The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Floyd Goddard of Alabama, United States of America / Oneandone, Private Registration, 1&1 Internet Inc., Pennsylvania, United States of America.
The disputed domain name <legomindstormsnxt2.com> is registered with 1&1 Internet AG.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2010. On April 12, 2010, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain name. On April 12, 2010, 1&1 Internet AG transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 16, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant chose not to amend the Complaint. 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 20, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 14, 2010.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on May 26, 2010. 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.
As appears from the above there is an issue as to the identity of the proper Respondent in this administrative proceeding. The Panel deals with this issue in detail in Section 5 below. Suffice it to say at this stage that the Panel is satisfied that the Complaint as filed against ONEANDONE, 1&1 Internet Inc. is a valid complaint and does not require amendment.
Complainant LEGO Juris A/S (hereinafter referred to as the Complainant), is the owner of the LEGO and MINDSTORMS trademarks used in connection with the famous LEGO and MINDSTORMS brands of construction toys and other LEGO branded products.
The Complainant and its licensees (collectively “the LEGO Group of Companies or the LEGO Group”), through their predecessors, commenced use of the LEGO mark in the United States during 1953, to identify construction toys made and sold by them.
The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in the Unites States.
The LEGO MINDSTORMS is a line of programmable construction toys, which was released in 1998. In August 2009 LEGO released a newer version called the LEGO MINDSTORMS NXT 2.0.
The Complainant is also the owner of more than 1000 domain names containing the term LEGO.
The trademark LEGO is among the best-known trademarks in the world.
The LEGO Group has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets.
The disputed domain name was registered on November 14, 2009.
The Complaint was filed by the Complainant with the Center against Private Registration, 1&1 Internet Inc., the WhoIs-listed registrant of the domain name at that time. At some stage following service of the Complaint on Oneandone, Private Registration, 1&1 Internet Inc. and the Registrar by the Complainant, but prior to formal notification of the Complaint and commencement of the administrative proceedings by the Center, the Registrar changed its WhoIs database identifying Floyd Goddard as the registrant of the domain name. In fact, the Registrar in its reply to the Center's verification request confirmed Floyd Goddard as the registrant.
As well explained by the panel in Research In Motion Limited v. PrivacyProtect.org / Pluto Domain Services Private Limited, WIPO Case No. D2009-0324;
“The Policy and Rules were adopted prior to the existence of privacy services and take no account of anything but a single respondent. See Rules, paragraph 1, which defines Respondent as “the holder of a domain-name registration against which a complaint is initiated. Since the advent of proxy registrations and privacy services panels in Policy proceedings have not reached a consensus on how to deal with this practice”
In the present case the Panel fully agrees with the view of the panel in the above quoted case, namely that the Complaint was appropriately filed and that the Complainant's election not to amend the Complaint to reflect the name of “Floyd Goddard”, (the Registrar-identified “underlying” registrant) does not render the Complaint administratively deficient.
In fact, this Panel shares the opinion that: “a registrant that chooses to register through a privacy service and the registrar that provides such registration must bear some of the consequences of anonymous registration”. See F. Hoffmann-La Roche AG v. PrivacyProtect.org, Domain Admin and Mark Sergijenko, WIPO Case No. D2007-1854 were it was affirmed that:
“There are limits to what can reasonably be done by parties and providers in order to identify an underlying registrant in the context of a Policy created to offer a flexible and accessible alternative to litigation. Put simply, WhoIs information must be usable for communication purposes in a Policy proceeding – even those provided by an entity claiming to be a privacy or proxy registration service – and if they are not, the registrant, whoever they may be, must expect to bear any consequences” and “omissis Whatever a provider undertakes it is for the individual who chooses to use a privacy or proxy registration service, as it is for that privacy or proxy registration service itself, to ensure that there are procedures in place to ensure that any communications directed to the registrant of a domain name in the context of a UDRP dispute are brought to that registrant's attention.”
In Ohio Savings Bank v. 1&1 Internet, Inc. and David Rosenbaum, WIPO Case No. D2006-0881 the finding was that:
“… omissis However, it may simply be that one of the disadvantages of using a privacy service – to be weighed against the advantages of using such a service – are delays or lack of notice of proceedings that rely on the information contained in the registration record to provide notice. By this the Panel does not intend to suggest that such a delay or lack of notice is insignificant, but that they may simply be one of the consequences of the choice to use such a service, particularly where proceedings under the Policy look to and rely on information in the registration record maintained by the registrar.”
