World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. lego building co

Case No. D2010-2047

1. The Parties

The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Zacco Denmark A/S, Denmark.

The Respondent is lego building co of Puerto Rico, United States of America.

2. The Domain Name and Registrar

The disputed domain name <legopr.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2010. On November 25, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On November 26, 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. 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 November 30, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 20, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 21, 2010.

The Center appointed Marilena Comanescu as the sole panelist in this matter on January 5, 2011. 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 language of the proceeding is English.

4. Factual Background

The Complainant is LEGO Juris A/S a worldwide known toymaker. LEGO trademark is registered in over 190 countries all over the world and its well-known status is recognized in several books such as World’s Greatest Brands and Famous Brands, as well as in previous UDRP procedures involving the Complainant.

Advertising expenses made by the Complainant in the last 10 years exceed the amount of USD 50 million.

The Complainant also owns trademark registrations containing the word “lego” in the United States of America, such as:

- the trademark no. 1018875 with a filing date of September 17, 1974 in class 28;

- the trademark no. 1248936 with a filing date of June 14, 1982 in classes 16, 20, 22, 25; and

- the trademark no. 2065901 with a filing date of December 5, 1995 in class 41.

The Complainant also owns more than 450 domain names incorporating the mark LEGO.

The disputed domain name <legopr.com> was registered on August 9, 2006.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are given in the present case, as follows:

(i) The domain name <legopr.com> is identical or confusingly similar to its trademark LEGO:

The dominant part of the disputed domain name <legopr.com> is identical to Complainant’s mark LEGO; the addition of the two letters “pr” which constitute the country code for Puerto Rico may induce the idea that this is Complainant’s regional LEGO website.

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name:

Although that on the website corresponding to the disputed domain name it is presented a construction company named “Lego Building Co” located in Puerto Rico, from the Complainant’s searches, there is no real and effective business with this name.

The Complainant never granted the Respondent any authorization or license to use the trademark LEGO.

Given the fame of the trademark, it is highly unlikely that the Respondent was not aware of the Complainant’s rights in this mark, being rather obvious that the fame of the mark has motivated the Respondent to register the disputed domain name <legopr.com>. Related to this, the corresponding website shows a person carrying a LEGO brick in his arms.

(iii) The disputed domain name was registered and is being used in bad faith:

The Complainant’s trademark LEGO has the status of a well-known and reputed trademark with a substantial and widespread reputation through the world. Therefore, the considerable value and goodwill of the mark LEGO is most likely what made the Respondent register the disputed domain name with the intention to sell it to the Complainant at an overprize.

There is no connection between the Complainant and the Respondent.

From the information available in the relevant Registrar’s database and on the website corresponding to the disputed domain name, the registrant is a company named “Lego Building Co” located in Puerto Rico and involved in the field of construction of buildings. However, the Complainant’s search in the Hatillo in Puerto Rico’s business directory for companies containing the term “lego” shows no results. The above said and the fact that no response was received to the Complainant’s cease and desist letters sent to the Respondent prior to commencing the present procedures make Complainant asserts that there is no real and effective business by the name of “Lego Building Co.” in Puerto Rico.

By using the disputed domain name the Respondent is not making a legitimate non-commercial or fair use of the domain name but is misleadingly divert consumers.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the 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 accordance with paragraph 4(a) of the Policy, the Complainant must prove to the Panel that the following three circumstances are cumulatively met in order to obtain the transfer of the disputed domain name:

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

(ii) the respondent does not hold rights or legitimate interests in respect of the disputed domain name; and

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

Consequently, the Panel shall further analyze the eventual concurrence of the above-mentioned circumstances in the present case.

A. Identical or Confusingly Similar

There are two requirements that a complainant must establish under this element, namely: that it has rights in a trade or service mark, and that the disputed domain name is identical or confusingly similar to its mark.

The Complainant has rights in the LEGO trademark, holding registrations worldwide, including in the United States of America where the Respondent is apparently located.

The dominant part of the disputed domain name represents Complainant’s famous trademark LEGO. In addition to this, the disputed domain name contains the letters “pr” which may indeed be considered as geographical indicator for the area of “Puerto Rico”. Considering the brand awareness of the LEGO products worldwide, an Internet user would most probably assume a connection with Complainant when seeking information on a web site with the domain name <legopr.com>.

