The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Jamie Fettig, United States of America, self-represented.
The disputed domain name <legotinyhome.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2020. On April 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 6, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center received email communications from the Parties on April 6, 2020. The Center sent an email communication to the Complainant on April 8, 2020, 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 April 10, 2020.
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 April 14, 2020. In accordance with the Rules, paragraph 5, he due date for Response was May 4, 2020. No formal response was filed, but the Respondent sent email communications on April 6 and 16, 2020.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on May 13, 2020. 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 Complainant is the owner of the trademark LEGO in association with construction toys and a range of other consumer products and services. For many decades the Complainant has extensively advertised the LEGO trademark which is featured on all products, packaging, displays, advertising and promotional materials. The Complainant’s LEGO trademark has been recognized as a famous mark by several market research organizations such as, Superbrands United Kingdom, Reputation Institute, Top 10 Most Reputable Global Companies of 2020 and in 2014 Time magazine announced LEGO to be the Most Influential Toy of All Time. The LEGO Group has over the years expanded its use of the LEGO trademark to computer hardware and software, books, videos and computer robotic construction sets, and has extended its registered services to include activities ranging from educational to hospitality services.
The LEGO Group has many licensees who are authorized to use and promote the Complainant’s LEGO trademark. The Complainant has subsidiaries and branches throughout the world and LEGO branded products are currently sold in more than 130 countries, including the United States of America (“United States”).
The Complainant owns numerous trademark registrations for LEGO around the world, including:
United States registration no. 4,395,578 for LEGO registered on September 3, 2013;
United States registration no. 1,889,004 for LEGO registered on April 11, 1995;
United States registration no. 1,563,848 for LEGO registered on October 31, 2019;
United States registration no. 1,535,046 for LEGO registered on April 18, 1989;
United States registration no. 2,065,901 for LEGO registered on May 27, 1997;
United States registration no. 1,018,875 for LEGO registered on August 26, 1975;
United States registration no. 3,440,698 for LEGO registered on June 3, 2008;
United States registration no. 2,245,652 for LEGO registered on May 18, 1999;
United States registration no. 1,248,936 for LEGO registered on August 23, 1983; and
United States registration no. 2,189,528 for LEGO registered on September 15, 1998
The Complainant also owns over 500 domain names containing the term LEGO.
The disputed domain name <legotinyhome.com> was registered on November 27, 2019. At the time the Complaint was filed, the disputed domain name reverted to a website, which offers for sale kits for the construction of small timber houses.
The Complainant submits that the confusingly similar domain name <legotinyhome.com> contains as its first element the Complainant’s registered LEGO trademark. The Respondent resides in the United State, where the Complainant owns numerous trademark registrations. The addition of the generic and descriptive words “tiny” and “home” do not differentiate the disputed domain name in any material way. For many years consumers have used LEGO branded building bricks to construct toy buildings of many types including tiny homes or houses. The dominant portion of the disputed domain name is the Complainant’s LEGO trademark which previous WIPO panelists and market research entities have identified as famous. Accordingly, the Complainant contends that the disputed domain name is confusingly similar to the Complainant’s famous registered trademark.
The Respondent does not own any registered trademark or trade name which corresponds to the <legotinyhome.com> disputed domain name. The Respondent is not commonly known by the LEGO trademark or trade name. The Complainant has not authorized or licensed the Respondent to use the LEGO trademark. The Respondent is not using the disputed domain name in association with a bona fide offering of goods and or services under the Policy. The Respondent has registered and is using a confusingly similar domain name which features as its first and dominant element the Complainant’s famous LEGO trademark, which is calculated to attract Internet users to his website for monetary gain.
Due to the fame of the LEGO trademark the Complainant has been targeted by many third parties who have attempted to trade on the goodwill and reputation of its trademark. In 2019 alone the Complainant filed 52 UDRP complaints with WIPO to prevent third parties from holding or using domain names that incorporate the Complainant’s registered trademark. The Respondent registered the disputed domain name on November 27, 2019, which is many years after the Complainant registered its first trademark in the United States and internationally. The Respondent must have been aware of the Complainant’s rights in the LEGO trademark when he registered the <legotinyhome.com> disputed domain name.
The Complainant sent a cease and desist letter to the Respondent on January 6, 2020, and demanded the voluntary transfer of the disputed domain name. No response to that letter was received. On March 26, 2020, the Complainant discovered that the Respondent had started to actively use the disputed domain name and immediately sent a further demand letter. No reply to that letter was received. The Complainant commenced this complaint on April 3, 2020. It was only after the Respondent was notified by the Registrar that a complaint had been filed did he respond to the Complainant. In that correspondence the Respondent claimed that he was entitled to use the LEGO trademark under United States law because he was not using it in association with toys.
