The Complainant is LEGO Juris A/S of Billund, Denmark represented by CSC Digital Brand Services AB, Sweden.
The Respondents are [name redacted] of California, United States of America (“United States”), and Tanner Sorum of California, 95821, United States. 2. The Domain Names and Registrar
The disputed domain names and (the “Disputed Domain Names”) are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2019. On February 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On February 14, 2019, the Registrar transmitted by email to the Center its verification response. This confirmed that:
(i) For the registrant was an individual who for reasons discussed below the Panel will refer to as “respondent A” or “name redacted” and with a registrant email contact address of hartleynancy[digit]@[domain].
(ii) For the registrant was Tanner Sorum with an address in California and with a registrant email contact address contact address in the form tannersorum@[domain]
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 Respondents of the Complaint, and the proceedings commenced on February 19, 2019. Notification took place by both email delivery and delivery of hard copies of the Complaint to the postal addresses for the Respondents as disclosed by the registrar. In accordance with the Rules, paragraph 5, the due date for Response was March 11, 2019. The Respondents did not submit any formal response.
On February 25, 2019 the Center received an email from Respondent A stating: “My name’s [name provided]. I’m the resident at [address in California]. I received a letter saying there is a complaint against me involving the domain addresses and however I am not in anyway involved with those domains. The WHOIS registration information for those domains must be out of date [name provided]”.
The Center notified the Respondents about the commencement of panel appointment process on March 12, 2019.
The Center appointed Nick Gardner as the sole panelist in this matter on March 18, 2019. 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 a Danish company. It manufactures and sells one of the most popular children’s toys in the world, namely a range of interconnecting building bricks, although its products have expanded widely beyond that basic concept. Its products are marketed under the name Lego and it is the owner of trademark registrations for the LEGO word and stylised LEGO word trademarks in numerous jurisdictions worldwide, including Portugal – for example US trademark no 1018875 for the word LEGO registered on August 26, 1975 (these trademarks are referred to in this decision as the “LEGO trademarks”). Such registrations predate the date of registration of the Disputed Domain Names. The Complainant has been very successful, carries on business on a very substantial scale and its products and the Lego name are very widely known and recognised.
The Complainant is the owner of over 5,000 domain names containing the term “lego”.
The LEGO Group has expanded its use of the LEGO trademarks to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. The LEGO Group also maintains an extensive website linked to the domain name , which features its various toy products.
The identity of the Respondents is discussed below.
The Disputed Domain Names resolve to websites with near identical content (the “the Respondents’ Websites”) in the form of what is described as a “Toys Mall” website featuring the Complainant’s LEGO products and offering these for sale.
The Disputed Domain Names were registered within a day of each other on December 30 and 31, 2018 each with the Registrar.
The Disputed Domain Names are hosted on the same servers at CLOUDFLARE.COM.
On February 11, 2019 in response to cease and desist correspondence from the Complainant sent to email addresses as shown on the relevant WhoIs data, an email was sent from a person identified in the email as Nancy Hartley which read as follows:
“Sorry, didn’t notice this email. LEGO and LEGO it’s mine.
1. This two domain not belong LEGO Company. LEGO not the owner before( I think is LEGO’s’ mistake in work).
2. I bought the domain name from godaddy without any tips.
3. Stopping the right of use the domain has caused economic losses to me.
If you want buy this two domain. I can sell them to LEGO but not only the registration fees. Waiting you response.
Thanks” 5. Parties’ Contentions A. Complainant
The Complainant has filed lengthy submissions and cited numerous previous UDRP decisions in support of its arguments. The Panel does not feel it necessary to repeat all that material here. So far as the Policy is concerned, the Complainant’s main contentions can be summarised as follows.
The Disputed Domain Names are each confusingly similar to a trademark in which the Complainant has rights – LEGO is the predominant part of each name. The addition of the Top-Level Domain (“TLD”) “.com” or “.life” does not distinguish the Disputed Domain Names from the Complainant’s trademark. Anyone who sees the Disputed Domain Names is bound to mistake them for a name related to the Complainant. The likelihood of confusion includes an obvious association with the LEGO trademarks of the Complainant. With reference to the reputation of the LEGO trademarks there is a considerable risk that the trade public will perceive the Disputed Domain Names either as domain names owned by the Complainant or that there is some kind of commercial relation with the Complainant. The LEGO trademarks also risk being tarnished by being connected to the Respondents’ Websites. By using the trademark LEGO as a dominant part of the Disputed Domain Names, the Respondents exploit the goodwill and the image of the LEGO trademarks, which may result in dilution and other damage for the LEGO trademarks. Persons seeing the Disputed Domain Names even without being aware of the content, are likely to think that the Disputed Domain Names are in some way connected to the Complainant (“initial interest confusion”).