Indeed, it is this Panel's view that, considering that the Complainant sent a warning letter to the WhoIs-listed registrant on January 10, 2010, i.e. three months before filing the Complaint with the Center, ONEANDONE, 1&1 Internet Inc., had enough time to forward the warning letter to the Respondent (Floyd Goddard) and to disclose and eventually change the registrant's data on its WhoIs database before the start of the present proceeding. Therefore, the fact that ONEANDONE, 1&1 Internet Inc. decided to change this data only after receipt of the Center's request for registrar verification in connection with the disputed domain name, should not be of prejudice to the Complainant.
Nonetheless, this Panel is also of the opinion that it was appropriate for the Center to provide the registrar-confirmed information to the Complainant and to invite the Complainant to amend its Complaint if it wished to do so. In fact, as stated in Research In Motion Limited v. PrivacyProtect.org / Pluto Domain Services Private Limited, WIPO Case No. D2009-0324:
“After all, the unmasking of the underlying registrant might provide scope for the Complainant to strengthen its case.”
This Panel also agrees that it is convenient for the Center to treat the underlying registrant as a respondent by providing notice of the formal commencement of administrative proceedings to the underlying registrant verified by the registrar as well as to any registrant identified in the Complaint.
Finally, due to the unmasking of the underlying registrant and to the fact that Floyd Goddard claimed the ownership of the Domain Name in an email sent to the Complainant's representative on April 12, 2010, this Panel will consider Floyd Goddard as the Respondent in this administrative proceeding.
The Complainant claims that:
1) The dominant part of the domain name <legomindstormsnxt2.com> (hereinafter referred to as the Domain Name) comprises the words LEGO and MINDSTORMS, which are identical to the registered trademarks LEGO and MINDSTORMS, which have been registered by the Complainant as trademarks and domain names in numerous countries all over the world.
2) The Domain Name is confusingly similar to the Complainant's world famous trademark LEGO as well as to its trademark MINDSTORMS. A combination of two trademarks can still be considered to be confusingly similar. The addition of the word “NXT2” right after the trademark MINDSTORM is fitted to strengthen the impression that the Domain Name is associated with the Complainant as the Complainant has a product line named LEGO MINDSTORMS NXT 2.0.
3) That LEGO is one of the best known trademarks in the world;
4) The addition of the top-level domain (TLD) “com” does not have any impact on the overall impression of the dominant portion of the Domain Name and is therefore irrelevant to determine the confusing similarity between the trademark and Domain Name.
The Respondent did not formally reply to the Complainant's contentions. Indeed, respondent after receiving the Complaint sent the following email to the Complainant's representative which was forwarded to the center by the Complainant:
“Hello Anna, Probably threatening me is not the best course of action. I am an AMERICAN don't forget that part. Now, what do you want me to do with this domain name that apparently you were to slow to register? Hand it over to you at my expense? No, you will pay my expenses or you will go and do the lawyer thing. At the moment you don't even have a legal claim to it. If I give it to you it is because I want to and I feel it is the right thing to do. Now try asking nicely and explain what would make you happy and would be fair. Then we can resolve this quickly. Talk to me like a person. Forget making idle threats to me. I wont respond to any of them. Simple explain how WE can resolve this in a fair manner. Floyd Goddard
PS I have never sold a domain name. So forget the “bad faith” crap.”
The Complainant has documented to have prior rights on the registered trademarks LEGO and MINDSTORMS, in addition it appears that these two trademarks are used to identify a line of programmable construction toys, which was released in 1998 and named LEGO MINDSTORMS. In August 2009 the Complainant released a newer version called the LEGO MINDSTORMS NXT 2.0.
It is beyond doubt that the LEGO trademark is a world-wide renowned trademark.
This Panel agrees with the Complainant's view that the Domain Name is confusingly similar to the Complainant's world famous trademark LEGO as well as to its trademark MINDSTORMS. As affirmed by the Complainant a combination of two trademarks can still be considered to be confusingly similar. Moreover, the addition of the word “NXT2” right after the trademark MINDSTORM appears to be chosen to strengthen the impression that the Domain Name is associated with the Complainant as the Complainant has a product line named LEGO MINDSTORMS NXT 2.0.
In this sense, the Complainant has quoted as an example Société des Produits Nestlé SA v. Stuart Cook, WIPO Case No. D2002-0118 where it was affirmed that
“Although the combination of the two signs is not registered or used as a trademark, the contested domain names must nevertheless be considered confusingly similar to the marks in which the Complainant has rights. This is in particular true as far as the mark NESTLE is concerned since this mark is included in its entirety as the first and dominant part of the domain names.”
