World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. An Bui

Case No. D2010-1169

1. The Parties

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

The Respondent is An Bui of New York, New York, United States of America.

2. The Domain Name and Registrar

The disputed domain name <legocitypolicestation.info> 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 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 8, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2010.

The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on August 12, 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 disputed domain name’s Registration Agreement.

4. Factual Background

The Complainant is a Denmark-based corporation that was founded in 1932, and has become the world’s fifth largest manufacturer of play materials and the largest in 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 at “www.lego.com” in addition to owning more than 1,000 domain names comprising the mark LEGO.

For its part, the Respondent registered the disputed domain name on March 4, 2010. The domain name resolved to a website displaying the actual box of the Complainant’s Lego City Police Station.

On April 23, 2010, the Complainant sent the Respondent 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.

After two unanswered reminders of its demand for transfer, the Complainant brought the instant proceedings.

5. Parties’ Contentions

A. Complainant

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 the domain name <legocitypolicestation.info> is the word LEGO, which in turn is identical to the Complainant’s registered mark;

iii. The addition of the suffix “citypolicestation” 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 kind of generic prefixes and suffixes;

v. As the Complainant has a product line named “LEGO City” which includes the Police Station assembly set, the “citypolicestation” suffix is rather fitted to strengthen the impression that the disputed domain name belongs to, or is affiliated with the Complainant;

vi. The presence of the top-level domain “.info” does not have any impact on the overall impression of the dominant portion of the disputed domain name, and therefore is irrelevant in assessing confusing similarity vis-à-vis the Complainant’s trademark;

vii. Pursuant to the Paris Convention and the TRIPS Agreement, the Complainant is entitled, as the owner of a famous mark, to prevent any use of the word “lego” in connection with goods or services other than those related to toys for which the trademark LEGO is well-known;

viii. 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;

ix. The Respondent has intentionally registered the Complainant’s famous trademark as a domain name in order to generate traffic and income through sponsored links, which neither constitutes a bona fide offering of goods or services, nor can it give rise to legitimate rights or interests under the Policy;

x- Because the disputed domain name is connected to a website with sponsored links, coupled with the fact that information and a photo of the Complainant’s LEGO City Police Station product are displayed on the same website, the bad faith use scenario described by paragraph 4(b)(iv) of the Policy comes into play.

B. Respondent

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, the Complainant must demonstrate that the following three conditions are met:

i. The disputed 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 disputed domain name; and

ii. The disputed 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 (“WIPO Overview”)), 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 oanel to draw adverse inferences from the respondent’s failure to reply to the complaint) and also Vertical Solutions Management, Inc. v. webnet-marketing, Inc., NAF Claim No. FA0006000095095 (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 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 the disputed domain name <legocitypolicestation.info> and the Complainant’s mark LEGO, it becomes noticeable that the Complainant’s mark is incorporated in the domain name in its entirety.

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 despite the addition of descriptive terms, and even more so where as here, the Complainant’s mark is widely 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 in full a widely known trademark like LEGO) 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).

In the instant case, the phrase “citypolicestation” does nothing to differentiate the disputed domain name from the Complainant’s highly distinctive and instantly recognizable mark.

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 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 the 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 the disputed domain name without intent for commercial gain to misleadingly divert consumers, nor is it using the domain name in connection with a bona fide offering of goods or services as the website at the domain name actually deflects Internet traffic intended for the Complainant’s website to the Respondent’s website displaying an image of the original box of the Complainant’s “Police Station” play set under a product line named LEGO City, and providing information on the said toy product.

According to the majority view of WIPO Overview, a reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if (1) the respondent is actually offering goods and services at issue, (2) the respondent is using the site to sell only the trademarked goods, and (3) the site is accurately disclosing the respondent’s relationship with the trademark owner. WIPO Overview, Paragraph 2.3 and see also Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The Panel finds that the Respondent here fails to satisfy the reseller standard. The website at the disputed domain name, inter alia, does not disclose its relationship with the Complainant for example by providing a disclaimer. Instead, there is a click-on link “About us”, through which site visitors can see the Respondent’s message that may further confuse site visitors regarding the Respondent’s relationship with the Complainant. The message is as follows:

“Welcome to Lego City Police Headquarters,

We provide information and reviews about the game Lego City Police Headquarters and how it would be a perfect gift for your kids. It is a fun game and kids will learn how to fight crime and protect the law being the police.”

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 widely known throughout the world, as acknowledged in a number of UDRP decisions, as well as in the 2009 Superbrands Survey which ranks the Complainant’s mark LEGO at number 8 among the world’s top 500 brands.

The Complainant further submits that the picture and information displayed on the website at the disputed domain name regarding its “LEGO City Police Station” product gives the impression that the website belongs to or was sanctioned by the Complainant, thus confusing the visitors as to the source of the website and the relationship between the Respondent and the Complainant.

First and foremost, the Panel notes that “Lego” is a fanciful term, and not a generic or descriptive one as found in LEGO Juris A/S v. Maho Jakotyc, WIPO Case No. D2010-0835, and as such, only someone with knowledge of the mark could have registered the disputed domain name, which in turn constitutes bad faith registration under the Policy. See Expedia Inc. v. Venta, Leonard Bogucki, WIPO Case No. D2001-1222 (noting that “Expedia” is an invented word, and therefore, it does not seem to be a term that others would legitimately choose using unless seeking to create the impression of being associated with the Complainant).

As for the Respondent’s use of the disputed domain name, it is uncontested that the accompanying website features the get-up and description of a complainant’s plaything whose name coincides with the disputed domain name. In the Panel’s opinion, the fact that the Complainant actually markets a “Police Station” under its “LEGO City” line of products clearly demonstrates that the Respondent registered the disputed domain name with the intention of profiting from the goodwill of the LEGO mark by generating traffic of Internet users who were mislead into believing that the resolving website was administered by the Complainant or one of its authorized distributors..

In addition, the Panel observes that the website at the disputed domain name has other click-on links named after the Complainant’s products such as “Lego City Fire Station”, “Lego City Construction”, “Lego City Hospital”, and “Lego City Plane” that divert the visitors to the “amazon.com” page selling the said products. As rightly pointed out by the Complainant, whether or not the Respondent is deriving revenue 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.

Under the above circumstances, the Panel is satisfied that the Complainant has met its burden as required by 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 <legocitypolicestation.info> be transferred to the Complainant.

Reynaldo Urtiaga Escobar
Sole Panelist
Dated: August 26, 2010

 

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