A wide variety of UDRP panels have ordered the transfer of domain names incorporating trademarks and geographical indications as the mere addition of a geographical indication does not sufficiently distinguish the disputed domain name from the Complainant’s product in the mind of the consumers. See Axel Springer Verlag AG v. Andy Fritsche, WIPO Case No. D2000-1335 and cases cited therein.

The “.com” generic Top Level Domain is irrelevant in the present analysis.

For all the above, the Panel finds that the disputed domain name <legopr.com> is confusingly similar to the Complainant’s LEGO trademark.

Accordingly, the Panel finds that the first element of the Policy is established, and the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainant has provided a prima facie case under this element of the Policy showing that it has had no relationship with the Respondent and has not granted the Respondent any right to register and use its trademark. Therefore, the burden of proof on this element shifts to the Respondent to demonstrate its rights or legitimate interests in the disputed domain name.

The name used by the Respondent to register the disputed domain name and to present itself on the website corresponding to the disputed domain name is “Lego Building Co.”. However, from the Complainant’s searches filed as Annex 7 to the Complaint, there is no registered company containing the term “lego” in Puerto Rico.

Further, the Respondent failed to submit any response in the present procedures and did not respond to the Complainant’s cease and desist letters, which were sent prior to commencing the present procedures.

All the above may support Complainant’s assertions that the name used by the Respondent is not real and that there is no real and effective business under the name of “Lego Building Co.” in Puerto Rico.

Further, there is no evidence before the Panel to suggest that the Respondent has made a bona fide use of the disputed domain name, or has been known by this domain name, or is making any legitimate noncommercial or fair use of the disputed domain name. The disputed domain name is connected to a website apparently offering services in the field of construction of buildings and the contact details provided seem fictive as no reaction was received from the Respondent and no company seems to be registered in Puerto Rico under this name.

For all these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

LEGO mark has been used in the United States since 1953 and was registered in 1974, whereas the disputed domain name was registered in August 2006. Complainant’s trademark LEGO is well-known worldwide in relation to construction toys.

The disputed domain name <legopr.com> contains Complainant’s trademark LEGO in its entirety as dominant part and the addition of the letters “pr”, likely deriving from the geographical indication for Puerto Rico, where the Respondent seems to be located. Further, the Respondent registered the disputed domain name using a name containing Complainant’s trademark LEGO, a company name which does not exist in the Puerto Rico’s business directory for companies.

For these, there is little doubt for the Panel in this case to infer that that the disputed domain name was initially registered with the Complainant’s trademark in mind.

On the webpage corresponding to the disputed domain name the Respondent is promoting construction services provided by the same company with apparently fictive name. Also, on the only page displayed, there is the image of a worker carrying what appears to be a LEGO brick.

Paragraph 4(b)(iv) of the Policy sets out non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including circumstances where, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

Given the awareness of the LEGO brand worldwide, indeed, an Internet user accessing the website corresponding to the disputed domain name <legopr.com>, which apparent holder is a company named “Lego Building Co.“ and on which webpage appears a man carrying a brick very similar to Complainant’s products may be confused and believe that it is a website held, controlled by the Complainant, or somehow affiliated or related to it.

Further, the Respondent has not contested any of the allegations made by the Complainant, and did not provide any evidence whatsoever of any legitimate noncommercial, or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the Complainant’s trademark and therefore reinforces this approach (see also Kabushiki Kaisha Toshiba v. Shan Computers, WIPO Case No. D2000-0325).

The Complainant also holds that it is likely that the Respondent has registered the disputed domain name in order to further sell it to the Complainant to an overprize. Without supporting evidence and based on the records in this file, the Panel cannot infer such allegations however there is sufficient that the Complainant demonstrates one of the circumstances seth forth in Paragraph 4(b) of the Policy in order to support this third element specified in paragraph 4(a) of the Policy.

For all these reasons, the Panel finds that the third element of the Policy is established, and accordingly that the disputed domain name was registered and is being used in bad faith, pursuant to the Policy, paragraph 4(a)(iii).

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 disputed domain name <legopr.com> be transferred to the Complainant.

Marilena Comanescu
Sole Panelist
Dated: January 18, 2011

 

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