The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is The Unies Production, Ryan Guerra of Surfside, Florida, United States of America, represented per se.
The disputed domain names <legolandflorida.com> and <legolandorlando.com> are registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2011. On October 19, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain names. On October 20, 2011, eNom 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 October 27, 2011. On October 31, 2011, the Center notified the parties that, due to an unusual electrical fire at WIPO, it was not possible to send a copy of the necessary Written Notice to the Respondent on the day of notification to the available postal address. Accordingly, the necessary Written Notice was sent on October 31, 2011, as required under the applicable Rules and therefore, the due date for submission of any Response was extended by four (4) days.
In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2011. The Response was filed with the Center on November 17, 2011.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on November 28, 2011. 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 Complainant and its predecessors have been manufacturing and selling construction toys under the trademark LEGO for many years. Sales under the LEGO trademark in the United States of America (“USA”) commenced in in 1953. The range of products and services it provides has expanded over time. These days’ products branded LEGO include computer hardware, software, books, videos and computer controlled robotic construction sets. The LEGO Group’s activities include a number of theme parks operated under the trademark LEGOLAND. The theme parks are owned and operated by Merlin Entertainments which uses the LEGO and LEGOLAND trademarks under licence from the Complainant. From the website at “www.legoland.com”, there appear to be five (5) of these and another eight (8) LEGOLAND Discovery Centers in various parts of the world.
In 2009, the annual revenue of the LEGO Group exceeded USD 2.8 billion. Its LEGO products are sold in more than 130 countries including the USA and the United Kingdom of Great Britain and Northern Ireland. An organization called Superbrand has ranked the LEGO trademark as the eighth most valuable brand in the world in 2009/2010. The other brands in the “Top 10” included Microsoft, Rolex, Google, British Airways, BBC, Mercedes-Benz, Coca Cola, Apple and Encyclopaedia Britannica.
The Complainant has provided a listing of numerous trademark registrations around the world for LEGO or LEGOLAND. In the USA (which is all that need be considered for present purposes), these include:
- Registered trademarks No 1018875 for LEGO in International Class 28 for toy building blocks and connecting links filed in 1974;
- Registered trademarks No 1026871 for a stylized presentation of LEGO on a red square background (logo version) in International Classes 28 filed in 1974;
- Registered trademark No 1248936 for LEGO for goods in International Classes 16, 20, 22 and 25 filed in 1982;
- Registered trademark No 1248938 for a black and white iteration of the logo version for goods in International Classes 16, 20, 22 and 25 filed in 1982;
- Registered trademark No 1535046 for goods in International Class 9 filed in 1987;
- Registered trademark No 1563848 for LEGO for entertainment services in International Class 41 and 42 filed in 1988;
- Registered trademark No 1713101 for a black and white version of the logo version in International Class 8 filed in 1991;
- Registered trademark No 1889004 for LEGO in respect of child care centres in International Class 42 filed in 1994;
- Registered trademark No 2189528 for LEGO in International Class 9 filed in 1994;
- Registered trademark No 2060284 for the logo version for a range of goods and services in International Classes 6, 9, 14, 16, 18, 20, 21, 25, 28, 41 and 42 filed in 1994;
- Registered trademark No 2065901 for LEGO in relation to on-line fan club services in International Class 41 filed in1995;
- Registered trademark No 2065902 for a logo version of No. 2065901, filed in 1995;
- Registered trademark No 3440699 for the logo version in International Classes 9, 35 (retail services including online retail services), 38 (providing online electronic bulletin boards for transmission of messages among computer users), 41 (a range of online services) filed in 2006
- Registered trademark No 3440698 for LEGO for goods and services in International Classes 9, 35, 38 and 41 filed in 2006;
- Registered trademark No 1344008 for LEGOLAND for goods in International Class 16 filed in 1984;
- Registered trademark No 2334535 for LEGOLAND for services in International Classes 35, 41 and 42 filed in 1998; and
- Registered trademark No 3446087 for LEGOLAND for clothing in International Class 25 filed in 2007.
