WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Hostlando, Tom Tayo

Case No. D2012-1313

1. The Parties

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

The Respondent is Hostlando, Tom Tayo, of Orlando, Florida, United States of America.

2. The Domain Names and Registrar

The disputed domain names <legodepothd.info>, <legodepothq.info> and <legopiecesdepot.info> are registered with GoDaddy.com, LLC

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2012. On June 27, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain names. On June 27, 2012, GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and disclosing registrant and contact information for the disputed domain names which differed from the named Respondent in 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 July 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 25, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2012

The Center appointed Isabelle Leroux as the sole panelist in this matter on August 3, 2012. 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 a construction toys designer and manufacturer, making and selling LEGO branded toys all over the world. The LEGO branded products are sold in more than 130 countries, including in the United States.

The Complainant is the owner of the well-known trademark LEGO, registered in thousands of countries worldwide and used to identify construction toys.

The Complainant notably owns a United States trademark on the name LEGO, registered in 1975 under number 1018875 covering products in class 28.

The Complainant also owns more than 3400 domain names containing the word “Lego”.

The Respondent is based in the United States. The disputed domain name <legodepothd.info> was created on May 22, 2012, the disputed domain name <legodepothq.info> was created on January 5, 2012 and the disputed domain name <legopiecesdepot.info> was created on December 26, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are identical or confusingly similar to the LEGO mark in which the Complainant has rights.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names. In particular, the Complainant submits that the Respondent was not granted any right to use the name “Lego”. The Complainant also contends that the Respondent could not claim any rights established by common usage, having no trademark or trade name corresponding to the disputed domain names.

The Complainant also submits that the Respondent registered the disputed domain names in bad faith, as the trademark LEGO is a worldwide famous trademark, which means that the Respondent knew, or should have known the existence of the Complainant’s rights.

In addition, the Complainant contends that the Respondent is not offering a bona fide offering of goods or services with the disputed domain names. The Respondent has intentionally chosen the disputed domain names based on a registered trademark in order to generate traffic to a commercial homepage. This use of the disputed domain names to attract Internet users to the Respondent’s websites in order to generate pay-per-click revenues evidences the Respondent’s registration and use of the disputed domain names in bad faith.

Finally, the Respondent did not respond to the cease and desist letter and reminders sent by the Complainant. Worse, the Respondent registered the disputed domain name <legodepothd.info> after reception of the cease and desist letter.

The fact that the Respondent did not even answer to the cease and desist letters sent by the Complainant requesting the transfer of the disputed domain names is another factor considered by the Complainant as evidence of the Respondent’s bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4 of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain names be transferred:

(i) the disputed domain names are identical or confusingly similar to a trademark to which it has rights; and

(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.

A. Identical or Confusingly Similar

The Complainant demonstrates that it has rights in many LEGO trademarks and domain names.

As to whether the disputed domain names are identical or confusingly similar to the Complainant’s trademarks, the relevant comparison to be made is with the second-level part of the disputed domain names, only “legodepothd”, “legodepothq” and“legopiecesdepot”, as it is well-established that the gTLD suffix (i.e., “.info”) should be disregarded for this purpose.

The disputed domain names comprise the LEGO trademarks, and only differ from the Complainant’s trademarks by the addition of the suffix “depothd”, “depothq” and“piecesdepot”.

The Panel finds that this does not eliminate the confusing similarity between the Complainant’s registered LEGO trademarks and the disputed domain names.

Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name.

The addition of the terms “depothd”, “depothq” and “piecesdepot” as a suffix to the Complainant’s trademark does not dismiss the likelihood of confusion to the Panel. It is stated in numerous previous UDRP decisions that confusing similarity may be established when well-known trademarks are paired up with generic terms as prefixes or suffixes.

Moreover, the use in the disputed domain names of the suffix words “depothd”, “depothq” and “piecesdepot” may create an association with the Complainant’s prior trademark LEGO as it may refer to official LEGO products. Indeed, the Complainant has a lot of products that contain different variations of depots. That could lead the consumer to believe that there is a link between the Respondent and the Complainant’s products.

Therefore, the Panel finds the disputed domain names are confusingly similar to the trademarks in which the Complainant has rights. As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.

B. Rights or Legitimate Interests

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 enumeration of the 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 in a domain name, the overall burden of establishing this requirement falls on the complainant. Nonetheless, in view of the difficulty inherent in proving a negative and because the relevant information is often in the possession of the respondent only, it will be sufficient for the 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 alleges that the Respondent has no registered trademarks or trade names corresponding to the disputed domain names and the Complainant had never given the Respondent any license or permission to use the trademark LEGO.

In the present case, the Panel considers that in the absence of any license or permission from the Complainant to use the Complainant’s well-known trademark, no actual or contemplated bona fide or legitimate use of the disputed domain names could reasonably be claimed by the Respondent.

In addition, there is no evidence presented to the Panel that the Respondent is using the disputed domain names in connection with a bona fide offering of goods or services at present. Indeed, the evidence provided by the Complainant shows that the disputed domain names are used to attract Internet users to the Respondent’s websites in order to generate pay-per-click advertising revenues.

Finally, the Respondent did not even answer to the Complainant’s letters trying to solve this matter amicably, or submit a Response to the Complaint to offer any explanations or providing any basis for a finding of rights or legitimate interests in the disputed domain names.

The Panel therefore finds that the Complainant has met the requirement of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant persuasively argues that the Respondent has registered and used the disputed domain names <legodepothd.info>, <legodepothq.info> and <legopiecesdepot.info> in bad faith.

The Panel is persuaded that the Respondent knew the Complainant’s trademarks, which are known worldwide, when the Respondent registered the disputed domain names, and registered the disputed domain names to capitalize on the Complainant’s rights.

The Panel therefore finds that the disputed domain names were registered in bad faith.

According to paragraph 4(b)(iv) of the Policy, bad faith is established if it is evidenced that the disputed domain name is used to intentionally attempt to attract, for commercial gain, Internet users to the registrant’s website 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 the registrant’s website or location or a product or service on the registrant’s website or location.

In the present case, the disputed domain names are used to generate traffic to websites with sponsored links to websites for toys and other products such as “www.forbarnen.se”, “www.avic.se”, “www.conrad.se”, “www.trader.com”, where toys manufactured by the Complainant’s competitors are offered for sale. This use of the disputed domain names is made to attract Internet users to the Respondent’s websites in order to generate pay-per-click advertising revenues. This use of confusingly similar domain names and the resulting confusion will inevitably give rise to diversion of Internet traffic from the Complainant’s site to the Respondent’s websites. The Panel infers that the Respondent takes advantage of the Complainant’s popularity by redirecting traffic from Internet users looking for the Complainant and benefits from this confusion and diversion by receiving “click-through” commissions.

Moreover, the Respondent could have attempted to present evidence or make an argument that its use of the disputed domain names was not in bad faith, but failed to do so. Worse, after receiving the first cease and desist letter, the Respondent registered the disputed domain name <legodepothd.info>. In the absence of any Response, the Panel draws an adverse inference on this point.

Accordingly, the Panel finds that the disputed domain names have been registered and used in bad faith and that the Complainant has met the requirement of paragraph 4(a)(iii) of the Policy.

7. Decision

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 <legodepothd.info>, <legodepothq.info> and <legopiecesdepot.info> be transferred to the Complainant.

Isabelle Leroux
Sole Panelist
Dated: August 17, 2012