The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is John Davis of Columbia, South Carolina, United States of America. 2. The Domain Name and Registrar
The Domain Name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2018. On February 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 14, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 7, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 8, 2018.
The Center appointed Gareth Dickson as the sole panelist in this matter on March 13, 2018. 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 registered proprietor of a large number of trademarks for the LEGO word mark around the world, including in the United States where the Respondent is located. These include registration number 1018875 for, inter alia, “toy building blocks and connecting links for the same, sold separately and as kits for construction of … vehicular toys”, registered on August 26, 1975; and registration number 2245652 for, inter alia, “construction toys; toy construction blocks and connecting links therefor; toy construction kits; toy figures; toy vehicles”, registered on February 23, 1999 (together, the “Trademarks”).
The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries. The Complainant’s LEGO trademark and brand have been recognized in the official top 500 Superbrands for 2017, provided by “Superbrands UK”, and in 2014 by TIME as the Most Influential Toy of All Time.
The Domain Name was registered on November 4, 2017. The Respondent uses the Domain Name to offer for sale various products bearing the LEGO brand, including toy building blocks for construction of vehicular toys and construction toys. Although the Respondent does not appear to fulfil any of these offers himself, the website in respect of which he uses the Domain Name contains repeated references to LEGO, both on screen (in text, images and video) and in the site’s meta data. It describes itself as “The Lego Superstore” and includes a footer bearing the following text: “Copyright © 2018 The Lego Superstore - All Rights Reserved”. 5. Parties’ Contentions A. Complainant
The Complaint argues that the dominant part of the Domain Name comprises its LEGO trademark, for which the Complainant holds nationally registered trademark rights. It asserts that the additions of the prefix “the” and the suffix “superstore” will not have any impact on the overall impression of the dominant part of the name, (i.e., “LEGO”) and that the addition of the generic top-level domain (“gTLD”) “.com” is irrelevant to determining the confusing similarity between its trademarks and the Domain Name, since it does not have any impact on the overall impression of the Domain Name.
The Complainant also states that anyone who sees the Domain Name is bound to view it as a name related to the Complainant and will perceive it as a domain name owned either by the Complainant or by someone commercially related to the Complainant.
According to the Complainant, the Respondent has no registered trademarks or trade names corresponding to the Domain Name, nor does anything suggest that the Respondent has been using “lego” in any other way that would give him any rights or legitimate interests in the name. No license or authorization, as an authorized dealer of the Complainant or otherwise, has been given by the Complainant to the Respondent to use the LEGO trademark.
The Complainant contends that it is highly unlikely that the Respondent did not know of the Complainant’s legal rights in the name “LEGO” when he registered the Domain Name. It adds that the Respondent’s use of the Domain Name contributes to customers’ likely confusion by using the Domain Name to resolve to a website that features and offers for sale Complainant’s LEGO toy products (and which uses the Complainant’s LEGO mark in its met data), and indicates that the Respondent intends the Domain Name to be confusingly similar to the Complainant’s trademark.
Finally, the Complainant argues that the Respondent’s use of the Domain Name constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use, because the Domain Name is confusingly similar to the Complainant’s trademarks and is being used to offer the Complainant’s goods for sale without the Complainant’s authorization or approval. It submits that UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Complainant also notes that the Respondent has ignored Complainant’s cease and desist letters, which it says is further evidence of the Respondent’s bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
These criteria are cumulative. The failure of the Complainant to prove any one of them means the Complaint must be denied. A. Identical or Confusingly Similar
The Panel accepts that the Complainant is the owner of Trademarks.
The Panel also accepts that the Domain Name is confusingly similar to the Trademarks. In particular, LEGO is the dominant and distinctive part of the Domain Name and the addition of the descriptive terms “the” and “superstore” and of the gTLD suffix “.com”, do not have a substantial meaning. Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) permits a finding of confusing similarity in these circumstances: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”
Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, this does not mean that it has to prove a negative to succeed in its complaint.
As explained in section 2.1 of the WIPO Overview 3.0, the consensus view is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
In the current proceeding, the Complainant has established their prima facie case, having alleged that the Respondent has not been licensed or authorized by them to use their LEGO trademark, whether in the Domain Name or otherwise. Furthermore there is no evidence that the Respondent has acquired any common law rights to use LEGO or that it is making a noncommercial or fair use of the Domain Name.
Nonetheless, it does appear that the Respondent is using the Trademarks to offer genuine goods made by the Complainant or with its consent. This can, in some circumstances, be evidence of a bona fide offering of goods and services and thus constitute a legitimate interest in a domain name. Those circumstances have been set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (“Oki Data”), which sets out four requirements which must all be met for the use to be considered legitimate, as discussed in section 2.8.1 of the WIPO Overview 3.0. These requirements may be stated briefly as follows:
- The Respondent must actually be offering the goods or services at issue; and
- The Respondent must use the site to sell only the trademarked goods; and
- The site must accurately disclose the registrant’s relationship with the trademark owner; and
- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
Even assuming that the goods offered by the Respondent via the Domain Name are genuine goods first put on the market by the Complainant or with its consent, the Respondent cannot benefit from Oki Data since the Respondent has not accurately disclosed the lack of any relationship between it and the Complainant, notwithstanding that a commercial relationship will be inferred by the Respondent’s use of the Complainant’s trademark in the Domain Name. If anything, the Respondent has attempted to appropriate the Complainant’s rights in the Trademarks through its extensive use of “LEGO” and its statement that it reserves all rights in the name “The Lego Superstore”.
Since the Respondent cannot benefit from Oki Data and since he has not submitted any evidence or arguments to meet his burden of production to rebut the prima facie case made out by the Complainant, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
The Complainant’s LEGO trademark is known around the world and is being used by the Respondent as a trademark, that is, to designate the origin of the goods offered by it under the Domain Name.
The Panel therefore finds that the Respondent knew of the Complainant’s rights in the LEGO trademark when it registered the Domain Name. The Panel also finds that such registration was in bad faith since it attempted to appropriate for the Respondent, without the consent or authorization of the Complainant, rights in the Complainant’s LEGO trademark.
The Panel also finds that the Respondent is using the Domain Name in bad faith. Rather than being clear about the lack of relationship between it and the Complainant, the Respondent’s use of the Complainant’s trademark in the Domain Name, on its website and in the website’s meta data to offer the Complainant’s products for sale amounts to a representation by the Respondent that he is connected to and authorized by the Complainant to use the LEGO trademark. That use is inconsistent with the Complainant’s rights in the Trademarks and amounts to a use of the Domain Name in bad faith.
Therefore the Panel finds that the Domain Name has been registered and is being used in bad faith by the Respondent. 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.
Gareth Dickson
Sole Panelist
Date: March 27, 2018
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