The Respondents have no rights or legitimate interests in respect of the Disputed Domain Names. The Complainant says that the Respondents do not have any registered trademarks or trade names corresponding to the Disputed Domain Names. The Complainant has also not found anything that would suggest that the Respondents have been using LEGO in any other way that would give her any legitimate rights in the name. No licence or authorisation of any other kind has been given by the Complainant to the Respondents to use the LEGO trademarks. The Respondents are not an authorised dealer of the Complainant’s products and has never had a business relationship with the Complainant. The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the domain name.
The Complainant says that LEGO is a famous trademark worldwide and an extremely valuable asset. It is highly unlikely that the Respondents would not have known of the Complainant’s legal rights in the name at the time of registration. It is rather obvious that it is the fame of the LEGO trademark that has motivated the Respondents to register the Disputed Domain Names. That is, the Respondents cannot claim to have been using LEGO, without being aware of the Complainant’s rights to it. This, among other facts, proves that the Respondents’ interests cannot have been legitimate.
The Respondents are not using the Disputed Domain Names in connection with a bona fide offering of goods or services. Use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services. To conclude otherwise would mean that a respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy. The Respondents cannot plausibly argue that they did not intentionally adopt the website so as to benefit from the goodwill of the LEGO trademarks.
The Complainant says that the Respondents were using the Disputed Domain Names to offer the Complainant’s products without the Complainant’s authorization. Although, UDRP panels may find that resellers using a domain name containing the complainant’s trademark to undertake sales related to the complainant’s goods or services have a legitimate interest in such domain name; the “Oki Data test”, which was devised to ascertain if a respondent is making a bona fide offering, requires the following cumulative conditions to be met:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.
In the present case, the Respondents failed to provide any disclaimer on the Respondents’ website or disclose that they had no affiliation with the Complainant and have misappropriated the Complainant’s logo to create confusion.
The Disputed Domain Names were registered and are being used in bad faith. The Complainant says the Respondents registered the Disputed Domain Names in bad faith in full knowledge of the Lego brand and in order to sell Lego products. The Complainant relies on the email correspondence described above. It says the Respondents’ use of the Disputed Domain Names constitutes a disruption of the Complainant’s business and qualifies as bad faith registration and use under Policy because the Disputed Domain Names are confusingly similar to the Complainant’s trademarks and the website linked to the Disputed Domain Names was being used to offer the Complainant’s goods or services without the Complainant’s authorization or approval. Past UDRP panels have confirmed that using a confusingly similar domain name to mislead consumers is evidence of bad faith registration and use. By using these elements for directly competing services and to sell the Complainant’s products, the Respondents were diverting for commercial gain Internet users to their website, and were doing so in a manner likely to cause consumers to believe that the Disputed Domain Names were somehow associated with, affiliated with, and/or endorsed by the Complainant. Accordingly the Complainant says the Respondents should be considered to have registered and to be using the Disputed Domain Names in bad faith. B. Respondents
No Response has been received. 6. Discussion and Findings 6.1 Procedural Matters Identity of Respondent(s)
This is a case which is in formal terms brought against two Respondents, one for each of the Disputed Domain Names.
A complaint is allowed to proceed with multiple respondents when the domains or websites are under common control. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at para. 4.11.2 where it states: “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.”
With reference to the above, the Panel agrees with the Complaint that the Disputed Domain Names and are under common control given an individual (see below) has sent an email reply to confirm that they both belong to her. Furthermore, since the Disputed Domain Names shared the same website content, the same servers and registrar, it is highly likely that both of the Disputed Domain Names are being controlled by a single entity, and thus are subject to common control. See Eli Lilly and Company v. Darren K. Headley et al.,WIPO Case No. D2013-1303 and the cases therein cited.
