WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. WhoisGuard Protected, WhoisGuard, Inc. / Michael Bowes

Case No. D2017-0188

1. The Parties

The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Michael Bowes of Bealeton, Virginia, United States of America (“United States”).

2. The Domain Names and Registrar

The disputed domain names <legocityairportvipservice.site>, <legocityfunintheparkcitypeoplepack.site>,

<legocityvolvano.site>, <legocreatorvacationgetaways.site>, <legoduplobigconstructionsite.site>, <legoduplomickeyandfriendsbeachhouse.site>, <legoghostbustersecto.site>, <legojuniorsbatmanandsupermanvslexluthor.site>, <legostarwarscloneturbotank.site>, and <legostarwars2016adventcalendar.site> (the “Disputed Domain Names”) are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2017. On February 1, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On February 2, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 8, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 13, 2017.

The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on February 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 7, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 8, 2017.

The Center appointed Kar Liang Soh as the sole panelist in this matter on March 10, 2017. 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.

On March 27, 2017, the Respondent informed the Center of his desire to cancel the Disputed Domain Names but could not do so because they were locked in view of the current proceeding. The Respondent apologized for his decision to register the Disputed Domain Names and intimated a desire to resolve the proceeding. On March 30, 2017, the Panel issued Administrative Panel Procedural Order No. 1 granting the Complainant until April 6, 2017, to request a 30-day suspension of proceeding for the purpose of settlement failing which the proceeding will continue. The Complainant confirmed on the same day that it does not wish to suspend proceeding and Administrative Panel Procedural Order No. 2 was issued confirming the continuance of the proceeding.

4. Factual Background

The Complainant is based in Denmark and has subsidiaries and branches throughout the world. The Complainant’s LEGO branded construction toys are sold in over 130 countries. The Complainant’s products also extend to computer hardware and software, books, videos, and robotic construction sets. The brand LEGO has won many accolades over the years including the top 500 Consumer Superbrands of 2015, No. 5 on the Reputation Institute’s list of the World’s Most Reputable Companies 2015, as well as the Most Influential Toy of All Time by TIME Magazine.

The Complainant owns many trademark registrations in relation to the word “lego” alone as well as in combination with other elements (the “LEGO Trademark”), including:

In particular, European Union trade mark registration No. 002829463 relates to the following logo incorporating the prominent word “lego” (the “Logo”):

The LEGO Trademark has been held by past UDRP panels to be well-known (e.g., LEGO Juris A/S v. Level 5 Corp., WIPO Case No. D2008-1692; LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715; LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680).

The Complainant also owns trademark registrations in relation to the word “duplo” (the DUPLO Trademark”), including:

The DUPLO Trademark is used in conjunction with the LEGO Trademark on some of the Complainant’s products. The Complainant is a licensee of STAR WARS trademarks and sells products marketed under the joint brands of Lego and Star Wars.

The Complainant holds almost 5,000 domain names incorporating the word “lego”, including <lego.com>, <lego-starwars.com>, and <legocity.com>, to name a few. The Complainant’s group of companies maintains an extensive website resolved from the domain name <lego.com>. The website to which <lego.com> resolves prominently displays the LEGO Trademark and the Logo.

The Respondent is an individual based in the United States who registered the Disputed Domain Names under a privacy protection service. Little information about the Respondent is available. All the Disputed Domain Names were registered on September 20, 2016 and, on or before the date of the Complaint, resolved to websites with a similar design theme which prominently displayed products under the LEGO Trademark and the Logo. The footer of each website contained the statement “The owner of this website, Matthew Bowes, is a participant in the Amazon Services LLC Associates Program, an affiliate advertising program designed to provide a means for sales to earn advertising fees by advertising and linking [the website url] to Amazon properties, including but not limited to, amazon.com, endless.com, myhabit.com, smallparts.com, or amazonwireless.com”. Each website also contained a search bar displaying the words corresponding to the relevant Disputed Domain Name. For example, in relation to <legocityfunintheparkcitypeoplepack.site>, <legoduplomickeyandfriendsbeachhouse.site> and <legojuniorsbatmanandsupermanvslexluthor.site>, the display was “lego city fun in the park city people pack”, “lego duplo mickey and friends beach house” and “lego juniors batman and superman vs lex luthor” respectively.

