The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Scott Hotaling of Arvada, Colorado, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with D, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 18, 2014. On June 18, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 18, 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 June 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 15, 2014.
The Center appointed Alfred Meijboom as the sole panelist in this matter on July 29, 2014. 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 many LEGO trademarks worldwide, including the word mark LEGO registered in the United States of America (Reg. No. 2,245,652 of November 21, 1997) in class 28 for, inter alia, construction toys (the "LEGO mark"). The Complainant is also owner of the word mark MINDSTORMS registered in several jurisdictions, including in the United States of America (Reg. No. 2,226,660 of December 2, 1997) in classes 9, 28 and 41 for, inter alia, educational toy kits (the "MINDSTORMS Mark"). The disputed domain name was registered on January 5, 2014. The disputed domain name leads to a website displaying LEGO branded mini figures, the LEGO logotype (the "Logotype") and links to sponsored advertisements. 5. Parties' Contentions A. Complainant
The Complainant claims that the LEGO mark is among the best-known trademarks in the world. The LEGO marks have substantial inherent and acquired distinctiveness and therefore qualify for protection under Article 6bis of the Paris Convention and Articles 16.2 and 16.3 of the TRIPS Agreement.
The Complainant put forward that the disputed domain name is identical to the LEGO and MINDSTORMS marks, linked by a hyphen. According to the Complainant the addition of "-mindstorm" to "lego" as well as the addition of the generic Top-Level Domain (gTLD) ".com" do not detract from the overall impression which is confusingly similar to the Complainant's trademarks.
The Complainant claimed that no license or authorization of any kind has been given to the Respondent to use the LEGO and MINDSTORMS marks. The Complainant furthermore claimed that the disputed domain name is used to generate traffic and income through links to sponsored advertisements and therefore clearly not being used in connection with the bona fide offering of goods and services. For these reasons, the Complainant concluded that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Lastly the Complainant stated that considering that the LEGO and MINDSTORMS trademarks are world famous trademarks and the fact that the Respondent is using LEGO branded mini figures and the Logotype on its website it is clear that the Respondent knew of the Complainant's rights in the LEGO and MINDSTORMS marks at the time of registration of the disputed domain name. The Complainant observed that the Respondent is currently using a small disclaimer on the website the disputed domain name resolves to, which states: "By closing this window you accept and are aware of these terms !! LEGO, LEGO Mindstorms, LEGO EV3, LEGO Mindstorms EV3, LEGO Mindstorm EV3, and the LEGO logo and MINDSTORMS are trademarks and/or copyrights of the LEGO Group and we in no way represent or are affiliated with LEGO. We just love their products. We in no way are an authorized reseller of LEGO branded products or represent them in any manner. Our Non Profit mission is to provide the best build ideas and how-to's for LEGO and LEGO Mindstorm toys for public and free use." In view of this disclaimer, the Complainant is of the opinion that the Respondent cannot claim to be using the disputed domain name in connection with a bona fide offering of goods or services as, contrary to the Respondent's claims of having a "Non Profit mission", the Respondent has intentionally chosen a domain name based on registered trademarks in order to generate traffic and income through a website with sponsored links, leading to third‑party websites unrelated to the Complainant. Consequently, the disputed domain name has been registered in bad faith and is being used in bad faith by misleadingly diverting Internet consumers for its own commercial gain.
Based on all of the above the Complainant requested that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Introductory remarks
The Respondent did not reply to the Complainant's contentions. However, as set out in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, ("WIPO Overview 2.0"), the consensus view of UDRP panelists is that respondent's default does not automatically result in a decision in favor of complainant. The Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from the Respondent's default, paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.
