Westmore · UDRP DecisionLego-friends.com
The Panel ordered transfer of <lego-friends.com>. It found the domain confusingly similar because it wholly incorporated the famous LEGO mark and added only the term “friends.” The Complainant established an unrebutted prima facie case that the Respondent lacked rights or legitimate interests. Bad faith was established through the Respondent’s likely awareness of LEGO and LEGO Friends, use of the domain for a commercial link-farm parking page, links involving competing goods and services, and an offer to sell the domain for USD 925.
The timeline behind lego-friends.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind lego-friends.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The decision illustrates how a domain combining a famous mark with a term associated with the complainant can strengthen rather than weaken the inference of targeting. The result also rested on converging evidence: longstanding rights, the mark’s fame, an unrebutted prima facie case, commercial parking links, competitive content, and a specific sale offer.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. Gustavo Winchester / Whois Agent, YourJungle Privacy Protection Service Case No. D2014-2006 1. The Parties The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden. The Respondent is Gustavo Winchester of Belo Horizonte, MG (Minas Gerais), Brazil / Whois Agent, YourJungle Privacy Protection Service of Colorado Springs, Colombia, United States of America. 2. The Domain Name and Registrar The disputed domain name <lego-friends.com> is registered with GreenZoneDomains Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2014. On November 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 2, 2014, 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 sent an email communication to the Complainant on December 4, 2014, 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 amendment to the Complaint on December 4, 2014. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 28, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 30, 2014. The Center appointed Emre Kerim Yardimci as the sole panelist in this matter on January 6, 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. 4. Factual Background The Complainant LEGO Juris A/S is the owner of the trademark LEGO and other trademarks used since 1953 in connection with the LEGO brand toys which are sold in more than 130 countries including the United States. The United States trademark registration number is 3440699 for LEGO logo. The Complainant registered more than 2,400 domain names containing the term “lego”. The trademark LEGO is among the best-known and most famous trademarks in the world as shown by the evidence presented by the Complainant. The Respondent has registered the disputed domain name with the Registrar on July 6, 2014. The Complainant tried to contact the Respondent on August 22, 2014, through a cease and desist letter by email with requested a voluntary transfer of the disputed domain name. Despite two reminders sent on September 3, 2014, and October 28, 2014, the Respondent did not reply to the Complainant. 5. Parties’ Contentions A. Complainant The dominant part of the disputed domain name comprises the word “LEGO”, which is identical to the Complainant’s registered trademark LEGO. The disputed domain name also comprises the suffix “friends” separated with a hyphen and this suffix “friends” does not detract from the overall impression. On the contrary, the suffix is contributing to create a link to the Complainant. As a matter of fact the Complainant’s one of the most successful product line is called “LEGO Friends”. The fame of the LEGO trademark has been confirmed in numerous previous UDRP decisions. By using the disputed domain name, the Respondent exploits the goodwill and the image of the LEGO trademark, which may result in dilution and other damage for the Complainant’s trademarks. The Respondent does not own any registered trademark or trade names corresponding to the disputed domain name. The Complainant claims that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and instead the Respondent has intentionally chosen the disputed domain name in order to generate traffic and income through a website with sponsored links, leading to third-party websites that are not related to the Complainant. It is clear that the Respondent was aware of the rights the Complainant has in the trademark and the value of said trademark, at the point of the registration. The disputed domain name is currently connected to a website stating a commercial purpose through sponsored ads. The Respondent is using the disputed domain name to attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his website. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The disputed domain name <lego-friends.com> wholly incorporates the Complainant’s distinctive trademark and a descriptive term “friends”. The Panel is of the opinion that the Respondent’s addition of the term “friends” is insufficient to distinguish the disputed domain name from relevant LEGO trademarks in accordance with LEGO Juris A/S v. Domain Admin, PrivacyProtect.org / Andrey Zvezdin , WIPO Case No. D2012-1963 , concerning the domain name <legofriends.info> where the panel concluded that: “In this Panel’s opinion, the addition of the term “friends” in the disputed domain name is not relevant and leads the public to believe that the Complainant is the owner of the disputed domain name.” Additionally, in LEGO Juris A/S v. Matthew Griffith, Merlix LLC, Domain Administrator , WIPO Case No. D2012-0443 , involving the domain name <legobuilder.com>, the panel found that the term “builder” should be disregarded for the purpose of this analysis. For the reasons mentioned above, the Panel finds that the disputed domain name <lego-friends.com> is confusingly similar to the Complainant’s famous LEGO trademark. The Complainant has thus fulfilled paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant has alleged that the Respondent has not indicated any sort of legitimate reason for having registered the disputed domain name and has not provided any plausible bona fide reason for having it registered. The Complainant has made a prima facie case in support of its allegations and, therefore, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating that it does have rights or legitimate interests in the disputed domain name, according to paragraph 4(a)(ii) of the Policy. The Respondent did not reply to the Complainant’s contentions and, therefore, did not submit any evidence of rights or legitimate interests over the disputed domain name in accordance with paragraph 4(c) of the Policy. Moreover, it appears from the content of the “www.lego-friends.com” that the Respondent is not making a legitimate noncommercial or fair use; on the contrary, it appears that he is diverting consumers in a misleading way for his own commercial gain and tarnishing the Complainant’s trademark at issue. The Complainant, having made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which remains unrebutted, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Complainant’s trademark LEGO is a well-known mark throughout the world and achieved to well-known trademark status prior to the registration by the Respondent of the disputed domain name. The Panel is of the view that at the time the Respondent registered the disputed domain name, the Respondent is more than likely to have been well aware of the LEGO trademarks and more specifically of the official “LEGO Friends” website. The Respondent has used the disputed domain name to direct Internet users to a link farm parking page directing Internet users to a website offering goods and services directly and indirectly competitive with those of the Complainant. The Respondent is also offering it for sale by mentioning on the top right of the website at “www.lego-friends.com” the indication “Buy this Domain”. This link redirects, at the time of the decision, to the website “www.sedo.com” with a proposition to sell the disputed domain name for an amount of USD 925,-. The above-mentioned use of the Complainant’s well-known trademark in the disputed domain name for an intentional attempt to attract for commercial gain Internet users by creating a likelihood of confusion through suggesting source, sponsorship, affiliation or endorsement by the Complainant of the Respondent’s website, amounts to evidence of bad faith registration and use. Therefore, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. The Complainant has established the requirements 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 name <lego-friends.com> be transferred to the Complainant. Emre Kerim Yardimci Sole Panelist Date: January 23, 2015
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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