World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Domains by Proxy, Inc. / Lakezia Smith

Case No. D2010-1633

1. The Parties

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

The Respondents are Domains by Proxy, Inc. of Scottsdale, Arizona, United States of America and Lakezia Smith of New Orleans, Louisiana, United States of America.

2. The Domain Name and Registrar

The disputed domain name <legocityfirestation7208.com> is registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2010. On September 28, 2010, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name. On September 29, 2010, Wild West Domains, Inc. 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 September 30, 2010, 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 September 30, 2010. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 30, 2010.

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”).

Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise. According to information from the concerned Registrar, the language of the registration agreement for the disputed domain name is English and hence the language of the administrative proceeding is English.

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 October 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 21, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2010.

The Center appointed Linda Chang as the sole panelist in this matter on October 25, 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.

Due to special circumstances, the Panel has extended the decision due date until November 15, 2010.

4. Factual Background

The Complainant is a Danish corporation and has subsidiaries and branches throughout the world, and its renowned construction toy products LEGO are sold in more than 130 countries. The Complainant 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 Respondent registered disputed domain name <legocityfirestation7208.com> on June 10, 2010. The disputed domain name is used in connection with websites selling LEGO products as well as other toys.

5. Parties’ Contentions

A. Complainant

The Disputed Domain Name Is Confusingly Similar to the Complainant’s Trademark

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark in which the Complainant has rights.

The Complainant states that it owns several registrations for the LEGO trademark and domain names in numerous countries all over the world, including more than 1,000 domain names containing the term LEGO. Citing precedents: LEGO Juris A/S v. Level 5 Corp., WIPO Case No. D2008-1692, LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715, LEGO Juris A/S v. Reginald Hastings Jr., WIPO Case No. D2009-0680, the Complainant stated that LEGO is a well-recognized, famous and distinctive trademark.

The Complainant asserts that the disputed domain name <legocityfirestation7208.com> incorporates the Complainant’s registered LEGO trademark in full, deviating from the mark only with the addition of the suffix “cityfirestation7208”. The Complainant contends that where a domain name wholly incorporates a complainant’s registered trademark, it is sufficient to establish confusing similarity, despite the addition of other words to such marks, citing the precedent: Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488. The Complainant further alleges that the addition of the suffix “cityfirestation7208”, which is the same as the model of a LEGO product that is connected to fire stations, does not negate the similarity but strengthens the impression that the disputed domain name belongs to, or is affiliated with the Complainant, citing the precedent: Inter-Continental Hotels Corporation, Six Continents Hotels, Inc. v. Daniel Kirchhof, WIPO Case No. D2009-1667. The Complainant also alleges that the addition of the top-level domain (Tld) “COM” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to determine the confusing similarity between the trademark and disputed domain name.

The Respondent has No Rights or Legitimate Interests in the Disputed Domain Name

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name on the basis of the following reasons:

Firstly, the disputed domain name does not correspond to a trademark registered in the name of the Respondent. Secondly, the Complainant states that it has never licensed or otherwise permitted the Respondent to use its trademarks or to apply for domain names incorporating its trademarks. Therefore, there is no relationship whatsoever between the Complainant and the Respondent, citing precedent: Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055. Moreover, there is no disclaimer on the website describing the non-existent relationship with the Complainant, citing precedent: Dr. Ing. h.c. F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312. Thirdly, there is no evidence of any fair or noncommercial use of the disputed domain name, citing precedent: Drexel University v. David Brouda, WIPO Case No. D2001-0067.

Registered and Used in Bad Faith

The Complainant contends that the disputed domain name was registered and used in bad faith on the basis of the following reasons:

First, the Complainant states that it is world renowned for its construction toy products and that its trademarks are distinctive and well-known internationally, citing the substantial increase in the number of cases where third parties registered domain names comprising the LEGO trademark in combination with other words over the last few years: LEGO Juris A/S v. An Bui, WIPO Case No. D2010-1169, LEGO Juris A/S v. XMGlobal Inc., WIPO Case No. D2010-1168, LEGO Juris A/S v. J.h.Ryu, WIPO Case No. D2010-1156, LEGO Juris A/S v. Satisfaction Ink, WIPO Case No. D2010-1016, LEGO Juris A/S v. Chris Parent, WIPO Case No. D2010-1015, LEGO Juris A/S v. Ho Nim, WIPO Case No. D2010-0931, LEGO Juris A/S v. Maho Jakotyc, WIPO Case No. D2010-0930, LEGO Juris A/S v. Domains by Proxy, Inc./Goodsteed Limited, WIPO Case No. D2010-0917, LEGO Juris A/S v. Caroline Harker, WIPO Case No. D2010-0909, LEGO Juris A/S v. Above.com Domain Privacy / Domain Admin, Huanglitech, WIPO Case No. D2010-0908, LEGO Juris A/S v. Phoenix Productions, WIPO Case No. D2010-0798, LEGO Juris A/S v. Granite Real Estate, WIPO Case No. D2010-0819, LEGO Juris A/S v. Heihachi.net, Heihachi Ltd WHOIS-PROTECTION, WIPO Case No. D2010-0821, LEGO Juris A/S v. Maho Jakotyc, WIPO Case No. D2010-0835, LEGO Juris A/S v. Online Toy Superstore, WIPO Case No. D2010-0839, LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840, LEGO Juris A/S v. Dealwave, WIPO Case No. D2010-0881, LEGO Juris A/S v. Isidore Ventures, LLC/ WhoisGuard Protected, WIPO Case No. D2010-0660, LEGO Juris A/S v. Holly Cooper / WhoisGuard Protected, WIPO Case No. D2010-0545. Therefore, the Complainant contends that the Respondent knew or should have known of the existence of the Complainant’s LEGO trademark prior to registering the disputed domain name and this prior knowledge constitutes bad faith in registration.