The Respondent registered the disputed domain names on June 29, 2009.
In January 2010, the Complaint’s Group announced that it was planning to open a LEGOLAND Florida. The theme park LEGOLAND Florida subsequently opened in 2011. It is located in Winter Haven, Florida, about 45 minutes from Orlando, Florida.
When the Complaint was filed, the disputed domain name <legolandflorida.com> resolved to a website that described itself as a “A Real Estate Referral Service” and stated (amongst other things) that “We are interested in purchasing land in Florida. So if you have land without any property or structures then give us a call and we will consider obtaining your land.” There were a number of click through advertisements on the page. Apparently, the Respondent was identified as the contact for the website.
The disputed domain name <legolandorlando.com> resolved to a website displaying a picture with the text “Letgo YOUR land ORLANDO”, where the “t” between Let and go was grayed out so that it appears to read “Lego”.
The Respondent would appear to be a web development agency.
Under paragraph 4 of the Policy, the Complainant must prove each of the following three elements:
(i) the disputed domain names are identical or confusingly similar to a trademark to which it has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark, and, if so, the disputed domain names must be shown to be identical or confusingly similar to the proven trademark.
The Complainant has clearly proved ownership of the registered trademarks referred to in section 4 above. In addition, the Panel finds that the Complainant has very substantial rights in both LEGO and LEGOLAND as unregistered trademarks (in many parts of the world where such rights are recognised). The trademark LEGO, at least, is very well-known and famous.
The Complainant contends that both disputed domain names are confusingly similar to these trademarks on the basis that the differences between the disputed domain names and the trademarks do not dispel any confusion as to source. The differences to LEGOLAND are the addition of the gTLD and a geographic descriptor, Florida or Orlando (which is a place in Florida). As the Complainant contends, these differences are plainly not sufficient to defeat a finding of confusing similarity. The position is not much different with the LEGO trademark given the distinctiveness and renown of that trademark.
The Respondent raises a number of arguments against this conclusion. A number of them are not relevant to the inquiry such as the criticisms of the Complainant’s naming policy for its websites. On this part of the inquiry under the Policy, what is required is simply a comparison of the disputed domain names themselves to the Complainant's proven trademarks: see, for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law, which can require comparisons of the goods or services for which the trademark is registered and those of any impugned use as well as considerations such as the geographical location of the registrations and the impugned use. Such matters, if relevant, may fall for consideration under other elements of the Policy.
For this reason, the Respondent’s contentions based on the scope of the Complainant’s registrations is also not relevant at this stage of the inquiry.
The Respondent argues that LEGO is itself a common or dictionary expression and not distinctive in itself. In support of this, the Respondent relies on LEGO as a participle in the Latin verb legere and the appearance of the letter string in names such as delego, elegosoft and its appearance in the domain names of other persons such as <www.legocc.com> which the Respondent contends the Complainant has not challenged or cannot challenge.
Acknowledging that LEGO is the first person of the present participle of the Latin verb legere, the Panel considers that the vast majority of users of the Internet would be more likely to associate LEGO with the Complainant and its products. The term LEGO has clearly acquired secondary meaning if it is not more properly described as a coined term in this context. It will be taken by most people as distinguishing the Complainant’ products and services. The Respondent’s arguments on this basis also have no applicability at all to the Complainant’s trademark LEGOLAND.
The Respondent’s arguments about other uses are also predicated on a misunderstanding about the nature of the inquiry at this stage as explained above. All that is required is a comparison of the disputed domain names to the proven trademarks. What other users may be doing is simply irrelevant at this stage (if at all).
Accordingly, the Panel finds that the Complainant has established this requirement under the paragraph 4(a)(i) of the Policy in respect of both disputed domain names.
The second requirement that the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.
