WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Wyntergreen.ca
Case No. D2010-2101
1. The Parties
Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is Wyntergreen.ca of North York, Ontario, Canada.
2. The Domain Names and Registrar
The disputed domain names <legodeal.com> and <legoiland.com> are registered with MyDomain, Inc. d/b/a NamesDirect (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2010. On December 6, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 6, 2010, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on December 17, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 7, 2011.
The Center appointed Clark W. Lackert as the sole panelist in this matter on January 17, 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.
4. Factual Background
Complainant LEGO Juris A/S is a Danish company which is in the business of making and selling construction toys and other products which are branded under the terms LEGO and LEGOLAND. Complainant has provided details of multiple trademark registrations for LEGO and LEGOLAND which provide protection in many jurisdictions including Respondent’s country of Canada.
The domain name <legodeal.com> was registered on September 2, 2010. The domain name <legoiland.com> was registered on September 1, 2010. The Registrar for both disputed domain names is identified as MyDomain, Inc. d/b/a NamesDirect. The Registrar identified the owner of both disputed domain names as Wyntergreen.ca. Both domains resolve to holding pages featuring multiple links to third party websites.
Complainant sent a cease and desist letter regarding both disputed domain names to Respondent on October 4, 2010. Respondent did not reply to the cease and desist letter. Further communications were sent to Respondent on October 14, 2010 and October 20, 2010. Respondent did not reply to these further communications.
5. Parties’ Contentions
Complainant contends that the LEGO trademark is among the most well-known trademarks in the world. Complainant claims to have sold LEGO branded products in over 130 countries and claims to have sold products in Canada since as early as 1961. Complainant notes that revenue for Complainant’s LEGO group exceeded USD 2.8 billion in 2009 and claims to have expanded use of the LEGO trademark to include computer hardware and software, books, videos, and computer controlled robotic construction sets in addition to construction toys. Complainant claims ownership over 1000 domain names incorporating the term “lego” including <lego.com> which was registered on August 22, 1995 and <legoland.com> which was registered on August 4, 1998.
Complainant has cited previous UDRP decisions, namely 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, and LEGO Juris A/S v. Reginald Hastings Jr., WIPO Case No. D2009-0680, which acknowledge the reputation of the LEGO mark. In LEGO Juris A/S v. Level 5 Corp., supra and LEGO Juris A/S v. Michael Longo, supra, the panels found that the LEGO mark is distinctive, famous and well-known. In LEGO Juris A/S v. Reginald Hastings Jr., supra, the panel observed that “LEGO is a mark enjoying high reputation as construction toys popular with children”. Additionally, in LEGO Juris A/S v. Level 5 Corp., supra, the panel acknowledged that the LEGOLAND mark is distinctive, famous, and well known.
Complainant states that the public is likely to confuse the domain names <legodeal.com> and <legoiland.com> as domain names owned by or commercially related to Complainant due to the reputation of the famous LEGO and LEGOLAND trademarks. Complainant alleges that its LEGO and LEGOLAND trademarks are being used as dominant portions of the domain names <legodeal.com> and <legoiland.com> and alleges that this use exploits the goodwill and reputation of the marks, which may result in dilution or other damage. Complainant maintains that the other literal elements in the domain names (specifically “deal” and “i” respectively) do not detract from the domain names’ overall impression.
Complainant contends that Respondent has no legitimate interest in the domain names <legodeal.com> and <legoiland.com> because (1) no license or authorization has been given to Respondent to use the LEGO trademark, and (2) Respondent is not an authorized dealer for Complainant’s products and has never had a business relationship with Complainant.
Complainant also alleges that Respondent’s use of the disputed domain names to display sponsored links is cited by Complainant as reason why the domain names are not being used in connection with a bona fide offering of goods and services. This use is further cited by Complainant as evidence that Respondent is attempting to mislead Internet users and free ride Complainant’s trademarks, resulting in tarnishment of Complainant’s trademarks. Finally, Complainant cites Respondent’s unresponsiveness to its cease and desist letter and follow-up communications as basis for a finding of bad faith, and cites Respondent’s use of the domain names for monetized links as evidence that Respondent is using the domain names for commercial gain in further support of a finding of bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has established rights in the trademark LEGO which precede the registration of the <legodeal.com> and <legoiland.com> domain names owned by Respondent.
The disputed domain name <legodeal.com> is confusingly similar to the LEGO trademark in that Complainant adds only the generic term “deal” as a suffix. The addition of “deal” does not mitigate any possible confusion, rather contributes to the likelihood that consumers will believe that the website is related to Complainant. Prior cases have held that the incorporation of the term “deal(s)” into a domain name is non-distinctive and does not avoid confusing similarity. See, e.g., Red Bull GmbH v. Euinet Corporation, WIPO Case No. D2007-0771 (finding that the domain name <redbulldeals.com> is confusingly similar to the RED BULL trademark because “deals” “refers to a commercial activity” and “refers specifically to ‘redbull’, suggesting a commercial activity relating to ‘redbull’, thereby confirming the trademark function of the ‘redbull’ element of the disputed domain name”); and QVC Inc. and ER Marks Inc. v. Unique Boutique, LLC / Domains by Proxy, Inc., WIPO Case No. D2009-0135 (finding that the “deals” portion of the disputed domain name <qvcdeals.com> “may tend, if anything, to increase the likelihood of confusion, because the word indicates endorsement of the domain name by Complainant”, owner of the QVC mark).
