The Complainant is LEGO Juris A/S, of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Gill Affiliate, Jasvinder Singh Gill, of Singapore, Singapore.
The disputed domain name <legobrick.com> is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2009. On October 30, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On November 3, 2009, eNom 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 November 5, 2009 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 November 9 and 11, 2009. The Center verified that the Complaint together with the amendments 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 the Respondent of the Complaint, and the proceedings commenced on November 11, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 1, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 3, 2009.
The Center appointed Peter Burgstaller as the sole panelist in this matter on December 14, 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 is the owner of the trademark LEGO, registered all over the world. LEGO is one of the most well known trademarks worldwide (Annex 5, 8). “Bricks” are the core product of Complainant's business.
Respondent registered the domain name at issue. A cease and desist letter from the Complainant was not answered by Respondent (Annex 11).
The domain name at issue was connected to a website containing sponsored links (Annex 10).
In accordance with the Rules, para. 3(b)(viii) provided as Annex 5, are lists of the registered trademarks on which the Complaint is based. Complainant is based in Denmark (Annex 6) and is the owner of the trademark LEGO and all other trademarks used in connection with the famous LEGO brand of construction toys and other LEGO branded products.
The Complainant's licensees are authorized to exploit the Complainant's intellectual property rights, including its trademark rights, in the United States and elsewhere. Complainant and its licensees (collectively “the LEGO Group of Companies or the LEGO Group”), through their predecessors, commenced use of the LEGO mark in the U.S. during 1953, to identify construction toys made and sold by them. Their use of the LEGO mark has been extensive, exclusive and continuous since 1953. Over the years, the business of making and selling LEGO brand toys has grown remarkably. By way of example, the revenue for the LEGO Group in 2008, was more than $1,8 billion. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in the United States. The Complainant is also the owner of more than 1000 domain names containing the terms LEGO (Annex 7).
It is the strict policy of the Complainant that all domain names containing the word LEGO should be owned by the Complainant. The trademark LEGO is among the best-known trademarks in the U.S. and around the world, due in part to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials. In fact, U.S. media advertising expenditures by the LEGO Group during the past ten years exceed $50 million. Virtually all parents and children in the U.S., and likely throughout the world, are familiar with the LEGO name and mark, and with LEGO products and services thereby identified. Indeed, the LEGO trademark and brand have been recognized as being famous. For instance, attached hereto as Annex 8, is a list of the official top 500 Superbrands for 2009/10, provided by Superbrands UK, showing LEGO as number 8 of the most famous trademarks and brands in the world. The LEGO Group has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. The LEGO Group also maintains an extensive Web site under the domain name LEGO.COM (Annex 9.).
The mark LEGO is in possession of substantial inherent and acquired distinctiveness. The awareness of the trademark LEGO is considered in the whole Community to be significant. According to the provisions of Article 6bis of the Paris Convention for protection of Industrial Property (“PC”), confirmed and extended by Article 16.2 and Article 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”), the statute of a well known trademark provides the owner of such a trademark with the right to prevent any use of the well-known trademark or a confusingly similar denomination in connection with any products or services (i.e. regardless of the list of the products and services for which the trademark is registered). Thus, the protection for LEGO goes far beyond toys and goods similar to toys.
Identical or confusingly similar
The dominant part of the domain name <legobrick.com> comprises the word “Lego”, which is identical to the registered trademark LEGO, which has been registered by the Complainant as a trademark and domain names in numerous countries all over the world. (Annex 4 and 6). The Domain Name is confusingly similar to the Complainant's world famous trademark LEGO. The addition of the suffix “brick” is not relevant and will not have any impact on the overall impression of the dominant part of the name, LEGO, instantly recognizable as a world famous trademark. Anyone who sees the Domain Name is bound to mistake it for a name related to the Complainant. The suffix “brick”, being the core product of the Complainant's business, is rather fitted to strengthen the impression that the Domain Name is in some way connected 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 Name either as a domain name owned by the Complainant or that there is some kind of commercial relation with the Complainant. The trademark also risk being tarnished by being connected to web sites. By using the trademark as a dominant part of the Domain Name, the Respondent exploits the goodwill and the image of the trademark, which may result in dilution and other damage for the Complainant's trademark. Persons seeing the Domain Name at issue, even without being aware of the content, are likely to think that the Domain Name is in some way connected to the Complainant, (“initial interest confusion”).
The addition of the top-level domain (TLD) ‘.com' does not have any impact on the overall impression of the dominant portion of the Domain Names and is therefore irrelevant to determine the confusing similarity between the trademark and Domain Name.