Accordingly, the Panel concludes it is appropriate to proceed to determine the Complaint in relation to each of the Disputed Domain Names.
In fact, it appears, from the record that the individual identified by the Panel as Respondent A may have nothing to do with this matter, her name having been recorded in relation to the Disputed Domain Name without her knowledge. The Panel proposes to follow the course of action adopted by the panel in Elkjøp Nordic A/S v. Name Redacted,WIPO Case No. D2013-1285 and set out as follows:
“As in Moncler S.r.l. v. Name Redacted, WIPO Case No. D2010-1677, Boehringer Ingelheim Pharma GmbH & Co. KG v. Name Redacted,WIPO Case No. D2012-0890 and Saudi Arabian Oil Company v. Name Redacted,WIPO Case No. D2013-0105, this is a case in which the Panel finds that the Disputed Domain Name was registered by a third-party without the involvement of the person identified in the WhoIs as the registrant of the Disputed Domain Name, against whom the Complaint was filed. The Panel has accordingly redacted the name of that person from the caption and body of this Decision. The Panel has attached as an Annexure to this Decision an instruction to the Registrar regarding transfer of the Disputed Domain Name that includes the name of that person so as to enable effect to be given to the Panel’s order. To this end, the Panel authorises the Center to transmit the Annexure to the Registrar and the parties but further directs the Center and Registrar, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that the Annex to this Decision shall not be published in this exceptional case.”
So far as the other named Respondent (Tanner Sorum) is concerned, as the named registrant of the Disputed Domain Name the Panel considers he or she should remain identified on the record, given the Complaint has been properly served on that person in accordance with the Rules and no objection taken. However, as appears above email correspondence received from one Nancy Hartley would appear to indicate that Nancy Hartley is the actual registrant of both of the Disputed Domain Names. Accordingly, in this decision references to the Respondent or Respondents are to both Nancy Hartley and to Tanner Sorum (who may or may not be the same person). Lack of Response
The Panel notes that no Response has been received from the Respondent. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909). 6.2 Substantive Matters
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in relation to each of the Disputed Domain Names that:
(i) the Disputed Domain Name is identical with 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;
(iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel considers the Disputed Domain Names to each be confusingly similar to the Complainant’s LEGO trademarks. The Respondent has simply taken the Complainant’s trademark and combined it with generic terms in a manner which manifestly continues to include the Complainant’s trademark as an obvious reference within each of the Disputed Domain Names.
Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000‑0662). It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers,WIPO Case No. D2008-1694).
It is also established that the addition of a descriptive or geographic term (such as here “zone” or “zones”) to a disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not prevent a finding of confusing similarity under the first element (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com” or “life”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
Accordingly, the Panel finds that each of the Disputed Domain Names is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests
The Panel finds the LEGO trademark is, on the evidence before the Panel, a term in which the Complainant has over many years developed a very significant reputation.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use LEGO trademark. The Complainant has prior rights in the LEGO trademark which precede the Respondent’s registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The evidence establishes that each of the Disputed Domain Names is linked to a website selling Lego toys. So far as that commercial use is concerned, the Panel does not consider it was bona fide. The Disputed Domain Names are in the Panel’s opinion likely to give consumers the impression that they are domain Disputed Domain Names owned by or approved by the Complainant and are likely to attract customers on that inaccurate basis. See WIPO Overview 3.0 at section 2.5 “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry” and at section 2.5.1 “Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner”.
Applying those principles here the Panel does not consider the Respondent establishes bona fide use.
Further the Respondent has in the correspondence (see above) clearly sought to solicit offers from the Complainant for the Disputed Domain Names that exceed her out-of-pocket costs. Overall the Panel concludes the Respondent has failed to establish any rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
(i) circumstances indicating that you 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 web site or location.
The Panel concludes that on the balance of probabilities the Respondent’s actions in registering and using the Disputed Domain Name fall within paragraph 4(b)(iv) above – the Respondent was seeking to attract customers who would purchase LEGO products by using the Disputed Domain Names which would be taken to be domain names associated with the Complainant. This is creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites.
As a result, the Panel finds that each of the Disputed Domain Names has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 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 Names and be transferred to the Complainant.
Nick J. Gardner
Sole Panelist
Date: March 27, 2019
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