The Complainant is LEGO Juris A/S, Billund, Denmark, represented by Stina Pilotti of Melbourne IT Digital Brand Services AB, Sweden.
The Respondent is David Palmer, Lake Elmo, Minnesota, United States of America.
2. The Domain Names and Registrars
The disputed domain names <justlegos.com>, <legosonly.com> and <onlylegos.com> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2008. On November 26, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On November 26, 2008, GoDaddy.com, Inc. 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 December 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 23, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on December 24, 2008.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on January 14, 2009. 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.
4. Factual Background
The Complainant is the owner of the well-known LEGO trademarks in Denmark, and internationally. Since 1953, the Complainant has used the LEGO trademark on construction toys made and sold by them around the world. Sales of the Complainant's LEGO construction toys in the United States alone exceed $1 billion over the last 10 years.
The Complainant has registered the LEGO trademark in over 190 countries around the world. The Complainant also owns over 450 domain name registrations containing the word LEGO. All of the domain names containing the word LEGO are owned by the Complainant.
The Complainant has extensively advertised and promoted its LEGO trademark on products, packaging, displays, and other promotional materials. Advertising expenses by the Complainant exceed $50 million over the past 10 years.
Several books have recognized the Complainant's LEGO trademark as being famous, namely: The World's Greatest Brands and Famous Brands.
The Complainant has expanded the use of its LEGO trademark to computer hardware and software, books, videos and computer controlled robotic constructions sets. The Complainant also operates a website at “www.lego.com”.
The Respondent registered the domain names <legosonly.com>, <justlegos.com> and <onlylegos.com> on February 27, 2008. At the time the Complaint was filed, the Respondent was operating websites in connection with the disputed domain names, which provided links to other websites.
5. Parties' Contentions
A. Complainant
(a) Identical or Confusingly Similar
The Complainant contends that the domain names <legosonly.com>, <justlegos.com> and <onlylegos.com> are confusingly similar to the Complainant's trademark LEGO.
The Complainant submits that the domain names includes the famous LEGO Trademark in its entirety, together with common words or phrases, namely “just” and “only”. Those common words do not have any impact on the overall impression of the dominant part of the domain name, “lego”, which is recognizable as the famous LEGO trademark of the Complainant. In addition, the domain names are all misspellings of the trademark LEGO by the addition of the letter “s” to the mark. The Complainant has made significant efforts to prevent this type of misspelling of the LEGO mark, by registering the domain name <legos.com>, and notifying the Internet users of the incorrect spelling and re-directing them to the correct “lego.com” website.
(b) Rights or Legitimate Interests
The Complainant contends that the Respondent cannot demonstrate or establish any legitimate interest in the disputed domain names. The Respondent registered the disputed domain names long after the Complainant had established rights in the LEGO trademark. The Complainant submits that its rights in the LEGO trademark are so well-known it is not possible that the Respondent was unaware of the Complainant's rights. The Complainant submits that there is no relationship between the Complainant and the Respondent giving rise to any license, permission or other right by which Respondent could own or use any domain names incorporating the Complainant's LEGO Trademark. The Complainant further submits that the Respondent is not known or identified by the disputed domain names. The Complainant also submits that the Respondent is not using the domain names in a manner which offers bona fide goods or services. The Complainant notes that the Respondent is operating websites that provide links to other websites for the purpose of monetary gain. The Complainant's attorneys sent the Respondent demand letters, seeking transfer of the domain names and the disabling of the associated websites on several occasions. The Respondent did not respond to those letters.
(c) Registered and Used in Bad Faith
The Complainant contends that the domain names <justlegos.com>, <onlylegos.com> and <legosonly.com> have been registered and are being used in bad faith based on the following factors:
(i) Respondent's knowledge of the well-known LEGO trademark at the time of registration of the dispute domain names;
(ii) Respondent's registration of confusingly similar domain names; and
(iii) Respondent's use of confusingly similar domain names to operate websites that provide links to other websites for purposes of monetary gain.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established rights in the LEGO trademark, by virtue of Denmark Registration No. CTM 39800; and the many other international registrations, listed in the Complaint (Annex 4).
