LEGO Juris A/S v. John Thompson
Claim Number: FA2305002042694
Complainant is LEGO Juris A/S (“Complainant”), represented by Joe Viviani of CSC Digital Brand Services AB, Sweden. Respondent is John Thompson (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <legobuilds.us>, registered with NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to Forum electronically on May 2, 2023; Forum received payment on May 2, 2023.
On May 3, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <legobuilds.us> domain name (the “Domain Name”) is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 May 5, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of May 25, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@legobuilds.us. Also on May 5, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no Response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On May 30, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Charles A. Kuechenmeister 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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
Complainant manufactures and distributes building block toys. It has rights in the LEGO mark based upon its registration of that mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <legobuilds.us> is confusingly similar to Complainant’s LEGO trademark because it incorporates the mark in its entirety, merely adding the generic or descriptive word “builds,” which increases the confusing similarity, and the country code top-level domain name (ccTLD) “.us.”
Respondent has no rights or legitimate interests in the Domain Name. It is not commonly known by the Domain Name. It is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead uses it to host a website that features hyperlinks to competing businesses and references to Complainant’s own brands as well. Complainant has not licensed or authorized Respondent to use Complainant’s LEGO mark.
Respondent registered and uses the Domain Name in bad faith. It had actual knowledge of Complainant’s rights in the LEGO mark when it registered the Domain Name. It registered the confusingly similar Domain Name while itself having no connection with Complainant’s products. It attempts for commercial gain to attract Internet users to its website by creating confusion with Complainant’s mark as to the source, sponsorship, endorsement or affiliation of its website. Respondent has engaged in a pattern of bad faith registrations of infringing domain names and failed to respond to Complainant’s cease-and-desist letter.
B. Respondent
Respondent did not submit a Response in this proceeding.
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."
Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and 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.
In view of Respondent's failure to submit a Response, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint as true unless the evidence is clearly contradictory. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”), WIPO Overview 3.0, at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
The LEGO mark was registered to Complainant with the USPTO (Reg. No. 1,018,875) on August 26, 1975 (TESS printout included in Complaint Exhibit A). Complainant’s registration of its mark with the USPTO establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i). Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”), Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Respondent’s <legobuilds.us> Domain Name is identical or confusingly similar to Complainant’s LEGO trademark. It fully incorporates the mark, merely adding the generic or descriptive word “builds”, which actually exacerbates the confusing similarity because it relates to the Complainant’s products, and the “.us”ccTLD. These changes do not distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”), Allied Bldg. Prods. Corp. v. Henkel, FA 827652 (Forum Dec. 11, 2006) (holding that “it is well established that the top-level domain, here “.us,” is insignificant with regard to UDRP analysis” when determining confusing similarity). The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Name.
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the LEGO mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following four nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) The respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name;
(ii) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(iii) The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iv) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant states that Respondent has no rights or legitimate interests in the Domain Name because (i) it is not commonly known by the Domain Name, (ii) it is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead uses it to host a website that features hyperlinks to competing businesses and references to Complainant’s own brands as well, and (iii) Complainant has not licensed or authorized Respondent to use Complainant’s LEGO mark. These allegations are addressed as follows:
Complainant did not address the Policy ¶ 4(c)(i) factor, concerning whether the Respondent is the owner or beneficiary of a trade or service mark that is identical to the Domain Name. Complainants in usTLD cases can search the data bases of one or more governmental trademark authorities and report negative results to establish a prima facie case as to Policy ¶ 4(c)(i). Complainant here offered no such evidence. Nevertheless, while Complainant should have offered evidence bearing specifically upon this element, the evidence that is available is sufficient to establish that Respondent is not the owner or beneficiary of a trade or service mark identical to the Domain Name. Complainant has registered its mark with the USPTO (TESS printouts included in Complaint Exhibit A). Further, its mark is well-known throughout Europe and the U.S. (Superbrands printouts and other Information about Complainant included in Complaint Exhibit H). In light of its USPTO registrations and its fame as a major toy manufacturer, it is extremely unlikely that the USPTO or any other governmental trademark authority would register a trademark identical to <legobuilds.us> or any other mark identical or similar to the Domain Name in the name of any person other than Complainant or one of its affiliates, or that Respondent could be the owner or beneficiary of a valid common law trade or service mark identical to the Domain Name. On this evidence, and in the absence of any evidence to the contrary, the Panel finds that Respondent is not the owner or beneficiary of a valid trade or service mark identical to the Domain Name.