The Complainant issued a cease-and-desist letter to the Respondent requesting the transfer of the Disputed Domain Names in exchange for reimbursement of out-of-pocket expenses. The Complainant did not receive a reply from the Respondent despite two reminders before commencement of this proceeding.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

a) The Disputed Domain Names are confusingly similar to the LEGO Trademark in which the Complainant has rights. The LEGO Trademark is registered as a trademark and domain names in numerous countries. The suffixes “city airport vip service”, “city fun in the park city people pack”, “city volvano”, “creator vacation getaways”, “duplo big construction site”, “duplo mickey and friends beach house”, “ghost busters ecto”, “juniors batman and superman vs lex luthor”, “starwars 2016 advent calendar” and “starwars clone turbo tank” have been added to the LEGO Trademark to create the Dispute Domain Names and do not detract from its overall impression. The Disputed Domain Names <legostarwars2016adventcalendar.site> and <legostarwarscloneturbobank.site> contain the additional terms, “star wars”, to create an impression that they are associated with the Complainant as a licensee of STAR WARS trademarks. The Disputed Domain Names <legoduplobigconstructionsite.site> and <legoduplomickeyandfriendsbeachhouse.site> also incorporate the trademark DUPLO;

b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. There is no evidence that the Respondent has any registered trademarks or trade names corresponding to the Disputed Domain Names. There is no evidence that the Respondent has been using the LEGO Trademark in any other way that would give him any legitimate rights in the Disputed Domain Names. No license or authorization of any other kind, has been given by the Complainant to the Respondent, to use the LEGO Trademark. There is no evidence that the Respondent is using the LEGO Trademark as a company name. The Respondent is not using the Domain Names in connection with a bona fide offering of goods or services. The Respondent is not an authorized reseller of the Complainant; and

c) The Disputed Domain Names were registered and are being used in bad faith. The LEGO Trademark is well known. The Disputed Domain Names were registered decades after the Complainant’s trademark registrations for the LEGO Trademark. It is obvious that the fame of the LEGO Trademark motivated the Respondent to register the Disputed Domain Names. The Respondent cannot claim to have been unaware of the Complainant’s rights. The Disputed Domain Names are connected to websites directing Internet users to another commercial website, namely “www.amazon.com”, offering all kinds of products from a wide range of different brands, besides the Complainant. Potential visitors could easily assume that the websites are operated or endorsed by the Complainant. Visitors are directed to commercial websites, on which links lead to a third-party website promoting products from a variety of brands, and the Respondent obtains a revenue stream under the Amazon Services LLC Associates Program. There is no connection between the Respondent and the Complainant. By using the Disputed Domain Names, the Respondent is not making a legitimate noncommercial or fair use, but are misleadingly diverting consumers for commercial gain by creating a likelihood of confusion with the LEGO Trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.

B. Respondent

The Respondent did not reply formally to the Complainant’s contentions. However, in his communication to the Center on March 27, 2017, the Respondent apologized for registering the Disputed Domain Names and admitted to incorporating a company name in the Disputed Domain Names. The Panel has also noted the Respondent’s desire to cancel the Disputed Domain Names and resolve the proceeding.

