Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
Respondent is Andrew Orr of Ogden, Utah, United States of America.
The Domain Name <legominifigs.info> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2015. On July 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 30, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on August 5, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 25, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 27, 2015.
The Center appointed Alexandre Nappey as the sole panelist in this matter on September 3, 2015. 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.
LEGO Juris A/S (hereinafter “Complainant”) is a company based in Billund, Denmark and the owner of the famous LEGO brands of construction toys and other LEGO branded products.
Complainant is also the registered owner of numerous trademark registrations for the LEGO word mark and logotype (the “LEGO Mark”) in numerous countries worldwide, and notably in the United States where Respondent appears to be located.
Further, Complainant is the owner of almost 4,300 domain names containing the term “lego”.
On September 11, 2014, an individual named Andrew Orr (hereinafter “Respondent”), registered the Domain Name <legominifigs.info> which used to point to the commercial website located at “www.amazon.com” displaying Complainant’s “LEGO Minifigures” products.
The Complainant produces and sells construction toys and other products under the LEGO Mark since 1953. Today, the LEGO products are promoted and sold in more than 130 countries, including the United States, where the Respondent is based.
The Complainant has registered the LEGO Mark around the world in connection with a range of toy and related goods. Its vast portfolio of registrations is listed in Annex 6 of the Complaint, including the United States trademark No.1018875, registered on August 26, 1975.
The LEGO Mark is among the best-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO Mark on all products, packaging, displays, advertising, and promotional materials. Indeed, the LEGO Mark has been recognized as famous by most relevant rankings and publications.
The Complainant has established to the satisfaction of the Panel that the LEGO Mark is one of the world’s most recognized marks, lists by “Superbrands UK” in its 2014/2015 assessment showing the Complainant as winner in the category “Child Products – Toys and education”.
Considering the worldwide fame of its trademark, the Complainant first claims that the Domain Name is confusingly similar to the trademark LEGO.
Then the Complainant states that the Respondent has no right or legitimate interest in the Domain Name, arguing that the mere post of a disclaimer on the home page of the website where the Domain Name resolves is insufficient.
At last, the Complainant infers that since LEGO is a famous trademark worldwide, it is clear that the Respondent was aware of the rights the Complainant has in the trademark and the value of said trademark, at the point of registration. There is no connection between the parties. Finally, by using the Domain Name the Respondent is not making a legitimate noncommercial or fair use, but is misleadingly diverting consumers for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to prevail in this proceeding:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name was registered and is being used in bad faith.
Respondent’s default during the present proceedings does not automatically result in a decision in favor of Complainant, however, paragraph 5(e) of the Rules provides that if Respondent does not submit a response, in the absence of special circumstances, the Panel is to decide the dispute solely based upon the Complaint.
The Panel concludes that the Domain Name <legominifigs.info> is confusingly similar to the LEGO Mark in which Complainant has shown to have rights.
The Domain Name not only incorporates the LEGO Mark in its entirety. Moreover, the suffix “minifigs” refers to “minifigures” a very popular (and trademarked) product line of Complainant, namely toy figures called “Lego minifigures”.
Therefore, the addition of the terms “minifigs” to Complainant’s LEGO Mark in order to create the Domain Name is obviously insufficient to avoid a finding of confusing similarity as those two terms in fact underscore and increase the confusing similarity between the Domain Name and the Complainant’s trademark.
This view is also in line with other recent UDRP decisions relating to Complainant’s trademark LEGO in which the addition of a designation referring to one of Complainant’s own product lines has been found to even add to the confusing similarity between Complainant’s trademark and the domain name in the respective case (see e.g., LEGO Juris A/S v. Ryan Elsey, WIPO Case No. D2011-1438; LEGO Juris A/S v. Nurinet, WIPO Case No. D2012-0126).
Therefore, the Panel is satisfied that the first element under the Policy, as set forth by paragraph 4(a)(i), in the case at hand is fulfilled.
Under the Policy paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name.