The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the Domain Name. The Complainant has also not found anything that would suggest that the Respondent has been using LEGO in any other way that would give them any rights or legitimate interests in the name. Consequently the Respondent may not claim any rights established by common usage. It is also clear, that no license or authorization of any other kind, has been given by the Complainant to the Respondent, to use the trademark LEGO.
The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the domain name.
No evidence has been found that the Respondent uses the name as a company name or has any other legal right in the name LEGO. The Respondent is trying to sponge off the Complainant's world famous trademark.
Thus, Respondent has no rights or legitimate interest in respect of the disputed Domain Name.
The trademark LEGO in respect of toys belonging to the Complainant has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the whole Community and throughout the world. The awareness of the trademark LEGO is considered, in the whole Community in general, to be significant and substantial. The number of third party domain name registrations comprising the trademark LEGO in combination with other words has skyrocketed the last years (as an indication, please see e.g. cases Lego Juris A/S v. Hu Liang/Dolego, WIPO Case No. D2009-0848; LEGO Juris A/S v. Whois Privacy Protection Service, Inc./ Stop2Shop, G V, WIPO Case No. D2009-0784; LEGO Juris A/S v. Private, Registration / Dohe Dot, WIPO Case No. D2009-0753; LEGO Juris A/S v. EcomMutual, WIPO Case No. D2009-0685; LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680; LEGO Juris A/S v. Deng Yi Xia, WIPO Case No. D2009-0644; LEGO Juris A/S v. Mohamed Ouattara / Integral Assets Ltd., WIPO Case No. D2009-0564; Lego Juris A/S v. Gioacchino Zerbo, WIPO Case No. D2009-0500; LEGO Juris A/S v. Mike Morgan, WIPO Case No. D2009-0438; LEGO Juris A/S v. Bladimir Boyiko, WIPO Case No. D2009-0437; LEGO Juris A/S v. Domainproxyagent.com and Compsys Domain Solutions Private Limited, WIPO Case No. D2009-0381; LEGO Juris A/S v. Zhijun Guo, WIPO Case No. D2009-0184; LEGO Juris A/S v. P N S Enterprises, WIPO Case No. D2009-0170; LEGO Juris A/S v. David Palmer, WIPO Case No. D2008-1826; LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715; LEGO Juris A/S v. Level 5 Corp., WIPO Case No. D2008-1692). The considerable value and goodwill of the mark LEGO is most likely, a large contribution to this and also what made the Respondent register the Domain Name at issue here.
The Complainant first tried to contact the Respondent on September 24, 2009, through a cease and desist letter.
No reply so a reminder was sent on October 5, 2009 but still there was no reply. Since the efforts of trying to solve the matter amicably were unsuccessful, the Complainant chose to file a complaint according to the UDRP process.
The Domain Name is currently connected to a web site containing sponsored links, Annex 10. Consequently, the Respondent is using the Domain Name to intentionally attempt to 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 the websites. Whether or not the Respondent has influenced what links should be included on the sites is irrelevant for the finding of bad faith in this case. It is also without relevance whether or not the Respondent is actually getting revenue from the pages himself.
Since LEGO is a famous trademark worldwide it is highly unlikely that Respondent was not aware of the rights the Complainant has in the trademark and the value of said trademark, at the point of the registration. There is no connection between the Respondent and the Complainant. By using the Domain Name the Respondent is not making a legitimate non-commercial or fair use without intent for commercial gain but is misleadingly diverting consumers for his own commercial gain.
Consequently, the Respondent should be considered to have registered and to be using the Domain Name in bad faith.
The Respondent did not reply to the Complainant's contentions.
According to paragraph 4(a) of the Policy, Complainant must prove that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith
The Complainant has rights in the trademark LEGO for construction toys and other LEGO branded products through registration all over the world (e.g: US trademark registration No. 1018875 – LEGO, with the filing date of September 17, 1974; US trademark registration No. 2245652 – LEGO, with the filing date of November 21, 1997; CTM registration No. E39800 – LEGO, with the filing date of April 1, 1996; UK trademark registration No. E2829463 – LEGO and design, with the filing date of August 28, 2002; Chinese trademark registration No. 206919 – LEGO and design, with the filing date of April 15, 2004) but also through extensive, exclusive and continuous use for more than a half of century (since 1953).
The disputed domain name is confusingly similar with the Complainant's trademark as it includes in its entirety the Complainant's famous and distinctive trademark LEGO.
The use of the LEGO trademark with the suffix “brick” does not make the disputed domain name distinctive from the Complainant's trademark LEGO. In fact it is the Panels conviction that in using the suffix “brick”, being the core product of the Complainant's business, it rather strengthens the impression that the disputed domain name is in some way connected to the Complainant.
It has also long been held that suffixes such as the gTLD suffix “.com” cannot negate confusing similarity where it otherwise exists, as it does in the present case.
