The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Intrexium Ltd, Lars Andersson of Skane, Sweden.
The disputed domain name <legosmindstorm.org> is registered with GoDaddy.com, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2012. On March 7, 2012, the Center transmitted by email to GoDaddy.com, LLC. a request for registrar verification in connection with the disputed domain name. On the same date, GoDaddy.com, LLC. 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 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2012. The Response was filed with the Center on March 12, 2012.
The Center appointed Michael Treis as the sole panelist in this matter on March 19, 2012. 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.
The due date for the Panel to forward its Decision to the Center was extended to April 18, 2012.
Complainant owns the rights to the trademark LEGO in Sweden and elsewhere. It was first registered in Sweden in 1956 (Registration No. 80133). The trademark has been used intensely in Sweden and elsewhere since 1953. The trademark LEGO is among the best known trademarks in the world.
Complainant also owns the trademark MINDSTORMS, registered in Sweden and elsewhere.
The combination of the two trademarks, i.e. LEGO MINDSTORMS, designates a line of programmable construction toys manufactured by the Complainant and which the Complainant began marketing in 1998.
The Respondent registered the disputed domain name on December 5, 2011. With its Complaint, the Complainant has shown that the disputed domain name has been used as a link to direct Internet traffic to another website, “www.amazon.com”.
Complainant contends that the disputed domain name is confusingly similar to Complainant’s trademarks LEGO and MINDSTORMS.
Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and that there is no evidence that Respondent registered the disputed domain name for other purposes than to generate traffic to a website that contains links to “www.amazon.com” for sale of e.g. the LEGO products as well as products that are not related to LEGO. Complainant asserts Respondent is using the LEGO and MINDSTORMS trademarks to mislead Internet users to commercial websites and that the Respondent is therefore tarnishing the trademark LEGO. Complainant further states that there is not any evidence that the disputed domain name is used in connection with a bona fide offering of goods or services and that Respondent neither uses the name as a company name nor has any other legal right in the name LEGO.
Complainant contends that the disputed domain name was registered and used in bad faith as Respondent uses it with the purpose of diverting Internet traffic and misleading Internet users.
Complainant seeks the transfer of the disputed domain name from Respondent to Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent contended in its Response that it did nothing wrong by registering the disputed domain name, that it sells LEGO products on its site, and that it spent “a lot of money and most a lot of time getting this site on first page on Google […]. I have spend over 131 000 SEK”. The Respondent also indicated that it would “not give up the site for less then 13 000 SEK that is my final offer”.
Paragraph 15(a) of the Rules states that the Panel “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that Complainant proves each of the following three elements in order to succeed with the Complaint:
i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, and
ii) Respondent [and registrant] of the domain name 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.
Complainant carries the burden of production of each of the above elements.
The Panel considers the disputed domain name <legosmindstorms.org> confusingly similar to Complainant’s trademarks LEGO and MINDSTORMS. A combination of two trademarks can still be considered to be confusingly similar (cf. Société des Produits Nestlé SA v. Stuart Cook, WIPO Case No. D2002-0118). This is particularly true as far as the mark LEGO is concerned since this mark is included in its entirety as the first and dominant part of the disputed domain name, and since it therefore influences the overall character of the disputed domain name. The public will likely therefore confuse the disputed domain name with Complainant’s trademarks.
The Panel also notes that in LEGO Juris A/S v. AbdiPraja, WIPO Case No. D2010-2178, the panel held that the domain name <legomindstormsnxt2toy.com> was identical or confusingly similar to the trademarks LEGO and MINDSTORMS. This finding is fully in line with the Panel’s consideration in the present case.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides three non-exclusive methods for determining whether or not Respondent has any rights or legitimate interests vested in the disputed domain name.
According to paragraph 4(c) of the Policy, rights or legitimate interests in the domain name may be demonstrated by showing that: (i) before any notice of this dispute, Respondent used, or demonstrably prepared 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) Respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
In light of the evidence provided by the Complainant demonstrating the Respondent’s use of the website at the disputed domain name to link to “www.amazon.com”, the Panel found no evidence which would indicate that Respondent’s use of the disputed domain name corresponds to any of the above mentioned cases in which Respondent’s rights or legitimate interests could be at hand. In particular there is no evidence that Respondent used the disputed domain name in connection with a bona fide offering of goods or services before this dispute arose. Likewise, there is no evidence that Respondent has been known by the disputed domain name. Respondent registered the disputed domain name well after Complainant registered its trademarks. The mere fact that the Respondent was able to register the disputed domain name doesn’t necessarily give it any rights or legitimate interests in the disputed domain name.
Respondent is aware that Complainant's trademarks LEGO and MINDSTORMS enjoy great popularity among many consumers who are likely to use either of these two words, or their combination, to seek information about the toys manufactured by the Complainant. It is apparent from the facts at hand that Respondent intends to exploit the fame and goodwill of the LEGO and MINDSTORMS trademarks by diverting Internet traffic intended for Complainant to its website. This can undoubtedly cause great and irreparable harm to Complainant and its trademarks as some of the individuals who are seeking information about Complainant’s goods on the Internet under the reference “legosmindstorms” are likely to assume that there is some kind of relationship between Complainant and Respondent. It is, therefore, a typical case of domain name squatting which causes substantial harm to Complainant.
In this context, it’s also inconceivable that the Respondent would have “found” the combination of the two words “lego” and “mindstorms” “by coincidence”. Rather, given the fact that both words are registered trademarks of the Complainant, the strong link to the Complainant and its trademark rights is evident. Respondent in any case must have known about Complainant’s trademarks, and it should have known that these marks and their combination can not be used for the purposes of a domain name registration, if the registrant doesn’t have anything to do with LEGO and has not been authorized to use the trademarks for such purposes.
Finally, the Complainant has shown that the Respondent has demanded more than SEK 150’000 as his price for the sale of the disputed domain name. Since the Respondent hasn’t used the disputed domain name for its own legitimate business, but apparently only as a link to the website “www.amazon.com” where LEGO products could be bought; this price seems to be excessively high and further corroborates the finding that the Respondent has registered and used the disputed domain name in bad faith.
The Panel therefore finds that the Respondent has registered and used the disputed domain name in bad faith.
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 <legosmindstorm.org> be transferred to the Complainant.
Michael Treis
Sole Panelist
Dated: April 16, 2012