The WHOIS printout submitted as Complaint Exhibit B and the WHOIS information furnished to the Forum by the registrar list “John Thompson” as the registrant of the Domain Name. This name bears no resemblance to the Domain Name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, and in cases where no response has been filed, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that Respondent has not been commonly known by the Domain Name for the purposes of Policy ¶ 4(c)(iii).
Complaint Exhibit C is a screenshot of the website resolving from the Domain Name. It consists entirely of a list of links such as “Toys,” “Knex Toys,” “Playmobil Toys,” “Building Toys” and the like. Respondent’s site is obviously commercial in nature, offering click-through links to other vendors. As discussed more fully below in the Policy ¶ 4(a)(iii) bad faith analysis, it may be that Respondent is not responsible for the content on the resolving website. If it is not, then there is no evidence that Respondent is making any active use of the Domain Name but instead is passively holding it. This is neither a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iv). Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ ’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”).[i]
If Respondent is responsible for the content on the site, Respondent is using the confusingly similar Domain Name to attract Internet traffic to its own commercial pay-per-click site, or is participating financially in a pay-per-click site initiated by another, and this is neither a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iv). Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”), Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).[ii]
Complaint Exhibit I is a copy of a cease-and-desist letter sent by Complainant’s representatives to Respondent. From this it is clear that Complainant has not authorized or otherwise permitted Respondent to use its LEGO mark. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
The evidence furnished by Complainant establishes the required prima facie case. On that evidence, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site 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 web site or location or of a product of service on the respondent‘s web site or location.
As discussed above in the rights and legitimate interests analysis, the website resolving from the Domain Name hosts a number of pay-per-click links related to the toy industry in which Complainant operates. To the extent Respondent initiated this arrangement and is sharing in the pay-per-click revenues, it is using the confusingly similar Domain Name to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website, as described in Policy ¶ 4(b)(iv). Pay-per-click sites are common on the Internet. Under the most common forms of business arrangements relating to these sites, when a visitor to the site clicks on one of the links which appear there, the site sponsor receives compensation from the various web site owners who are forwarded from the site. In most cases, the site sponsor receives compensation based upon the number of hits the downstream web site owners get from being linked to Respondent’s web site. AllianceBernstein LP v. Texas International Property Associates, Case No. D2008-1230 (WIPO, 2008) (the domain name resolved to a search directory site with links to third-party vendors and the panel inferred that the respondent received click-through-fees when site visitors clicked on those links), Brownells, Inc. v. Texas International Property Associates, Case No. D2007-1211 (WIPO, 2007), (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain).
It is not clear, however, that Respondent is responsible for the content of this website. Many registrars post links on parking pages associated with domain names whose owners have not developed a website of their own. In such cases the registrant of the domain name is often unaware of the links and does not share in the revenues from them. The pay-per-click site in this case appears to be a parking page set up by NameCheap, the registrar. Its name appears prominently at the top, and a disclaimer at the bottom reads as follows: The Sponsored Listings above are served automatically by a third party. Neither Parkingcrew [the parking company] nor the domain owner maintain any relationship with the advertisers.” Although the evidence in this case is not conclusive, it seems more likely that the Respondent had no active role in posting the content on the parking page resolving from the Domain Name. Policy ¶ 4(b)(iv) contemplates a specific intent on the part of the respondent to attempt for commercial gain to attract internet traffic to its website by causing confusion with the complainant’s mark. Without such specific intent, a respondent’s conduct does not fit within the circumstances articulated in that paragraph. Complainant has offered no evidence to show that this Respondent created or is even aware of the content appearing on the parking page, or that it somehow gains commercially from it. Indeed, the evidence indicates fairly persuasively that the Respondent, not maintaining “any relationship with the advertisers” in the words of the disclaimer, is not recognizing any such gain. Complainant has failed to prove that Respondent’s conduct fits within the circumstances described in Policy ¶ 4(b)(iv).