The Panel finds that the domain names <justlegos.com>, <onlylegos.com> and <legosonly.com> are confusingly similar to the Complainant's trademark LEGO, because each of the disputed domain names contains as the dominant element the LEGO trademark exactly in its entirety. The Panel accepts that the addition of the common words “just” and “only” do not serve to distinguish the domain names from the trademark.
The Panel also finds that the addition of the letter “s” at the end of the word LEGO is representative of typo-squatting, and indicative that the Respondent is attempting to take advantage of Internet users who mis-type the Complainant's trademark LEGO, thereby directing them to the Respondent's websites.
Therefore, the Panel finds that the Complainant has satisfied the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Panel finds no evidence that the Respondent ever had any right or legitimate interest in the disputed domain names. The Respondent registered the domain names 55 years after the Complainant had begun using the LEGO trademark in Denmark and around the world. The Panel finds no evidence that the Respondent was ever known by the disputed domain names. The Panel accepts the Complainant's assertion that it never licensed or authorized the Respondent to use the LEGO Trademark. The Panel concludes that the Respondent is not affiliated or related to the Complainant in any manner.
The Panel finds that the Respondent is not using the domain names in connection with a bona fide offering of goods or services. The Complainant has filed evidence in this proceeding showing that the Respondent is operating websites in connection with the disputed domain names which provide links to other websites for the purposes of monetary gain. The operation of “click-through” sites is not evidence of a bona fide offering of goods and services.
The Panel is therefore satisfied that the Complainant has made a prima facie showing of the Respondent's lack of rights or legitimate interest in the disputed domain names. Once a complainant has made this prima facie showing, the Respondent must come forward with evidence that rebuts this presumption (Document Technologies, Inc. v. International Electronic Communications Inc.,
WIPO Case No. D2000-0270).
As the Respondent has not filed any evidence in response, the Panel finds that the Complainant has satisfied the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The uncontested evidence shows that the Complainant's trademark LEGO is distinctive and well-known in Denmark and internationally, including the United States the country where the Respondent is located. Panels have acknowledged in many decisions that the LEGO trademark is considered a famous mark. In LEGO Juris A/S v. LogoFusion, WIPO Case No. D2006-0270, the Panel recognized, “the worldwide fame of the Complainant's trademark”. In LEGO Juris A/S v. Level 5 Corp.,WIPO Case No. D2008-1692, the Panel found, “the Complainant has established that LEGO and LEGOLAND are well-recognized and world famous trademarks and that the trademarks are distinctive”. “It is out of question that the trademark LEGO is among the most famous trademarks.” (Kirkbi AG v. Company Require/Karlina Konggidinata and Pool.com, Inc.WIPO Case No. D2004-0359). Accordingly, the Panel is prepared to infer that the Respondent had actual knowledge of the Complainant's trademark rights when he registered the disputed domain names <justlegos.com>, <onlylegos.com> and <legosonly.com>.
The Panel is also prepared to find that the Respondent registered the disputed domain names and is using the domain names for the operation of click-through websites which provide links to other websites for the purposes of monetary gain. The evidence shows that the Respondent was not authorized or licensed to use the Complainant's trademark. The Respondent has deliberately traded on the goodwill of the Complainant, through typosquatting and the addition of common words, such as “just” and “only”, thereby diverting Internet traffic intended for the Complainant's website to the Respondent's websites for the purpose of monetary gain.
For these reasons, the Panel finds that the Complainant has satisfied the third element of paragraph 4(a) of the Policy
7. Decision
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 names, <justlegos.com>, <legosonly.com> and <onlylegos.com> be transferred to the Complainant.
Christopher J. Pibus Sole Panelist
Dated: January 27, 2009
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