World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Dealwave

Case No. D2010-0881

1. The Parties

The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Corporate Brand Services AB, Sweden.

The Respondent is Dealwave of Columbia, Maryland, United States of America.

2. The Domain Name and Registrar

The disputed domain name <lego-club.com> is registered with Fabulous.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2010. On June 1, 2010, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the disputed domain name. On June 2, 2010, Fabulous.com 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 proceedings commenced on June 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 27, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 29, 2010.

The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on July 22, 2010. 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.

4. Factual Background

The Complainant’s trademark LEGO is a trademark for construction toys and other LEGO branded products.

The LEGO mark has been used in relation to such goods for decades in many countries throughout the world. The Complainant alleges to be the owner of the trademark registrations for LEGO, and submits as evidence an internal listing of its trademark registrations worldwide. The Complainant’s licensees are authorized to exploit the Complainant’s trademark rights in the United States and elsewhere.

The Complainant explains it initiated the use of LEGO trademark in United States in 1953 and that its products, through its subsidiaries and branches throughout the world, are now sold in more than 130 countries, including the United States.

The Complainant provides a listing of over 1.000 domain names containing the word LEGO and for which the Complainant claims to be the owner.

According to “Superbrands UK”, LEGO in the years 2009-2010 was the world most renowned toy brand, and number 8 in the list of the 500 most renowned brands in the world.

The Complainant claims to be maintaining an extensive website under the domain name <lego.com>.

The Complainant claims benefit of Article 6bis of the Paris Convention for protection of Industrial Property, as confirmed and extended by Article 16.2 and Article 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights and argues the protection for the mark LEGO goes far beyond toys and goods similar to toys.

The disputed domain name <lego-club.com> was registered by the Respondent on November 23, 2004. The Domain Name resolves to a parking page with sponsored links.

5. Parties’ Contentions

A. Complainant

The Complainant contends the following.

A. The Domain Name is confusingly similar to the trademark owned by the Complainant

The Complainant contends that:

- the dominant part of the disputed domain name comprises the word LEGO, which is identical to the Complainant’s registered trademark, which is a well-known trademark in the sense of Article 16 bis of the Paris Convention for protection of Industrial Property and by ;

- the addition of a hyphen and the suffix “club” does not impact the overall impression of the dominant part of the name LEGO, instantly recognisable as the world famous trademark. The complainant’s finds support with WIPO Case No. D2004-0488 Dr. Ing. H.c. Porsche AG v. Rojeen Rayaneh;

- he has a fan club called “LEGO club” with its own homepage, which strengthen the impression that the disputed domain name belongs to or is affiliated with the Complainant;

- the addition of the top-level domain “com” does not have any impact on the overall impression of the dominant portion of the Domain Name, and it is therefore irrelevant to determine the confusing similarity between the trademark and the Domain Name.

B. The Respondent has no rights or legitimate interests in respect to the Domain Name.

The Respondent has no registered trademarks or trade names corresponding to the Domain Name.

The Complainant has never given to the Respondent any license or authorization to use LEGO trademark, nor is the Respondent an authorized dealer and has never had business relationship with the Complainant.

The mere registration of the Domain Name does not give the Respondent a right or a legitimate interest in respect of the Domain Name.

It is unlikely that the Respondent was not aware of the Complainant’s legal right on the LEGO brand at the time of the registration of the Domain Name. The Complainant finds support with WIPO Case No. D2001-1314 Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc.

The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services but it is instead using them to generate traffic to its website, which contains sponsored links. The Complainant finds support with WIPO Case No. D2001-0067 Drexel University v. David Brouda.

C. The domain name was registered and is being used in bad faith

The trademark LEGO designates the toys produced and sold by the Complainant and has the status of a well-known and reputed trademark, with a substantial and widespread reputation throughout the European Community and throughout the world. The number of third party domain name registrations comprising the trademark LEGO in combination with other words has skyrocketed the last years. The considerable value and goodwill of the mark LEGO is most likely, a reason for this and it is also what made the Respondent register the Domain Name.

