WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. John Paul

Case No. D2014-2093

1. The Parties

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

The Respondent is John Paul of Hemsworth, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), self-represented.

2. The Domain Name and Registrar

The disputed domain name <redlegoyellowlego.com> (the "Disputed Domain Name") is registered with Tucows, Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 28, 2014. On November 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 28, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing 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 proceeding commenced on December 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2014. The Response was filed with the Center on December 24, 2014.

The Center appointed Lynda M. Braun as the sole panelist in this matter on January 8, 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.

The language of the proceeding is English.

4. Factual Background

The Complainant is the owner of the trademark LEGO (the "LEGO Mark") dating back to 1955, and all other trademarks used in connection with the Complainant's famous brands of construction toys and other branded products. The Complainant's licensees are authorized to exploit the Complainant's intellectual property rights, including its trademark rights, in the United Kingdom where the Respondent resides and elsewhere. Over the years, the business of making and selling toys bearing the LEGO Mark has grown remarkably. The Complainant has subsidiaries and branches throughout the world and its products are sold in more than 130 countries, including in the United Kingdom.

The Complainant is also the owner of more than 2,400 domain names containing the term "lego". It is the Complainant's policy that all domain names that take an unfair commercial advantage of the LEGO Mark should be recovered by the Complainant.

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.

On October 16, 2014, the Complainant sent the Respondent via email a cease and desist letter, requesting a voluntary transfer of the Disputed Domain Name and offering compensation, not exceeding out-of-pocket expenses, for registration costs and transfer fees. After several exchanges, the Respondent refused and instead requested valuable consideration for the registration and goodwill of the Disputed Domain Name. The Respondent also demanded an agreement that would compensate the Respondent for certain ideas that he had attempted to submit to the Complainant. The Respondent claimed that he also owns another domain name, <redlegoyellowlego.co.uk>, which the Respondent would transfer with the Disputed Domain Name if the Complainant complied with his demands. Since the Complainant's efforts of trying to resolve the matter amicably were unsuccessful, the Complainant filed this UDRP Complaint.

The Respondent registered the Disputed Domain Name on September 3, 2014.

When the Complainant first became aware of the Disputed Domain Name, the Respondent's website consisted of a pay-per-click ("PPC") page of sponsored links, which the Complainant submitted as an annex to its Complaint. As of the writing of this decision, however, the page is no longer available online. Instead, the Disputed Domain Name resolves to a page which has a login box for user name and password.

5. Parties' Contentions

A. Complainant

The following are the Complainant's contentions:

- The Disputed Domain Name is confusingly similar to the Complainant's trademark.

- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

- The Disputed Domain Name was registered and is being used in bad faith.

- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.

B. Respondent

The following are the Respondent's contentions:

- The Respondent only purchased the Disputed Domain Name to present a creative idea to the Complainant.

- The Respondent only used the Disputed Domain Name to present his idea to the Complainant.

- The Respondent did not register and use the Disputed Domain Name in bad faith.

6. Discussion and Findings

In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i)-(iii)):

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) The Disputed Domain Name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.

It is uncontroverted that the Complainant has established rights in the LEGO Mark based on its registrations and longstanding use. The Disputed Domain Name <redlegoyellowlego.com> reproduces the LEGO Mark twice preceded by the descriptive words "red" and "yellow", and followed by the generic Top-Level Domain ("gTLD") ".com".

The Panel finds that the Disputed Domain Name <redlegoyellowlego.com> is confusingly similar to the Complainant's LEGO Mark. The words "red" and "yellow" in the Disputed Domain Name are descriptive and indicate that these colors are available for the items bearing the LEGO Mark. It is well established that the addition of descriptive or generic words to a mark does not avoid confusing similarity to a trademark. See Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191 (the panel found confusing similarity where the word "shop" was added to the trademark of the complainant in the disputed domain name); PRL USA Holdings, Inc. v. Unasi Management Inc., WIPO Case No. D2005-1027 (descriptive or generic additions do not avoid confusing similarity of domain names and trademarks); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality, WIPO Case No. D2005-1028 (same).