The Panel finds that the Complainant has therefore made out the first of the three elements that it must establish.
Under paragraph 4(a)(ii), the Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the disputed domain name.
But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.
If the Respondent proves any of these elements or anything else that shows it has a right or legitimate interest in the domain name at issue, the Complainant will have failed to discharge its onus and the Complaint will fail with respect to that domain name. However, in the present case Respondent failed to submit a Response.
It is well established that, as it is put in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions:
“…a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a) (ii) of the UDRP”.
Considering all of the evidence in the Complaint and the exhibits attached to it, the Panel finds that Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name at issue. The prima facie case is based especially on the facts that:
(i) the LEGO mark is one of the most well-known in the world;
(ii) it indicates one of the most famous manufacturers of construction toys, computer hardware and software, books, videos and computer controlled robotic construction sets in the world including in the United States where the Respondent is domiciled;
(iii) the Respondent chose the substance of this prominent trademark as part of the domain name at issue and added only the suffix “brick”, which is rather fitted to strengthen the impression that the disputed domain name is in some way connected to the Complainant as bricks are the core product of the Complainant's business;
(iv) the Respondent has not been authorized by the Complainant to use the LEGO mark or name in a domain name or anywhere else or to sell its products or products purporting to be the Complainant's products on the internet or in any other way.
Thus, the Panel considers that the Complainant has made out a prima facie case and the burden therefore shifts to the Respondent to rebut it.
For the purpose of paragraph 4(a)(iii) of the Policy, if the following circumstances, in particular but without limitation, are found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of the holder's documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from using the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the holder's website or location or of a product or service on the holder's web site or location.
As stated in many decisions adopted under the Policy (Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001) both conditions, registered and use in bad faith, are cumulative, consequently, Complainant must show that:
- the domain name was registered by the Respondent in bad faith and,
- the domain name is being used by the Respondent in bad faith.
The domain name at issue is composed by the Complainant's distinctive and famous trademark LEGO and the suffix “brick” which is the core product of the Complainant's business.
The Complainant has provided evidence of the reputation of the LEGO trademark due to its longstanding and widespread use and to the relevant amount of promotional investments made on the trademark LEGO (Annex 5, 8).
It is the Panel's conviction that LEGO is a famous trademark that enjoys a worldwide reputation and this assertion has been confirmed by previous UDRP decisions (LEGO Juris A/S v. World Internet Authority, WIPO Case No. D2009-1467; LEGO Juris A/S v. Whois Privacy Protection Service, Inc./ Stop2Shop, G V, WIPO Case No. D2009-0784; LEGO Juris A/S v. David Palmer, WIPO Case No. D2008-1826 and LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715).
Previous Panels held that in certain circumstances when a trademark is famous, the Respondent's bad faith could be inferred (AT&T Corp. v. LaPorte Holdings, Inc., WIPO Case No. D2004-1088: “Bad faith can be presumed based on the fame of Complainant's marks, such that the Respondent was aware or should have been aware of Complainant's well-known marks and claims of rights thereto”.
With regard to the LEGO trademark previous Panelists moreover have asserted that: “Given the world-wide fame of Lego, it seems clear that the Respondent was aware of the Complainant and at least the goodwill in the name Lego (and perhaps also the Lego trademark), when it registered the Domain Name” (LEGO Juris A/S v. Mohamed Ouattara / Integral Assets Ltd, WIPO Case No. D2009-0564).
These findings together with the Complainant's contentions and presented proofs lead this Panel to the conclusion that the disputed domain name has been registered in bad faith by Respondent.
In order to meet paragraph 4(a)(iii) of the Policy the Complainant has also prove that the domain name at issue is being used in bad faith.
The disputed domain name leads to a website with sponsored links from which revenue is presumably denied (Annex 10). However, the fact that Respondent has registered a domain name incorporating the substance of one of the world's most famous trademarks (especially Annex 8) without any authority or permission to do so shows that Respondent not only registered the domain name in bad faith. It is clear to this Panel that the disputed domain name is being used in a manner consistent with the circumstances described under paragraph 4(b)(iv) of the Policy. (See e.g. LEGO Juris A/S v. EcomMutual, WIPO Case No. D2009-0685 and LEGO Juris A/S v. Mohamed Ouattara / Integral Assets Ltd., WIPO Case No. D2009-0564).
The whole modus operandi of the Respondent in using the Complainant's famous trademark together with the suffix “brick” which is the core product of the Complainant's business and the non answering to the Complainant's cease and desist letter (Annex 11) makes it clear to this Panel that the domain name at issue has been registered and used in bad faith; thus, the condition set out by paragraph 4(a)(iii) of the Policy has been met by the Complainant.
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 name <legobrick.com> be transferred to the Complainant.
Dated: December 19, 2009