A respondent may have rights or legitimate interests under the Policy in the circumstances set out in paragraph 4(c) of the Policy. The circumstances set out in paragraph 4(c) of the Policy are examples only, however, and are not an exhaustive numeration in ways in which rights or legitimate interests can be shown.
While paragraph 4(c) of the Policy states that these are circumstances where a respondent may show rights or legitimate interests, the overall burden of establishing this requirement falls on a complainant. Nonetheless, in view of the difficulty inherent in proving a negative and because the relevant information is often in the possession of a respondent only, it will be sufficient for a complainant to establish a prima facie case which, if not rebutted, will lead to this ground being established (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (WIPO Overview 2.0), paragraph 2.1.)
The Complainant states that it has not licensed or otherwise authorised the Respondent to register or use the Complainant’s trademarks as part of the Respondent’s domain names. The Respondent is not an authorised dealer in LEGO products nor is it purporting to offer LEGO products from the websites at the disputed domain names.
So far as the Complainant can establish the Respondent does not have any registered trademarks or trade names corresponding to LEGO or the disputed domain names.
Given the fame of the Complainant’s trademarks, the Complainant contends that the Respondent must have known about its trademarks when it registered the disputed domain names.
Given the distinctiveness of the Complainant’s trademarks, this is more than sufficient to raise a prima facie cases against the Respondent.
The Respondent does not contest most of the Complainant’s contentions. It does contest, however, that there is no legitimate use to which it can put the disputed domain names. In this connection, it points out that the Complainant’s trademarks are limited in the scope of their registrations and, in particular, do not extend to real estate services in International Class 36. It states:
The Respondent has shown a track record of creating websites that have similar goals to these two websites, legolandflorida.com and legolandorlando.com because the Respondent currently owns similar domains names in which he collection of information, the building of databases is utilized and the displaying of large amounts of information is being organized and presented to an end user.
The examples it gives are domains at historichomesamerica.com> and <miamibeachvisitorcenter.com>.
The Respondent also states that in the course of its researching domain names it noticed a Lego Wineries LLC in addition to the matters already referred to. It also annexes print outs of websites showing, it contends, that LEGO is a common word in ordinary parlance. Noting that it registered the disputed domain names about six (6) months before the Complainant announced its plans to establish a LEGOLAND Florida, it contends:
The Respondent clearly had no idea that the Complainant was intending to build a theme park in Winter Haven, Florida. The Respondent merely found a domain name and purchased the domain for his stated goal: to create a place where people can share and list the land the [sic] wish to unload and sell or buy, hence the domain names: legolandflorida.com and legolandorlando.com.
It is noteworthy that the Respondent does not dispute knowledge of the Complaint’s trademarks before it registered the disputed domain names. Rather, it contends for an intention and right to use it in an unrelated field. Nor does the Respondent dispute deriving click-through revenues from the advertisements placed on its website. Instead, it contends that the advertisements are related to “homes, land and real estate”, the subject matter of its website.
The Panel notes paragraph 4(c)(i) is conditioned on usage, or preparations to use a domain name in connection with a bona fide offering of goods or services. Bearing in mind that as noted above that the situations demonstrating rights or legitimate interests in paragraph 4(c) of the Policy are examples only, the requirement that a respondent’s offer of goods or services be bona fide is a crucial condition for reliance on this type of defence.
The first problem is that the Respondent’s explanation of the rationale for its website does not fit with the demonstrated use. As noted above, the website purports to be an advertisement seeking to identify people who might wish to sell their land to the Respondent. It does not appear to be a website showcasing the Respondent’s services in “the collection of information, the building of databases is utilized and the displaying of large amounts of information is being organized and presented to an end user”.
Secondly, the Respondent’s website at <historichomesamerica.com>, at least at the time of writing, is simply a single page featuring a “logo” based on those words. There is no other content to the page. The domain name <miamibeachvisitorcenter.com> did not even resolve to any sort of webpage.