Moreover, the addition of a gTLD such as ".com" in a domain name is technically required. Thus, it is well established that such element may be generally disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.

Finally, the Disputed Domain Name entirely incorporates the Complainant's LEGO Mark twice. Thus, the Disputed Domain Name is confusingly similar to the Complainant's LEGO Mark because it contains the mark in its entirety (in this case, two times). A domain name is "nearly identical or confusingly similar to a complainant's mark when it fully incorporate[s] said mark." See PepsiCo. Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696.

Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Once a complainant has made a prima facie case of lack of rights or legitimate interests, the burden of production shifts to the respondent to establish rights or legitimate interests in respect of the domain name.

There is no evidence in the record that the Respondent is in any way associated with the Complainant, that the Respondent has any authority, license or permission to use the LEGO Mark, or that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. Rather, at one point the disputed domain name resolved to a PPC page, and the Respondent states that he is using the Disputed Domain Name for the sole purpose of submitting a creative idea to the Complainant. Although the Respondent has submitted a Response, he has not invoked any circumstance or provided any evidence that might demonstrate, pursuant to paragraph 4(c) of the Policy, that he holds rights or legitimate interests in the Disputed Domain Name.

Moreover, the website to which the Disputed Domain Name currently resolves consists of a webpage with a login box for one's user name and password. The Respondent has not explained whether the user name and password is for the Complainant's customers or how one can enter the website (if any). Regardless, in the circumstances, this use does not constitute a legitimate interest in respect of the Disputed Domain Name.

Finally, where a respondent has registered and used a domain name in bad faith (see the discussion below), that party cannot be found to have made a bona fide offering of goods or services.

Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 respondent's website or location or of a product or service on its website or location.

This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent's bad faith pursuant to paragraph 4(b) of the Policy.

First, based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith because the Respondent was attempting to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's LEGO Mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website. The Respondent's registration and use of the Disputed Domain Name indicate that such registration and use was done for the specific purpose of submitting a creative idea to the Complainant (presumably for some compensation). By so doing, the Respondent is trading on the name and reputation of the Complainant and its LEGO Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847 ("[t]he only plausible explanation for Respondent's actions appears to be an intentional effort to trade upon the fame of Complainant's name and mark for commercial gain" and "[t]hat purpose is a violation of the Policy, as well as U.S. Trademark Law").

Second, the Respondent's action of registering the Disputed Domain Name and using it to direct Internet traffic to his website evidences a clear intent to disrupt the Complainant's business, deceive customers and trade off the Complainant's goodwill by creating an unauthorized association between the Respondent and the Complainant's LEGO Mark. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552. This is particularly true since the Respondent informed the Complainant that he registered the Disputed Domain Name because he had an idea for the Complainant that he wanted to submit for consideration.

Third, the Respondent informed the Complainant that in exchange for the transfer of the Disputed Domain Name, the Respondent requested valuable consideration reflecting the goodwill of the Disputed Domain Name in addition to its out-of-pocket costs related to the maintenance of the Disputed Domain Name. Based on the foregoing, the Panel determines that the Respondent registered and is using the Disputed Domain Name in bad faith within the meaning of paragraph 4(b)(i) of the Policy.

Finally, by his own admission, the Respondent had knowledge of the Complainant and its LEGO Mark when he registered the Disputed Domain Name. In some circumstances, registration of a domain name with knowledge of the trademark owner's rights has been found to constitute bad faith under the Policy. See Yahoo! Inc. v. Yahoosexy.com, Yahoo-sexy.com, Yahoosexy.net, Yahousexy.com and Benjamin Benhamou, WIPO Case No. D2001-1188 ("Given the international renown of the YAHOO! trademark, the Panel finds that the Respondents must have known of the YAHOO! mark before they registered the domain names at stake"); Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant's trademark).

Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.

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 Name, <redlegoyellowlego.com>, be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: January 12, 2015