WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. XMGlobal Inc.
Case No. D2010-1168
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is XMGlobal Inc of Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <legobuildings.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2010. On July 16, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On July 16, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details thereof. 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 July 20, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 9, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 11, 2010.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on August 17, 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.
The administrative proceedings were conducted in English for this was the language of the Registration Agreement for the disputed domain name.
4. Factual Background
The Complainant is a Denmark-based corporation that was founded in 1932, and has become the fifth largest toy manufacturer in the world and the largest in the niche of construction toys with revenues exceeding USD 1.8 billion during 2008, and a workforce of approximately 8,000 employees.
To identify and distinguish its flagship interlocking bricks in the global marketplace, the Complainant has coined and used since 1953 the LEGO trademark, which is registered in over 180 countries in international class 28, among several others, of the Nice Classification.
The Complainant maintains its corporate website under <lego.com> in addition to owning more than 1,000 domain names comprising the word LEGO.
For its part, the Respondent registered <legobuildings.com> on February 20, 2010. The disputed domain name directed to a website containing hyperlinks to the Complainant’s LEGO toys, even displaying an image of one of such goods and providing a description thereof.
On April 14, 2010, the Complainant served the Respondent with a Cease and Desist Letter demanding the voluntary surrender of the disputed domain name in exchange for the Complainant reimbursing the out-of-pocket expenses incurred by the Respondent in registering the domain name at issue.
Following an unanswered reminder of its demand for gratuitous transfer, the Complainant commenced the instant proceedings.
5. Parties’ Contentions
The Complainant’s submissions can be summarized as follows:
i. The trademark LEGO is ranked at number 8 on the list published by Superbrands UK of the world’s top 500 brands for 2009/10;
ii. The disputed domain name is confusingly similar to the Complainant’s famous trademark since the dominant part of <legobuildings.com> is the word LEGO, which in turn is identical to the Complainant’s registered mark;
iii. The addition of the suffix “buildings” does not detract from the overall impression of the disputed domain name, whose preponderant element is instantly recognizable as a world famous trademark;
iv. It is a long-established precedent that confusing similarity is warranted where well-known trademarks are paired up with different kinds of generic prefixes and suffixes;
v. The presence of the top-level domain “.com” does not have any impact on the overall impression of the dominant portion of the domain name and is therefore irrelevant in assessing confusing similarity vis-à-vis the Complainant’s trademark;
vi. The Respondent has been granted no license or permission to use the LEGO trademark, nor has it been found to hold any trademark registration or trade name corresponding to the disputed domain name;
vii. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services as the resolving website displays pictures and information of different LEGO products;
viii. As in many other recent cases involving registration in bad faith of LEGO domain names, the considerable value and goodwill of the mark LEGO is what most likely made the Respondent register the domain name at issue here;
ix. By providing links to the shopping site Amazon.com, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, while creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolves;
x. The disclaimer found at the bottom of the disputed domain name’s website cannot cure the Respondent’s bad faith as established by other factors such as taking unfair advantage of the famous LEGO brand and linking the domain name in question to a commercial site like Amazon.com;
xi. It is highly unlikely that the Respondent was not aware of the Complainant’s rights in its LEGO trademark at the time of registering the disputed domain name;
xii. In line with several precedents under the Policy, the Respondent’s failure to respond to the Complainant’s Cease and Desist Letter should weigh in favor of a finding of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed in its claim, Complainant must demonstrate that the following three conditions are met:
i. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
ii. The Respondent has no rights or legitimate interest in respect of the domain name; and
iii. The domain name has been registered and is being used in bad faith.
The Respondent’s default
Even though the Respondent’s default does not dispense the Complainant with the burden of establishing the three elements required by paragraph 4(a) of the Policy (see section 4.6 of the WIPO Overview of WIPO Panels Views on Selected UDRP Questions), the Panel may accept all reasonable and supported allegations and inferences made in the Complaint as true. See Charles Jourdan Holding AG v. AAIM, WIPO Case No.D2000-0403 (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the Complaint) and also Vertical Solutions Mgmt., Inc. v. webnet-marketing, Inc., NAF Claim No. 95095 (holding that the respondent’s default allows all reasonable inferences of fact in the allegations of the complainant to be deemed true).
A. Identical or Confusingly Similar
As noted by the overwhelming majority of UDRP panels, the question under paragraph 4(a) of the Policy is whether the disputed domain name is confusingly similar to the Complainant’s mark, not whether the website to which the subject domain name resolves will confuse Internet users. See The Vanguard Group, Inc. v. John Zuccarini, WIPO Case No. D2002-0834 (A complainant need not establish actual confusion because the test is objective, not subjective).
Accordingly, from a side-by-side comparison between <legobuildings> being the relevant portion of the disputed domain name, and LEGO, it becomes noticeable that the Complainant’s mark is wholly contained in the Respondent’s domain name.