Thirdly, both of those domain names are of a plainly descriptive character. There cannot be any dispute about that. The dictionary examples referred to in Annexes 7 and 8 of the Response are either references which can be traced back to the trademark significance of the Complainant’s trademark or to the Latin expression which the Panel has expressed its views about above. Annex 9 appears to be a compendium of urban slang and, at least in this case, relates to usage in particular communities which appear quite specialized and have nothing to do with the Respondent’s claimed activities.
There is also nothing about the term LEGO either by itself or with the suffix “land” which naturally suggests itself either for a website which is related to real estate activities or the services the Respondent claims in the Response to be wishing to highlight. In this Panel’s view, the only realistic reason for using LEGO in either of the disputed domain names is to take advantage of the trademark significance and goodwill built up by the Complainant in LEGO and LEGOLAND.
The Respondent’s contentions based on registration six (6) months before the Complainant’s announcement of its plans to establish a LEGOLAND Florida at Winter Haven (and not Orlando) do not assist it. Given the Respondent appears to have known about LEGOLAND California, it does not take much, if any, insight for anyone familiar with Florida as an important tourist destination in the USA (and one where theme parks like Disney World are already established) to guess that LEGOLAND Florida is, if not on the horizon, not far over it. Similar considerations would be equally applicable for Orlando, a destination which promotes it widely as a home for theme parks and resorts.
The Panel also notes that at least one of the “click-through” advertisements on the Respondent’s website is for “professional” website services. Another is in a language other than English (which is the language of the rest of the website) which the Panel is unable to identify. A third is a variation on the “Letgo YOUR land ORLANDO” referred to in section 4 above which emphasises LEGO by greying out the “t” in “Letgo” and minimizing the space between the first two words.
In these circumstances, the Panel does not accept the Respondent’s positive assertion of a right or legitimate interest in using the disputed domain names in connection with a bona fide offering of goods or services. Accordingly, the Respondent has failed to rebut the prima facie case established by the Complainant and the Complainant has established this requirement under the paragraph 4(a)(ii) of the Policy.
Under the third requirement of the Policy, the Complainant must establish that the disputed domain names have been both registered and are being used in bad faith by the Respondent. Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that a respondent in question has registered and is using the domain name to take advantage of its significance as a trademark owned by (usually) a complainant.
The Complainant essentially relies on the strength, longevity and fame of its trademarks to found a presumption of registration and use in bad faith. At least in relation to <legolandorlando.com>, it specifically invokes Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003.
In rebuttal, the Respondent effectively relies on the matters set out in sub-section B above. The Respondent appears to contend that it has not used either of the disputed domain names as in a trademark sense because it has not placed the symbol ® next to them. In any event, the Respondent contends it has not tried to manipulate the public by its uses and reiterates its view that the way it uses the disputed domain names would never infringe the Complainant’s trademarks.
For the reasons set out in sub-section B above, the Panel finds that the Respondent has registered the disputed domain names in bad faith.
Correspondingly, the Panel has not accepted that the disputed domain names are being used in connection with a good faith offering of goods or services. For the reasons set out in sub-section B above, the Panel has found that the disputed domain name <legolandflorida.com> is being used to take advantage of the significance of LEGOLAND and LEGO as the Complainant’s trademarks. Indeed, the Respondent wrote to the Complainant to inform it that the held the disputed domain names and invite offers for their purchase. These factors and the use of “click through” advertisements are sufficient to constitute use in bad faith under the paragraph 4(a)(iii) of the Policy.
The Panel also extends that conclusion to the disputed domain name <legolandorlando.com> which, if it has been inactive since its registration by the Respondent, falls squarely within the principles laid down in the Nuclear Marshmallows case on the record in this case.
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 <legolandflorida.com> and <legolandorlando.com> be transferred to the Complainant.
Warwick A. Rothnie
Sole Panelist
Dated: December 14, 2011