Under the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
In the present case the Complainant has sufficiently demonstrated that it has rights in the LEGO and MINDSTORMS marks. It is further well established that gTLDs such as ".com" may be disregarded in the assessment under paragraph 4(a)(i) of the Policy (e.g. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
With this in mind, the disputed domain name contains the LEGO mark in its entirety as well as the singular form of the MINDSTORMS mark, only linked by a hyphen. The use of "mindstorm" instead of "mindstorms" in the disputed domain name does not take away similarity as the public would consider "mindstorm" as the singular form of "mindstorms" if it would notice the difference with the MINDSTORMS mark at all. The Panel agrees with the findings of the panel in LEGO Juris A/S v. Djoko Sutijoko,WIPO Case No. D2011-1872 that, applied to these proceedings, "The fact that the disputed domain name combines two different marks of the Complainant accentuates rather than detracts from producing a confusingly similar result".
The Panel is therefore satisfied that the disputed domain name is confusingly similar to the LEGO and MINDSTORMS marks and that the first element of paragraph 4(a) of the Policy is met. B. Rights or Legitimate Interests
The Complainant must show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut (e.g. Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Complainant claimed that it did not authorize the use of the LEGO and MINDSTORMS marks to the Respondent, and that the Respondent has no rights in the disputed domain name. Furthermore, the Complainant stated that the disputed domain name is used to generate traffic and income through links to sponsored advertisements. The Panel is satisfied that there is no indication that the Respondent has rights in or has been commonly known by the disputed domain name or that it has used the disputed domain name for a bona fide offering of goods or services.
In absence of a reply from the Respondent, the Panel finds that the Complainant has made a prima facie case. As a result, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the second element of paragraph 4(a) of the Policy is also met. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of the disputed domain name in bad faith where the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the LEGO and MINDSTORMS marks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service offered on the Respondent's website or location.
In the Panel's view, it is obvious that at the time the Respondent registered the disputed domain name it must have had the LEGO and MINDSTORMS marks in mind as the LEGO and MINSDTORMS marks had already been registered globally for many years, the LEGO mark even having acquired a high reputation and being a well-recognized and world famous trademark (LEGO Juris A/S v. M. Moench,WIPO Case No. DNL2009-0052). The Respondent's knowledge of the LEGO and MINDSTORMS marks is further enhanced by the fact that the Respondent uses the website under the disputed domain name to access links to LEGO mini figures and the Logotype and third party links, and obviously by the fact that the disclaimer on the website at the disputed domain name resolved to explicitly refers to the LEGO and MINDSTORMS marks as trademarks belonging to the Complainant.
Just like the panel in LEGO Juris A/S v. Djoko Sutijoko,WIPO Case No. D2011-1872, the Panel in this case finds that the Respondent's bad faith is also determined by the effect the use of the disputed domain name is likely to have upon the Complainant. Insofar as the Respondent uses the disputed domain name to access a linked website, the Respondent is potentially exploiting the goodwill of the Complainant, tarnishing or otherwise undermining its reputation and commercial interests. The fact that the Respondent has a disclaimer on its website stating that it "in no way represent(s) or (is) affiliated with LEGO" does not make the Respondent's offering bona fide. According to the consensus view "The existence of a disclaimer cannot by itself cure bad faith, when bad faith has been established by other factors. This is typically explained by UDRP panels with reference to the probability of Internet user "initial interest confusion" - by the time such user reaches and reads any disclaimer under the domain name, any registrant objective of attracting visitors for financial advantage to its website through use of the trademark in the domain name will generally have been achieved" (cf. WIPO Overview of Panel Views on Selected UDRP Questions, Second Edition – "WIPO Overview 2.0", paragraph 3.5). This is not different in this case because the Respondent chose to register the disputed domain name knowing that it incorporated the LEGO and MINDSTORMS marks and used the disputed domain name in order to generate traffic and income through a website with sponsored links, leading to third-party websites unrelated to the Complainant (e.g. LEGO Juris A/S v. Djoko Sutijoko,WIPO Case No. D2011-1872 and LEGO Juris A/S v. Mr. Antonio,WIPO Case No. D2012-0572).
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith, so that also the third and last element of paragraph 4(a) of the Policy is met. 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 disputed domain name be transferred to the Complainant.
Alfred Meijboom
Sole Panelist
Date: August 12, 2014
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