The authority is legion under the Policy that a finding of confusing similarity is warranted where the disputed domain name embodies the Complainant’s mark altogether notwithstanding the presence of generic terms, and even more so where as here, the Complainant’s mark is well-known. See LEGO Juris A/S v. Mohamed Ouattara / Integral Assets Ltd, WIPO Case No. D2009-0564 (finding the domain name <legoeducation.info> to be confusingly similar as it included a well-known trademark like LEGO in its entirety) and V&S Vin&Sprit AB v. Coreswood Limited, WIPO Case No. D2006-0594 (finding that the domain name <absolut-escort.com> was confusingly similar to the famous mark ABSOLUT, which is made up of a word in Swedish language).
Furthermore, the inclusion of the common noun “buildings” does nothing to prevent confusion of the disputed domain name vis-à-vis the Complainant’s inherently distinctive mark. See LEGO Juris A/S v. Granite Real Estate, WIPO Case No. D2010-0819 (The addition of the term “buildingset” is not relevant and would not diminish the likelihood of confusion. Indeed, the fact that LEGO makes building sets adds to the confusion).
As a result, this Panel finds that the Complainant has satisfied the first threshold of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant warrants and represents that the Respondent holds no trademark registration or trade name corresponding to the disputed domain name, and also that the Respondent is not an authorized dealer of the Complainant’s products.
It is therefore submitted that in the absence of any license or permission from the Complainant to incorporate its LEGO trademark into the disputed domain name, no actual or contemplated bona fide or legitimate use of the disputed domain name could be claimed by the Respondent.
Given the worldwide notoriety of the brand LEGO in the toy industry, the Panel has no difficulty in accepting Complainant’s submission that the Respondent is precluded from claiming any rights established by common usage which are likely to give rise to legitimate interests in the disputed domain name, much less where the latter resolves to a competing website.
Indeed, the evidence on record suggests that the Respondent is not making a legitimate noncommercial or fair use of <legobuildings.com> without intent for commercial gain to misleadingly divert consumers, nor is it using the disputed domain name in connection with a bona fide offering of goods or services as the resolving website actually deflects Internet traffic intended for the Complainant to a website providing hyperlinks and information concerning the LEGO playthings marketed by the Complainant while encouraging the site visitors to purchase those very same toy products from Amazon, the United States largest online retailer.
Based on the foregoing considerations and in view of the Respondent’s default, the Panel concludes that none of the defenses set forth in 4(c) of the Policy is available to the Respondent.
Accordingly, the Complainant has demonstrated the second limb of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Complainant argues that at the time of registering the disputed domain name, the Respondent could not have been unaware of the LEGO trademark, which is well-known throughout the world, as acknowledged in a number of Policy-based decisions, as well as in the 2009 Superbrands Survey which ranks LEGO at number 8 among the world’s top 500 brands.
The Complainant further submits that the reference to Amazon.com in the disputed domain name’s website amounts to bad faith under paragraph 4(b)(iv) of the Policy, which result cannot be avoided by the Respondent’s merely disclaiming any affiliation of its website with the Complainant.
First of all, it is to be noted that “Lego” is a household name that has been the subject of unauthorized registration as domain name time and again. See LEGO Juris A/S v. Maho Jakotyc, WIPO Case No. D2010-0835 (“Lego” is a fanciful term, and not a generic or descriptive one, and therefore, only someone with knowledge of the mark – considering the fact that it is an invented term – could have registered the disputed domain name).
Consequently, and in keeping with a consistent line of authority, the misappropriation of a well-known trademark as domain name constitutes per se bad faith registration in light of the Policy. See Caravan Club v. Mrgsale, NAF Claim No. FA 95314 (registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to use the mark reveals bad faith).
Additionally, the evidence put forward by the Complainant shows that <legobuildings.com> once resolved to a website made up exclusively of hyperlinks and information revolving around the Complainant’s products, which makes this Panel infer that the Respondent has employed the domain name at issue to attract hits to its website by profiting from the goodwill of the famous LEGO mark.
With regard to the Respondent’s exhortation for its visitors to buy LEGO products at Amazon.com, the Panel concurs with the view expressed by other panels in the sense that whether or not the Respondent is actually deriving income from the webpage associated with the disputed domain name is irrelevant for the purposes of a finding of bad faith use as per paragraph 4(b)(iv) of the Policy. See Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912.
Finally, the fact that the Respondent seems to have pretended to shield itself from liability simply by representing that its website is not affiliated in any way with the Complainant, does not detract from the initial interest confusion suffered by Internet users who believed that the Respondent’s website belonged to or was somehow related to the Complainant or one of its authorized dealers. See Société pour l’œuvre et la mémoire d’Antoine de Saint Exupéry- Succession Saint Exupéry - D’Agay v. The Holding Company, WIPO Case No. D2005-0165 (an average Internet user is likely to assume that a website identified by the complainant’s mark is operated by or on behalf of the complainant, and will visit that site regardless of any disclaimer being included therein).
Under the above circumstances, the Panel is satisfied that the Complainant has discharged its burden as required by paragraph 4(a)(iii) of the Policy.
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 <legobuildings.com> be transferred to the Complainant.
Reynaldo Urtiaga Escobar
Dated: August 31, 2010