Westmore · UDRP DecisionLegolimitededition.biz
The Panel ordered transfer of <legolimitededition.biz>. It found the domain confusingly similar to the Complainant’s registered LEGO mark because it incorporated LEGO in full and added the descriptive terms “limited” and “edition.” The Respondent lacked rights or legitimate interests and used the domain for a website displaying LEGO products and linking to commercial marketplaces. The Panel found this was intended to exploit confusion and the LEGO mark’s goodwill for commercial gain under paragraph 4(b)(iv) of the Policy.
The timeline behind legolimitededition.biz
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 legolimitededition.biz — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The case illustrates how adding product-related descriptive terms to a distinctive mark may strengthen rather than diminish confusing similarity. It also shows how website content can connect the registration decision to commercial targeting: references to rare LEGO items, LEGO product images, and marketplace links supported both knowledge of the mark and an intent to obtain commercial gain through confusion.
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. Gary Prom, N/A Case No. D2015-0545 1. The Parties The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden. The Respondent is Gary Prom, N/A of Sycamore, Alabama, United States of America. 2. The Domain Name and Registrar The disputed domain name <legolimitededition.biz> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2015. On March 30, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 31, 2015, the Registrar 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 proceeding commenced on April 2, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 22, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 23, 2015. The Center appointed Zoltán Takács as the sole panelist in this matter on April 29, 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 this administrative proceeding is English, that being the language of the registration agreement. 4. Factual Background The Complainant, a privately held company based in Billund, Denmark, is the owner of the LEGO trademark, and all other trademarks used in connection with the famous LEGO brands. The Complainant began manufacturing interlocking toy brick in 1949 and has since developed substantially, expanding use of the LEGO trademark to among others computer hardware and software, books, videos and computer controlled robotic construction sets. The Complainant has subsidiaries and branches worldwide, and Lego products sell in more than 130 countries, including United States, home country of the Respondent. According to the press release dated February 17, 2015, of BrandFinance Plc (headquartered in London, United Kingdom of Great Britain and Northern Ireland), the world’s leading brand valuation consultancy “Lego Overtakes Ferrari as the World’s Most Powerful Brand”. In an article dated October 29, 2014 “The 13 Most Influential Toys of All Time” the prestigious TIME magazine has ranked LEGO to be number one; the most influential toy of all time. The Complainant owns numerous trademarks for LEGO around the world, including United States Trademark Registration No. 3440699, registered on June 3, 2008 for goods and services in classes 9, 35, 38 and 41 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks. The disputed domain name was registered on December 10, 2014. The disputed domain name pointed to a website referring to, advertising among others “extremely rare limited lego items”, and it contained links to other commercial websites offering variety of products of different brands, including those of the Complainant. The website connected to the disputed domain name displayed numerous pictures of the Complainant’s Lego branded products. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to its LEGO trademark in which it has exclusive rights worldwide through trademark registration and use. The dominant part of the disputed domain name reflects the LEGO trademark in its entirety, with the addition of descriptive terms “limited” and “edition” and as these terms are closely linked to the Complainant’s Lego branded products they increase the confusing similarity between the disputed domain name <legolimitededition.biz> and the Complainant’s LEGO trademark. The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii) and (iii) of the Policy. The Complainant alleges that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant claims that given its LEGO trademark’s well-known status, the Respondent must have been aware of the Complainant’s LEGO trademark when registering the disputed domain name. The Complainant also claims that the disputed domain name is connected to a website directing Internet users to other commercial websites such as “www.ebay.com” and “www.ebay.ca”, offering variety of products from wide range of different brands, including those of the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. It has been a consensus view in UDRP panel decisions that a respondent’s default does not automatically result in a decision in favor of the complainant. See paragraph 4.6 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions , Second Edition (“ WIPO Overview 2.0 ”). A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that; (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the registrant of the disputed domain name has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark. It has been a consensus view among the UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The Complainant produced sufficient evidence that it holds registered rights in the trademark LEGO, and for the purpose of this proceeding, the Panel establishes that the Complainant’s United States Trademark Registration No. 3440699 for the mark LEGO satisfies the requirement of having trademark rights for the purpose of the Policy. Having determined that the Complainant has trademark rights in the LEGO mark, the Panel next assessed whether the disputed domain name <legolimitededition.biz> is identical or confusingly similar to the LEGO mark of the Complainant. According to paragraph 1.2 of the WIPO Overview 2.0 , the threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, negative terms in the domain name typically being regarded as insufficient to prevent threshold Internet user confusion. In addition, the applicable top-level suffix in the domain name would also be usually disregarded under the confusing similarity test, as it is a technical requirement of registration. The only distinctive element of the disputed domain name <legolimitededition.biz>, other than, descriptive terms “limited”, “edition” and the “.biz” generic Top-Level Domain (gTLD) suffix, is the inherently distinctive LEGO trademark of the Complainant. The descriptive terms “limited” and “edition” in the disputed domain name closely relate, in fact describe some of the products of the Complainant, limited editions of its Lego branded toys, and in this Panel’s view this increases the confusing similarity between the disputed domain name <legolimitededition.biz> and the Complainant’s LEGO trademark. The Panel finds that the disputed domain name <legolimitededition.biz> is confusingly similar to the LEGO trademark of the Complainant and that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation: (i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; (ii) it has been commonly known by the domain name; (iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue. In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well-established rights in the trademark LEGO. The Complainant has never authorized the Respondent to use its LEGO trademark in any way, and the Complainant’s prior rights in the LEGO trademark long preceded the date of registration of the disputed domain name. It has been a consensus view among UDRP panels, that although the burden of proof rests with the complainant, this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. If a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production then shifts to the respondent. The Respondent defaulted and failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case. On the basis of all these facts and circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists a number of factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” The Complainant presented extensive and undisputed evidence which convince the Panel that the Respondent has registered and is using the disputed domain name in bad faith. In view of the Panel there can be no doubt that the Respondent knew about the well-known LEGO trademark of the Complainant when registering the disputed domain name. The Respondent chose to set up a website under the disputed domain name referring to, advertising “extremely rare limited edition lego items” and displaying numerous pictures of the Complainant’s Lego branded toys. The only plausible reason in this Panel’s view for the Respondent for doing so is that it selected the disputed domain name to exploit the goodwill and fame of the Complainant’s LEGO trademark for commercial gain without any authorization. In addition, the website under the disputed domain name provided links to other commercial websites such as “www.ebay.com” and “www.ebay.ca”, which offered goods of wide range of different brands, including those of the Complainant. By this means the Respondent’s obvious intent was to derive commercial advantage in form of referral fees, which constitutes bad faith. In view of the Panel these facts and circumstances are clear indication of bad faith registration and use under paragraph 4(b)(iv) of the Policy and the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied. 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 <legolimitededition.biz> be transferred to the Complainant. Zoltán Takács Sole Panelist Date: May 11, 2015
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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