed domain name. According to enquiries, the Respondent does not have a corresponding trademark or trade name and has no other legitimate interest in the name “Lego”. The Complainant has not licensed the Respondent to use its trademark in any way.
The Complainant says that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, but to generate click-through traffic directed to the website of Amazon, where the Complainant’s and competitors’ products are for sale. The Respondent is not commonly known by the disputed domain name and is not using it in a noncommercial or fair manner.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The fame of the Complainant’s trademark is such that it is highly unlikely the Respondent would not have been aware of it. The disputed domain name is used for a website that offers visitors sponsored links to other websites. Thus the Respondent is using the disputed domain name intentionally to attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
The Complainant says that it first tried to contact the Respondent on November 15, 2011 through a cease and desist letter sent by e-mail, requesting voluntary transfer of the disputed domain name in return for a refund of the expenses of registration and transfer fees. A reminder was sent on November 25, 2011. There was no reply.
The Complainant has advanced a number of previous decisions under the Policy that it wishes the Panel to consider as precedent.
The Complainant requests the transfer of the disputed domain name to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
“…to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute. A. Identical or Confusingly Similar
The Complainant has satisfied the Panel that it is the owner of numerous registered trademarks for the word LEGO. The disputed domain name is read by the Panel as “Minotaurus by LEGO” and is found to comprise the name of a product of the Complainant known as “Minotaurus”, the Complainant’s trademark LEGO, and the conjunction “by”. Such is the fame of the trademark LEGO that the preceding component “minotaurusby” is found by the Panel not to detract from confusing similarity between the disputed domain name and the Complainant’s trademark LEGO within the meaning of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has stated a prima facie case to the effect that the Respondent has not been granted and cannot have any rights or legitimate interests in the disputed domain name. The Respondent has not sought to refute the Complainant’s prima facie case in the terms of paragraph 4(c) of the Policy or in any other way. Nothing in the evidence leads the Panel to consider it likely that the Respondent may have made a bona fide use of the disputed domain name for an offering of goods or services, or had any reason to have been known by the disputed domain name, or had used it for a noncommercial or fair purpose. The Panel finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that you [the Respondent] 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 web site 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 your web site or location or of a product or service on your website or location.
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith registration or use may be found otherwise.
A screenshot captured on April 18, 2011, of the website to which the disputed domain name resolved, is headed “Minotaurus by LEGO A new way to play!” Eight paragraphs of text are devoted to the promotion of “Minotaurus by LEGO”. Colour images are shown of the packaging for “Minotaurus by LEGO”, “LEGO 3842 Lunar Command Game”, “LEGO Monster 4 Game”, and “LEGO Creationary Game”, each accompanied with typical pricing information. Each image has what appears to be a link to the website of the well-known Amazon on-line store, with a button labelled “Buy from A”. The Panel has verified this functionality within its limited powers to make independent inquiries (section 4.5, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
The website to which the disputed domain name resolves also offers links, apparently targeted to visitors through “Ads by Google”, to the websites of businesses having no apparent connection with the Complainant including competitor businesses offering other toys.
It may reasonably be concluded that the Respondent’s use of the disputed domain name is for the operation of a website that generates revenue by referring Internet visitors onwards to external websites such as that of Amazon in return for a commission for such referrals. This style of business is known variously as click-through or pay-per-click and may be a legitimate means of subsidising an information or public service website, or as a business in itself. The business depends, however, on the attraction of visitors, often through the entry of key terms such as trademarks into a search engine. The business may not be legitimate if a famous trademark is used, without the authority of the trademark owner, as the means of attracting visitors.
The Panel finds that the Respondent has used the disputed domain name intentionally to attract Internet visitors to the corresponding website for commercial gain by relying upon confusion with the Complainant’s trademark LEGO, and is trading on the well-known trademark of the Complainant, constituting use in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. The Panel further finds that the disputed domain name was registered in bad faith for the specific purpose of use in bad faith. Thus registration in bad faith and use in bad faith are found in the terms of paragraph 4(a)(iii) of the Policy.
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith registration or use may be found otherwise. The Complainant attempted to engage with the Respondent on November 15, 2011 and November 25, 2011 through cease and desist letters, requesting also voluntary transfer of the disputed domain name to the Complainant. The Respondent’s failure to reply to either letter is found to be a factor compounding bad faith (Ebay Inc. v. E and Tony Caranci,WIPO Case No. D2000-1632). 7. Decision
For 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.
Dr. Clive N.A. Trotman
Sole Panelist
Dated: June 6, 2011
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