LEGO Juris A/S v. Mark E
Claim Number: FA1108001403833
Complainant is LEGO Juris A/S (“Complainant”), represented by Cecilia Borgenstam of Melbourne IT Digital Brand Services AB, Sweden. Respondent is Mark E (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <legotoy.us>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 18, 2011; the Forum received a hard copy of the Complaint on August 18, 2011.
On August 18, 2011, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <legotoy.us> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On August 31, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 20, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 22, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <legotoy.us> domain name is confusingly similar to Complainant’s LEGO mark.
2. Respondent does not have any rights or legitimate interests in the <legotoy.us> domain name.
3. Respondent registered and used the <legotoy.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, LEGO Juris A/S, uses its LEGO mark to identify its construction toys, as well as its hardware and software, books, videos, and computer controlled robotic construction sets. Complainant owns a trademark registration for the LEGO mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,018,875 registered August 26, 1975).
Respondent, Mark E, registered the <legotoy.us> domain name on April 15, 2011. The disputed domain name resolves to a commercial website selling LEGO products and containing links to Amazon.com where Complainant’s products are also offered.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant owns a trademark registration for the LEGO mark with the USPTO (Reg. No. 1,018,875 registered August 26, 1975). The Panel finds Complainant has established rights under Policy ¶ 4(a)(i) in the LEGO mark through its registration of the mark with the USPTO. See Expedia v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, complainant has met the requirements of [UDRP] ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant contends that Respondent’s <legotoy.us> domain name is confusingly similar to Complainant’s LEGO mark. The disputed domain name contains the LEGO mark combined only with the descriptive term “toy” and the country code top-level domain (ccTLD) “.us.” The Panel finds that the addition of a descriptive word such as “toy” has no effect on the confusingly similar analysis under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under UDRP ¶ 4(a)(i)); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”). The Panel also holds that the attached ccTLD “.us” does not prevent a finding of confusing similarity. See CDW Computer Centers, Inc. v. Joy Company, FA 114463 (Nat. Arb. Forum July 25, 2002) (finding that the addition of the ccTLD “.us” is inconsequential and does not defeat a claim of confusing similarity); see also Lockheed Martin Corp. v. Roberson, FA 323762 (Nat. Arb. Forum Oct. 19, 2004) (holding that the “.us” ccTLD does not differentiate the disputed domain name from Complainant’s mark). Therefore, the Panel concludes that Respondent’s <legotoy.us> domain name is confusingly similar to Complainant’s LEGO mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <legotoy.us> domain name. The burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(i) when the Complainant makes a prima facie case in support of its allegations. The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have any rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”); see also Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the [UDRP].”).
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <legotoy.us> domain name. Therefore, the Panel finds that Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant contends that Respondent has no license or authorization from Complainant to use the LEGO trademark. Complainant also argues that Respondent is not an authorized dealer of Complainant’s products and has never had a business relationship with Complainant. Complainant asserts that no evidence has been found that Respondent uses the disputed domain name as a company name or in any other legal way. The WHOIS information for the <legotoy.us> domain name identifies the registrant as “Mark E,” which suggests no affiliation with the disputed domain name. The Panel therefore finds that Respondent is not commonly known by the <legotoy.us> domain name and has thus not established rights and legitimate interests according to Policy ¶ 4(c)(iii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information, as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant alleges that Respondent uses the <legotoy.us> domain name to generate traffic to a website that sells LEGO products and contains links to Amazon.com where Complainant’s products are also offered, even though Respondent is not an authorized reseller. Panels have previously held in Polycom, Inc. v. Telcom & Data Inc, FA 1245498 (Nat. Arb. Forum Mar. 16, 2009), and Universal Protein Supplements Corp. v. Dalech, LLC, FA 1278030 (Nat. Arb. Forum Sept. 8, 2009), that a respondent’s attempt to profit by redirecting consumers to a commercial website selling a complainant’s goods is not consistent with UDRP ¶ 4(c)(i) or ¶ 4(c)(iii). The Panel here finds likewise and concludes that Respondent has not shown a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶¶ 4(c)(ii) and (iv).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant makes no arguments regarding Respondent’s use of the disputed domain name under Policy ¶ 4(b)(iii). Complainant does assert, however, that Respondent’s resolving website offers both LEGO products for sale and links to Amazon.com, which also offers LEGO products for sale. By selling Complainant’s products without authorization, Respondent’s commercial activities at the disputed domain name disrupt Complainant’s business and compete with Complainant, which the Panel finds shows bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under [UDRP] ¶ 4(b)(iii).”).
Complainant argues that Respondent’s <legotoy.us> domain name resolves to a commercial website offering both products for sale and sponsored links to Amazon.com. Complainant asserts that Respondent includes Complainant’s LEGO mark in the disputed domain name to attract Internet users and to create a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the resolving website. Complainant contends that as Respondent profits both through the sale of the goods listed at the website and through the pay-per-click link revenue, Respondent maintains the resolving website and misappropriates the disputed domain name for its own profit, which the Panel finds is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to [UDRP] ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <legotoy.us> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: October 5, 2011
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