In this case, Complainant has made a prima facie showing that Respondent lacks any rights or legitimate interest in the Domain Name. In particular, Respondent does not have any registered trademarks or trade names corresponding to the Domain Name. Complainant has not provided Respondent a license or authorization to use the LEGO Mark. Neither has Complainant found anything that would suggest that Respondent has been using the Domain Name in any other way that would provide any legitimate rights.
However, under paragraph 4(c)(i) of the Policy, a panel may find that a respondent has a right or legitimate interest in a domain name if the circumstances suggest that before any notice to it of the dispute, the respondent has used, or made demonstrable preparations to use, the domain name or a name corresponding to it in connection with a bona fide offering of goods or services.
Although Respondent did not file a response, Complainant establishes that Respondent has been using the Domain Name in connection with a website where LEGO products are sold, e.g. “www.amazon.com”.
Furthermore, Respondent has posted a disclaimer on the Domain Name’s website. In some particular circumstances, especially if it is sufficiently clear and prominent, a disclaimer may sometimes be found to support other factors indicating good faith or legitimate interest.
But as stated in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), especially under the dedicated section 3.5: “The existence of a disclaimer cannot by itself cure bad faith, when bad faith has been established by other factors. This is typically explained by UDRP panels with reference to the probability of Internet user “initial interest confusion” - by the time such user reaches and reads any disclaimer under the domain name, any registrant objective of attracting visitors for financial advantage to its website through use of the trademark in the domain name will generally have been achieved. A disclaimer can also show that the respondent had prior knowledge of the complainant’s trademark”.
To address the issue of bona fide use, the Panel finds that the requirements set forth in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”) to be the appropriate analysis for this case. Oki Data instructs that to be considered bona fide use, the offering must meet several requirements, including the following:
- Respondent must actually be offering the goods or services at issue;
- Respondent must use the website to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;
- Respondent must take steps to prevent confusion by making clear in its use of the domain name that it is not the trademark owner, even if it offers legitimate goods, by accurately disclosing the registrant’s relationship with the trademark owner; e.g., it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, or that it is an authorized or exclusive agent; and
- Respondent does not corner the market in all domain names or deprive the trademark owner of reflecting its own mark in a domain name.
In this case, the Respondent is not an authorized reseller, nor even a reseller at all. The Domain Name is pointing to “www.amazon.com” where the Complainant’s products are sold, among others.
Furthermore, the Respondent does not disclose its relationships with the Complainant in its disclaimer.
This is clearly insufficient to satisfy the Oki Data “test” where the reseller must use the website operated from the Domain Name to sell the trademarked goods exclusively.
The Panel finds that Respondent does not have rights or legitimate interests in the Domain Name and that Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Paragraph 4(b)(iv) of the Policy specifies that bad faith exists where Respondent, by using the Domain Name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. Because of the well-known nature of Complainant’s trademark rights in the LEGO Mark at the time of the registration of the Domain Name and because Respondent uses the Domain Name to redirect Internet users to a third party commercial website, the Panel has no doubt that the Domain Name was registered and is being used in bad faith.
The Panel finds that the Respondent makes use of the confusing similarity between the Domain Name and the LEGO Mark to acquire revenue each time an Internet user clicks through on the links provided. To the Panel, this is a clear indication of bad faith. See, e.g., LEGO Juris A/S v. Sony Laksono, N/A / PrivacyProtect.org, WIPO Case No. D2011-2268.
The Panel also considers as a sign of bad faith the fact that the Respondent continues to use the Domain Name to redirect Internet users to a third party commercial website offering LEGO products as well as products from various other brands for sale, even after he received Complainant’s Cease and Desist email. The correspondence between Complainant and Respondent shows clearly that the latter was offered the possibility to transfer the Domain Name to the Complainant against reimbursement of his out of-pocket-costs.
As the Respondent did not avail himself of that possibility, the Panel considers it as a further element of 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 Domain Name <legominifigs.info> be transferred to Complainant.
Alexandre Nappey
Sole Panelist
Date: September 21, 2015