This Panel believes the circumstances indicated above apply in this case as well. Therefore it finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
The Complainants must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The respondent in a UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
a) that before any notice to the respondent of the dispute, he or she used or made 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;
b) that the respondent is commonly known by the domain name, even if he or she has not acquired any trademark rights; or
c) that the respondent intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Respondent has no connection or affiliation with the Complainant, which has not licensed or otherwise authorised the Respondent to use or apply for any domain name incorporating the Complainant's trademarks. The Respondent does not appear to be commonly known as “Lego”, “Mindstorms”, “Legomindstormsnxt2” or by a similar name and it has not alleged any facts or elements to justify prior rights and/or legitimate interest in the Domain Name. The Respondent does not appear to make any legitimate use of the domain name for non commercial activities. Finally, the Respondent has not formally replied to the Complaint, proved or at least alleged in any other way any concurrent right on the disputed Domain Name.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
i) circumstances indicating that the holder has registered or has 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 the holder's documented out-of-pocket costs directly related to the domain name; or
ii) the holder has 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 the holder has engaged in a pattern of such conduct; or
iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's web site or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the holder's web site or location or of a product or service on the holder's web site or location.
Accordingly, for a complainant to succeed, the panel must be satisfied that the domain name has been registered and is being used in bad faith.
Considering the notoriety of the Complainant's trademark LEGO, the very distinctive and arbitrary character of the names LEGO and MINDSTORMS, their extensive use also on the web through numerous domain name registrations containing and/or corresponding to the Complainant's trademarks and in the absence of contrary evidence, the Panel finds that the Respondent had actual knowledge of the Complainant's trademarks when he registered the disputed domain name. Particularly, this Panel believes that a domain name that consists of the combination of two registered trademarks of the Complainant (one of them being world-wide renowned) and the addition of few more letters (i.e. NXT2) so that the domain name becomes identical to the name of a product line sold by the Complainant, cannot be a coincidence.
The Panel, in accordance with previous decisions issued under the UDRP, is of the opinion that actual knowledge of the Complainant's trademarks and activities at the time of the registration of the disputed domain may be considered an inference of bad faith See Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226 and Sony Kabushiki Kaisha also trading as Sony Corporation v. Inja, Kil, WIPO Case No. D2000-1409:
“It is inconceivable that the Respondent could make any active use of the disputed domain name without creating a false impression of association with the Complainant. The Respondent was not authorized by the Complainant to use neither its mark nor the disputed domain name”.
Moreover, the Respondent, in reply to the cease and desist letter of the Complainant's representative, did not assert or even allege any rights or reasons to have chosen the disputed domain name. Indeed, it did not answer at all to the cease letter.
In this respect the Complainant correctly notes that it has been mentioned in earlier disputes that the failure of a respondent to respond to a cease and desist letter, or a similar attempt at contact, has been considered relevant in a finding of bad faith, in Nike, Inc. v. Azumano Travel WIPO Case No. D2000-1598 it was affirmed that:
“Failure to positively respond to a complainant's efforts to make contact provides “strong support for a determination of bad faith registration and use.”
In this sense also News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623 and America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460.
Moreover, the Respondent did not file any response to the Complaint and in its short email to the Complainant's representative (reported above) it has not contested the Complainant's rights on the Domain Name and trademarks, has not given any justification for the registration of the domain name, substantiated or at least alleged any concurrent right or legitimate interest to the disputed domain name.
Finally, it appears that Respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to the web site, by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of its web site.
As affirmed by the Complainant, whether or not the Respondent has influenced what links should be included on the sites is irrelevant for the finding of bad faith in this case. It is also without relevance whether or not the Respondent is actually getting revenue from the pages himself. In Villeroy & Boch AG v. Mario Pingerna, WIPO Case D2007-1912, the respondent claimed that the web site was created by the registrar, that he had no knowledge of the content and that he had actually not received any money from the web site. The panel then stated that:
“these facts do not exclude bad faith under paragraph 4(b)(iv) for the following reasons: (i) paragraph 4(b)(iv) requires the Respondent to intend to attract Internet users ‘for commercial gain', but this gain does not need to be derived by the Respondent himself. The Respondent cannot infringe the Complainant's rights with impunity on the basis that it is allowing a third party to reap the profits of its wrongful conduct; (ii) the Respondent has at all times been in contractual control of the content of the web-site at the disputed domain name, and had the power to instruct the Registrar to remove the parking page.”
These circumstances apply in this case as well.
Accordingly, the Panel finds on the basis of the evidence presented that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <legomindstormsnxt2.com> be transferred to the Complainant.
Fabrizio Bedarida
Sole Panelist
Dated: June 9, 2010