6. Discussion and Findings

To succeed in this proceeding, the Complainant must show that the three limbs of paragraph 4(a) of the Policy are fulfilled by the evidence, namely:

(i) The Disputed Domain Names are identical or confusingly similar to a trademark in which the Complainant has rights;

(ii) The Respondent does not have any rights or legitimate interests in respect of the Disputed Domain Names; and

(iii) The Disputed Domain Names were registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel has noted the Complainant’s trademark registrations for the LEGO Trademark. There is no doubt that the Complainant has rights in the same. All the Disputed Domain Names incorporate the LEGO Trademark in its entirety. It is readily apparent that the only difference with the LEGO Trademark is the addition of various suffixes as follows:

The Disputed Domain Names <legoduplobigconstructionsite.site> and <legoduplomickeyandfriendsbeachhouse.site> also incorporate the DUPLO Trademark in its entirety while <legostarwarscloneturbotank.site> and <legostarwars2016adventcalendar.site> also incorporate the trademark STAR WARS licensed to the Complainant. The suffix words in each Disputed Domain Name are descriptive and appear to correspond to the names of specific products under the LEGO Trademark as offered on the Complainant’s website as well as the website resolved from the Disputed Domain Names.

The Panel accepts the Complainant’s submission that the suffixes do not detract from the overall impression of the LEGO Trademark in each of the Disputed Domain Names. Therefore, the Panel holds that the Disputed Domain Names are confusingly similar to the LEGO Trademark and the first limb of paragraph 4(a) of the Policy is established.

B. Rights or Legitimate Interests

There is no evidence in this proceeding to indicate that the Respondent holds any trademark registration in relation to the Disputed Domain Names. The Complainant has confirmed that no license or authorization of any other kind has been given by to the Respondent to use the LEGO Trademark. The Respondent has not denied the Complainant’s allegations of his lack of authorization. In fact, the Respondent appears remorseful for having incorporated the Complainant’s company name, which is essentially the LEGO Trademark, in the Disputed Domain Names. The apparent commercial nature of the websites resolved from the Disputed Domain Names also indicates that the Respondent is not using the Disputed Domain Names in a legitimate noncommercial manner. The Panel concludes that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Names. In the absence of a substantive response, and in light of the Respondent’s communication, the prima facie case stands and the second limb of paragraph 4(a) of the Policy is established.

C. Registered and Used in Bad Faith

Based on the evidence submitted, the Panel agrees with the previous UDRP panels that the LEGO Trademark is well known. The Respondent has effectively admitted to being aware of the LEGO Trademark at the time of registering the Disputed Domain Names. The evidence shows that LEGO Trademark branded products and the Logo were prominently displayed on the websites resolved from the Disputed Domain Names. Prices were displayed in association with these products. It is inconceivable to a reasonable person that the offer of LEGO branded products on the websites would be without commercial gain in mind.

The natural conclusion to be drawn from the circumstances is as described in paragraph 4(b)(iv) of the Policy, which states:

“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 is of the view that the facts of the present case fall squarely within the situation of bad faith registration and use as set out in paragraph 4(b)(iv) of the Policy. The Respondent is using the Disputed Domain Names to intentionally attempt to attract Internet users to the websites resolved therefrom for commercial gain, by creating a likelihood of confusion with the LEGO Trademark (as well as the DUPLO Trademark and the licensed STAR WARS trademarks) as to the source, sponsorship, affiliation or endorsement of the website and the goods (LEGO-branded products) and services (educational services) offered. Therefore, the Panel holds that the third limb of paragraph 4(a) of the Policy is also established.

7. Decision

The Panel is mindful that the Respondent is no longer interested to hold the Disputed Domain Names but is unable to release them due to the pendency of the proceeding. There is a clear meeting of intentions between the Complainant and the Respondent that the Respondent should not continue to hold the Disputed Domain Names.

For all 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, <legocityairportvipservice.site>, <legocityfunintheparkcitypeoplepack.site>, <legocityvolvano.site>, <legocreatorvacationgetaways.site>, <legoduplobigconstructionsite.site>, <legoduplomickeyandfriendsbeachhouse.site>, <legoghostbustersecto.site>, <legojuniorsbatmanandsupermanvslexluthor.site>, <legostarwarscloneturbotank.site> and <legostarwars2016adventcalendar.site>, be transferred to the Complainant.

Kar Liang Soh
Sole Panelist
Date: April 13, 2017