The Complainant tried to settle the matter amicably, twice sending a cease and desist letter to the Respondent by postal mail and email, without receiving any answer. The Complainant finds support with WIPO Case No. D2000-1623 News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1598 Nike, Inc. v. Azumano Travel and WIPO Case No. D2000-1460 America Online, Inc. v. Antonio R. Diaz, according to which the failure of a respondent to respond to a cease and desist letter, or similar attempt at contact, has been considered relevant in a finding of bad faith.

The Domain Name is currently connected to a website containing sponsored links. Consequently the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet user to the website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website.

It is irrelevant whether or not the Respondent is actually getting revenue from the pages himself. The Complainant finds support with WIPO Case No. D2007-1912 Villeroy & Bosch AG v. Mario Pingerna.

(i) Respondent

The Respondent did not reply to the Complainant’s contentions.

(ii) Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint 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”.

In view of the Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that the Complainant proves each of the following three elements to obtain a Domain Name transfer or cancellation:

(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

(i) the Domain Name has been registered and is being used in bad faith.

In compliance with Paragraph 3 (b) (viii) and (xv) of the Rules, the Complaint must “Specify the trademark(s) or service mark(s) on which the complaint is based” and “Annex any documentary or other evidence, including […] any trademark or service mark registration upon which the complaint relies”.

The Complainant has also to “describe the grounds on which the Complaint is made” (Rules Par. 3 (b) ix).

Therefore the Complainant has to submit relevant evidence of his rights and of the alleged facts that support the grounds on which the Complaint is made.

In light of the UDRP’s mission to fight against cybersquatting by providing a fast and cost effective international procedure, it is in the interest of trademark owners to ensure the credibility and quality of this procedure.

The Panel should therefore be able to decide on the basis of the Complaint and of the proof submitted.

What is unique about the internet is to potentially reach any consumer globally. As such, it contributes to the creation of new wealth, but at the same time it engenders new costs, like the administrative costs incurred by trademark owners to fight against cybersquatting.

The balance between the efficacy and the quality of the UDRP procedure is an important question. This is a general key issue.

In the present case, the Complainant is the registered owner of a Community Trademark for the word mark LEGO, notably in connection with toys and toy related products.

The Complainant also provided a listing of its other trademark registrations as evidence of its rights in the mark LEGO. The Complaint did not include any copy of registration certificates or any print-out from an official on-line trademark registry. In the Panel’s opinion, internal listings do not constitute appropriate evidence of trademark rights.

As the Panel, in compliance with Paragraph 7 of the Rules, must be “impartial and independent”, it can not base its decision on previous UDRP decisions in which the Commission upheld the rights of the Complainant on the mark LEGO.

Although the Complainant chose English as the language of the proceeding, the trade registry of the Complainant provided under Annex 7 is submitted in Danish. However, the main data are identical to those included in the Complaint.

Regarding the grounds of the Complaint, the Complainant claims to be using its LEGO trademark in the United States and operating a LEGO fan club, but does not provide any clear evidence supporting these assertions. However these appear to be important points to the Panel – taking into consideration the country where the Respondent is established and the name of the Domain Name.

However, in accordance with Paragraph 10 (a) of the Rules, the Panel considers itself competent to independently obtain additional evidence from the Internet in order to clarify the issue. The Panel refers to previous decisions by other panels concerning LEGO, which have adopted the same view (LEGO Juris A/S v. Whois Privacy Protection Service, Inc. and Stop2shop, G V, WIPO Case No. D2009-0784 and LEGO Juris A/S v. Name Administrator, Hong Kong Domains, LLC, WIPO Case No. D2009-0924).

Such circumstances lead the Panel to proceed to verification of the Complainant’s trademark rights in the United States on the mark LEGO, two US LEGO trademarks being listed in the document submitted by the Complainant in the Complaint, as well as the existence of a fan club named “LEGO Club”.