The Respondent has registered and is using the disputed domain name in bad faith. The Respondent registered a confusingly similar domain name for purposes of monetary gain and is using it to interfere with the Complainant’s business. The Respondent’s website does not contain any disclaimer advising he is not affiliated with the Complainant. The Respondent is clearly intending to trade on the goodwill and reputation of the Complainant is the LEGO trademark to attract Internet users to his website to generate income for its construction kits.
The Respondent did not reply to the Complainant’s contentions by way of a formal response. In two emails, Respondent insisted that under United States law he is entitled to use the LEGO word mark because he is not using the trademark in association with toys, but only to promote the sale of actual (albeit tiny) homes.
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed 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 disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
The Panel finds that the Complainant has extensive trademark rights in the LEGO trademark around the world by virtue of the numerous registrations listed in Annex 3 of the Complaint and in particular the United States registrations listed in paragraph 4 of this Decision. The Panel acknowledges that LEGO is a famous mark, and is well-known in the United States and internationally.
The Panel finds that the disputed domain name <legotinyhome.com> is confusingly similar to the Complainant’s trademark as the disputed domain name incorporates as its first and dominant element the Complainant’s distinctive LEGO trademark which is clearly recognizable. The addition of the words “tiny” and “home” and the Top-Level Domain (“TLD”) designation do not serve to prevent a finding of confusing similarity between the disputed domain name and the Complainant’s registered trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
Useful commentary relating to the burden of proof for rights or legitimate interests can be found at the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘“proving a negative”’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
Based on the evidence filed in this proceeding, the Panel finds that the Complainant has made out a prima facie case with respect to the Respondent’s lack of rights and or legitimate interests. The Complainant clearly owns extensive rights in the LEGO trademarks as noted in section 4 of this Decision. The Panel agrees with the panelists who have in previous decisions found that the LEGO trademark is in fact a famous mark with widespread recognition. The fact that the Complainant filed 52 UDRP complaints in 2019 alone, suggests that many unaffiliated third parties are attracted to the fame of the brand and that Complainant is actively attempting to protect its rights against those who seek to trade on its goodwill and reputation. On the evidence in this proceeding, that appears to be exactly what Respondent is doing.
In this matter, the Respondent has not contested the Complainant’s evidence. Instead, he has put forward arguments to the effect that he is not infringing Complainant’s trademarks because he is not using the disputed domain name in association with toys, which he characterizes as Complainant’s limited area for enforcement. In the Panel’s view, these arguments do not avail in this proceeding, due to the following factors:
(1) Respondent has not properly recognized the wide scope of protection available to a famous mark;
(2) Respondent has ignored the fact that Complainant’s registered wares and services extend far beyond toys;
(3) Respondent has failed to acknowledge the obvious nexus between construction kits (his products) and construction kits for models (core wares of Complainant);
(4) Respondent has failed to identify any plausible independent reason for his choice of the word LEGO, other than the attractive effect of employing a famous mark to develop trade and traffic to his website.
In the circumstances of this case, the disputed domain name does not constitute fair use as it effectively suggests sponsorship or affiliation by the Complainant. See WIPO Overview 3.0, section 2.5.1.
In light of Complainant’s submissions and evidence, the burden of production shifts to the Respondent to bring forward evidence of rights or legitimate interests. The Respondent has failed to provide a satisfactory response.
Accordingly, the Panel finds that the Complainant is deemed to have satisfied the requirements under paragraph 4(a)(ii) of the Policy.
For the reasons set out above, the Panel finds that the Respondent registered the disputed domain name to attract consumers to his website. The panel finds that the Respondent was clearly aware of the Complainant’s rights in the LEGO trademark when he registered the confusingly similar domain name. His arguments about non-infringement are ill-founded and self-serving. The registration and use of the disputed domain name was abusive under the Policy; it was nothing more than a deliberate attempt to take advantage of the goodwill and reputation of the Complainant’s LEGO trademark. The circumstances of this case justify a finding of registration and use in bad faith.
The Complainant has therefore satisfied the requirements under paragraph 4(a)(iii) of the Policy.
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 <legotinyhome.com> be transferred to the Complainant.
Christopher J. Pibus
Date: May 14, 2020
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