Secondly, the Complainant pointed out the fact that the Respondent tried to sell the disputed domain name to the Complainant in its response to the cease-and-desist letter sent by the Complainant, and the failure of the Respondent to respond to the Complainant’s attempt to solve the matter amicably is also relevant in a finding of bad faith.

Thirdly, the Complainant asserts that the Respondent is using the website connected with the disputed domain name to sell LEGO products as well as containing links to other websites where it is possible to buy LEGO products and other links where competitive products of LEGO are offered for sale, which constitutes further evidence of the Respondent’s bad faith. The Complainant alleges that the Respondent has intentionally attempted to misleadingly divert present and potential Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademarks and official website.

B. Respondent

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

6. Discussion and Findings

There being no Response, under paragraphs 5(e) and 14(a) of the Rules, the Panel, in the absence of exceptional circumstances, decides the dispute on the basis of the Complaint.

Paragraph 4(a) of the Policy requires the Complainant to prove all of the following in order for its contentions to be supported in the proceeding:

(A) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(B) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(C) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is the registered owner of the trademark LEGO in many countries around the world. The Complainant has acquired substantial goodwill in this trademark.

Compared to the Complainant’s trademark, the disputed domain name completely reproduces the trademark with the only difference being an addition of a suffix “cityfirestation7208”. Pursuant to the principle established by numerous prior decisions, the Panel holds that the addition of a suffix does not negate the confusing similarity between the disputed name and the Complainant’s trademarks. The close similarity to the trademark of the Complainant LEGO and one of its product models strongly suggests that <legocityfirestation7208.com> is intentionally similar in appearance to the Complainant’s trademark, which will cause confusion among the present and potential consumers.

Therefore, the Panel finds that the disputed domain name is clearly, and intentionally, confusingly similar to the Complainant’s trademarks. Accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interest in the disputed domain name. There is nothing in the record to suggest the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services, to suggest that it has been commonly known by the disputed domain name, or to suggest that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. Therefore, the burden shifts to the Respondent to prove otherwise. However, the Respondent has not responded to the Complainant’s claims.

The Panel bases its decision on the information and evidence submitted before it, and given the circumstances, finds it more likely than not that the Respondent does not have any rights or legitimate interests in the disputed domain name.

The Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant has developed a reputation for the LEGO trademark in construction toys area since 1953, and the Complainant’s trademarked products are sold worldwide. Given the distinctiveness and reputation of the Complainant’s trademark, the Panel finds it unlikely that the Respondent, who sells sports footwear, would be unaware of the LEGO trademark but incidentally chose it as the main part of its domain name. Moreover, the Respondent’s choice of word for the Chinese translation of its website to reflect the LEGO trademark strongly suggests that the Respondent knew of the Complainant’s trademarks prior to registration. Given that the Respondent has not responded, it is reasonable to infer that the aim of the registration of the disputed domain name is to exploit consumer confusion for commercial gain.

In addition, the Respondent’s lack of rights or legitimate interests in the name LEGO as well as the fact that the disputed domain name has been used to sell products of the Complainant as well as a link to websites that sell products of the Complainant’s competitors, the Panel is convinced that the purpose of the Respondent’s registration of the disputed domain name is to capitalize on the goodwill of the trademarks by merely registering the trademark as a domain name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating this consumer confusion as to the source, sponsorship, affiliation or endorsement of its website. This behavior constitutes bad faith registration and use of the domain name.

The Panel finds that the Complainant has established that the Respondent has registered and used the disputed domain name in bad faith and has met the requirements of 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 <legocityfirestation7208.com> be transferred to the Complainant.

Linda Chang
Sole Panelist
Dated: November 15, 2010

 

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