(ii) Identical or Confusingly Similar

The Complainant is the registered owner of the two US LEGO trademarks listed by the Complainant and is operating a LEGO fan Club on the Internet which is available in many regions of the world.

The Panel verified that the Complainant is the owner of the domain name <legoclub.com> registered on December 7, 2002 and that this domain name gives access to the LEGO fan Club.

Consequently, it is established that the Complainant has prior trademark rights in the word LEGO with protection within the European Community and the United States.

The Domain Name consists of the mark LEGO, with the addition of a hyphen and of the word of the common language “club”.

The Domain Name therefore comprises the Complainant’s trademark in its entirety.

The presence of the common term “club” in the Domain Name is not sufficient to distinguish it from the Complainant’s mark. It is widely admitted that the addition of a generic or descriptive term to a mark will not alter the fact that the domain name at issue is confusingly similar to the mark in question (see e.g., Terex Corporation v. Texas International Property Associates – NA NA, WIPO Case No. D2008-0733; Billabong International Limited, GSM (Operations) Pty Ltd, GSM (Trademarks)Pty Ltd, GSM (Europe) Pty Ltd, GSM (NZ Operations) Ltd v. Mookie Lei, WIPO Case No. D2008-0101).

In addition the presence of the hyphen clearly separates the term LEGO from the term “club” and helps distinguishing said terms. Using a hyphen between the terms that compose a domain name enables to have the domain name and the website referenced on the search engines under each term and especially in this case, under the trademark. It means that the presence of the hyphen is not a matter of chance.

The generic tld “.com” cannot be taken into consideration when judging identity or confusing similarity (see e.g. Hay & Robertson International Licensing AG v. C.J. Lovik, WIPO Case No. D2002-0122).

The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. The condition of the paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

As set forth by Paragraph 4 I of the Policy, any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to you 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 (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 are making a legitimate non-commercial 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.

The Respondent did not submit a Response to the Panel in this proceeding and has not provided any evidence or circumstances required to establish that he has rights or legitimate interests in the Domain Name, according to Paragraph 4 (c) of the Policy.

There is no evidence that the Respondent makes non-commercial and fair use of the domain name in dispute without intention to divert consumers, as addressed under paragraph 4(c) of the Policy. On the opposite, the Respondent does not make a bona fide offering of goods and services, and the Domain Name resolves to a website comprising sponsored links.

Furthermore, there is no evidence that the Respondent has any connection of affiliation with the Complainant, and the latter asserts it has not consented to the Respondent’s use of the trademark in the Domain Name.

Accordingly, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

In view of the reputation of the mark LEGO, it must be assumed that the Respondent was aware that the Domain Name reproduced a protected trademark of the Complainant.

Even though the date of registration of the Domain Name is prior to the date indicated on the documents submitted by the Complainant in relation to the worldwide reputation of the LEGO brand, it can be assumed that this reputation had been acquired before.

However, the mere fact that LEGO products are generally known throughout the world and enjoy high reputation does not exempt the Complainant from explaining the source of the provided information.

The Panel finds that the Domain Name was registered intentionally to misdirect customers looking for the Complainant’s website relating to its LEGO club. This constitutes bad faith registration.

The Complainant’s evidence shows that the Domain Name resolves to a webpage comprising sponsored links, notably links named “Star wars lego”, “Spiele” (meaning Game in English), “play game” or even “lego city”, confirming the intention of the Respondent to create confusion.

The Respondent obviously used the Domain Name to intentionally attempt to divert Internet traffic to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. This constitutes bad faith registration and use of the Domain Name in application of paragraph 4(b)(iv) of the Policy (see notably WIPO Case No. D2007-1912 Villeroy & Bosch AG v. Mario Pingerna).

For the foregoing reasons, the Panel finds that the Complainant has also established the finding of bad faith registration and use within the meaning of paragraph 4(a)(iii) of the Policy.

7. Decision

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 <lego-club.com> be transferred to the Complainant.

Marie-Emmanuelle Haas
Sole Panelist
Dated: August 5, 2010

 

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