That said, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Name in June 2022 (WHOIS printout submitted as Complaint Exhibit B shows creation date). Complainant’s mark and products are and have for more than 50 years been well-known in Europe and the U.S. (Information about Complainant included in Complaint Exhibit H). The LEGO mark is a unique, coined term that has no meaning other than for its association with Complainant, yet Respondent copied it verbatim into the Domain Name, even adding a descriptive term that relates directly to Complainant’s product. There is no question that Respondent registered the Domain Name with actual knowledge of Complainant and its mark. This does not fit within any of the circumstances set forth in Policy ¶ 4(b) but that paragraph recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and registering a confusingly similar domain name with actual knowledge of a complainant’s rights in a mark is evidence of bad faith registration for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
As to whether Respondent’s passive holding of the Domain Name constitutes a continuing use in bad faith, which is also required by Policy ¶ 4(a), it is clear that Respondent is holding a domain name which blatantly infringes on a mark that is famous throughout Europe and the U.S. at a minimum, without itself having any legitimate connection with Complainant or its products.[iii] The LEGO mark is so distinctive that it is not possible to conceive of a plausible legitimate use of the <legobuilds.us> Domain Name that would not infringe on Complainant’s rights. Further, Respondent did not respond to the cease-and-desist demand sent to it by Complainant’s representatives (Copy of cease-and-desist demand and follow-up email to Respondent at the address listed for its representatives in the records of the registrar submitted as Complainant Exhibits I and J respectively).[iv] Also, Respondent obviously gave false contact information to the registrar, as shown by the notice of failed delivery of Complainant’s follow-up email included in Complaint Exhibit J. This evidence persuades the Panel that Respondent’s continuing passive holding of the Domain Name constitutes a continuing use in bad faith use within the meaning and for the purposes of Policy ¶ 4(a)(iii). Telstra Corporation v. Nuclear Marshmallows, Case No. 2000-0003 (WIPO February 2, 2000), Hoffman-LaRoche Inc. v. Alan Turkowski, Case No. D2006-1606 (WIPO February 28, 2007).
For the reasons first above set forth, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <legobuilds.us> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: June 1, 2023
[i] The case cited in this section was decided under the Uniform Dispute Resolution Policy (UDRP), which does not include usTLD Policy ¶ 4(c)(i). The usTLD Policy ¶¶ 4(c)(ii), (iii) and (iv) are identical to UDRP Policy ¶¶ 4(c)(i)(ii) and (iii).
[ii] The cases cited in this section were decided under the Uniform Dispute Resolution Policy (UDRP), which does not include usTLD Policy ¶ 4(c)(i). The usTLD Policy ¶¶ 4(c)(ii), (iii) and (iv) are identical to UDRP Policy ¶¶ 4(c)(i)(ii) and (iii).
[iii] Google LLC v. Noboru Maruyama / Personal, FA 2001001879162 (FORUM March 3, 2020) (“the registration and use of domain name that is confusingly similar to a trademark with which the respondent has no connection has frequently been held to be evidence of bad faith.”).
[iv] Garrison Keillor, Minnesota Public Radio, Inc. v. Paul Stanton, FA 0098422 (FORUM Aug. 28, 2001) (“Respondent’s failure to respond to Complainant's June 12, 2001, letter further demonstrates Respondent's lack of good faith intent in registration and use of the domain name”)
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