Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services AB, Sweden.
Respondent is Above.com Domain Privacy, Host Master / Transure Enterprise Ltd, Host Master of Beaumaris, Victoria, Australia, respectively Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
The disputed domain names <legocreation.com>, <legofreegames.com> and <legopickabrick.com> are registered with Above.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2009. On July 7, 2009, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain names. On July 9, 2009, Above.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on July 13, 2009. The Center verified that the Complaint, together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on July 14, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 3, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 4, 2009.
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on August 11, 2009. 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.
Complainant LEGO Juris A/S is the owner of the trademark LEGO, as used in connection with construction toys and other products. Complainant owns trademark registrations around the world, including in Australia and the United States of America, for the LEGO mark. Complainant also owns more than 450 domain names containing the term “lego”.
Complainant and its licensees commenced use of the LEGO mark in the United States of America in 1953. Sales of LEGO construction toys in the United States of America exceeded USD 1 billion over the past ten years. United States media advertising expenditures by Complainant and its licensees exceeded USD 50 million over the past ten years.
According to “The World's Greatest Brands,” published in 1996 by MacMillan Business, the LEGO mark is considered one of the most famous trademarks and brands in the world. Complainant notes that the LEGO mark is now used on computer hardware and software, books, videos and computer-controlled robotic construction sets. Referring to article 6bis of the Paris Convention and articles 16.2 and 16.3 of the TRIPS Agreement, Complainant alleges that protection for the LEGO mark goes far beyond toys and goods similar to toys.
The disputed domain names were registered in March 2009.
Complainant contends that the disputed domain names are confusingly similar to its LEGO mark. Complainant alleges that the addition of the various suffixes is not relevant and will not have any impact on the overall impression of the dominant part of the domain names, i.e., LEGO. Moreover, Complainant adds, the addition of the top-level domain “.com” does not have an impact on the overall impression of the dominant portion of the domain names and is therefore irrelevant in determining whether the disputed domain names are confusingly similar to Complainant's mark.
According to Complainant, “[a]nyone who sees the Domain Names is bound to mistake them for names related to the Complainant. The likelihood of confusion includes an obvious association with the trademark of the Complainant. With reference to the reputation of the trademark LEGO there is a considerable risk that the trade public will perceive the Respondent's Domain Names either as Domain Names owned by the Complainant or that there is some kind of commercial relation with the Complainant. The trademark also risk[s] being tarnished by being connected to a website. By using the trademark as a dominant part of the Domain Names, the Respondent exploits the goodwill and the image of the trademark, which may result in dilution and other damage for the Complainant's trademark.”
Complainant asserts that Respondent has no rights or legitimate interests with respect to the disputed domain names. Complainant maintains that it has not found anything to suggest that Respondent has been using the LEGO mark in any way that would give it any legitimate rights in the name. It is also clear, Complainant states, that no license or authorization of any kind has been given by Complainant to Respondent.
Complainant maintains that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. The disputed domain names, Complainant points out, are connected to websites containing sponsored links. Complainant further contends that Respondent is not making a legitimate non-commercial or fair use of the disputed names.
With respect to the issue of “bad faith” registration and use, Complainant notes that it sent a “cease and desist” letter to Respondent on May 15, 2009. A follow-up letter was sent on May 29, 2009. Respondent responded to the letter by stating that it wanted USD 250 per domain name to cover the cost of registration and administrative fees. Complainant advised that it was not willing to compensate Respondent a total of USD 750 since this sum would exceed the registration costs for the Domain Names. Respondent then advised that “it was not worth [his] time transferring them all for that much.”
Complainant asserts that Respondent is using the domain names to intentionally attract, for commercial gain, Internet users to the websites, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of such sites.
In further support of its claim of “bad faith” registration and use, Complainant asserts that, given the fame of the LEGO mark, “[t]here is no doubt that the Respondent was aware of the rights the Complainant has in the trademark LEGO and the value of said trademark, at the point of the registration.”
Respondent did not reply to Complainant's contentions.
The evidence indicates that Complainant has rights in the LEGO mark. The Panel concludes that each of the disputed domain names is confusingly similar to the LEGO mark. As noted by Complainant, each domain name incorporates in full the mark LEGO followed by a non-distinctive phrase (i.e., “creation”; “freegames”; or “pickabrick”) and the top-level domain “.com.” The inclusion of such non-distinctive phrases and of the top-level domain “.com” does not defeat a claim of confusing similarity.
The Panel concludes that Complainant has met its burden of establishing that Respondent has no rights or legitimate interests in any of the disputed domain names. Given the confusing similarity between the names and the LEGO mark, the Panel is of the opinion that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. Previous WIPO panels have found that the mere posting of pay-per-click links does not of itself suffice to establish a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy by the respondent. See e.g., Trade Me Limited v. Vertical Axis Inc, WIPO Case No. D2009-0093. There is also no evidence that Respondent is commonly known by any of the domain names or that the use of the domain names is noncommercial or fair.
The Panel finds that the disputed domain names were registered and are being used in bad faith. The evidence indicates that Respondent is using domain names confusingly similar to Complainant's LEGO mark to generate income through sponsored links. Under such circumstances, the Panel finds that, by using the disputed domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites or other online locations, by creating a likelihood of confusion with Complainant's mark as the source, sponsorship, affiliation, or endorsement of such websites, within the meaning of paragraph 4(b)(iv) of the Policy.
Further evidence of bad faith registration and use resides in Respondent's failure to respond to the Complaint and the apparent widespread use and recognized fame of Complainant's distinctive LEGO mark prior to registration and use of the disputed domain names.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <legocreation.com>, <legofreegames.com> and <legopickabrick.com> be transferred to Complainant.
Jeffrey M. Samuels
Dated: August 24, 2009