The disputed domain name <legoiland.com> is confusingly similar to the LEGOLAND trademark in which the Complainant has rights. The incorporation of the single letter “i” between the terms “lego” and “land” does not sufficiently change the overall commercial impression of the domain name to mitigate confusion. The domain name <legoiland.com> is visually similar to Complainant’s LEGOLAND trademark; prior decisions have held that similar misspellings of domain names were confusingly similar to the trademarks at issue. See, e.g., Microsoft Corporation v. Charlie Brown, WIPO Case No. D2001-0362 (holding that the additional letter “o” in <microosoft.com> did not result in a domain name which was sufficiently different from Complainant’s MICROSOFT trademark).
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The domain names <legodeal.com> and <legoiland.com> were registered on September 2, 2010 and September 1, 2010 respectively, long after Complainant established trademark rights in LEGO and LEGOLAND. In the Panel’s view, Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names and there is no evidence in the record to indicate that Respondent has any rights or legitimate interests in the term LEGO or the term LEGOLAND.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The record indicates that Complainant has owned the LEGO trademark for decades and has registered the mark in multiple jurisdictions for Class 28 goods which include construction toys as well as other classes. Prior decisions have held that the LEGO mark is well-known, including LEGO Juris A/S v. Reginald Hastings Jr, supra (“The LEGO mark is well-known worldwide”), LEGO Juris A/S v. M. Moench, WIPO Case No. DNL2009-0052 (“Complainant has established that the LEGO trademark has acquired a high reputation and should be considered as well-recognized and world famous”), and LEGO Juris A/S v. Michael Longo, supra (“The Panel finds it established that the trademark LEGO is well-known”). Decisions have also recognized the fame of the LEGOLAND trademark, such as LEGO Juris A/S v. Level 5 Corp., supra (“The Panel finds that the Complainant has established that LEGO and LEGOLAND are well-recognized and world famous trademarks and that the trademarks are distinctive”) and LEGO Juris A/S v. Domainproxyagent.com and Compsys Domain Solutions Private Limited, WIPO Case No. D2009-0381 (finding for Complainant and ordering the transfer of <legolandusa.com>, noting that Respondent must have been well aware of the Complainant given the “nature of the LEGO and LEGOLAND marks as well-known, if not famous…”). It has been established that the registration of a domain name incorporating a well-known trademark may in appropriate circumstances constitute registration in bad faith, since it is unlikely that the registrant was unaware of the established rights in the mark at the time the domain name was registered. See, e.g., Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397 (finding bad faith since it was unlikely that the registrant of <nike-shoes.com> was unaware of Complainant’s well-known NIKE trademark when registering the domain name) and Dr. Ing. H.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488 (finding bad faith, noting that it was implausible that Respondent was unaware of Complainant’s PORSCHE trademark when registering <porsche-me.com>). Given the recognized notoriety of the LEGO and LEGOLAND trademarks, the Panel finds that it is implausible that Respondent was unaware of Complainant’s trademark rights when registering the disputed domain names <legodeal.com> and <legoiland.com>.
Respondent’s knowledge of Complainant’s business is clear upon review of the content of the <legodeal.com> and <legoiland.com> websites. Specifically, Respondent’s websites consist primarily of sponsored links, and a majority of these links either include Complainant’s LEGO trademark in their titles or direct users to third party websites selling toys. Websites displaying sponsored links have been regarded as illegitimate use of a domain name when there is evidence that the links displayed are efforts to trade off the goodwill of an established trademark. See, e.g., Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006 (Sponsored links displayed on a landing page are not legitimate where advertisements are directly related to the trademark value of the domain name); The Knot, Inc. v. In Knot we Trust LTD, WIPO Case No. D2006-0340 (similar opinion); Brink’s Network, Inc. v. Asproductions, WIPO Case No. D2007-0353 (similar opinion). In this case, Respondent is using Complainant’s trademarks in an effort to attract users to the disputed websites which feature sponsored links incorporating Complainant’s LEGO trademark. This use of Complainant’s trademarks is clearly an attempt to trade off the marks for commercial gain. Moreover, some of the links featured on Respondent’s websites direct users to third party websites selling toys, goods which are directly competitive with those provided by Complainant. The incorporation of third party links regarding goods or services competitive to those provided under another party’s trademark supports a finding of bad faith use and registration. Lancôme Parfums et Beaute & Compagnie v. D Nigam, Privacy Protection Services / Pluto Domains Services Private Limited, WIPO Case No. D2009-0728. By registering the domain names <legodeal.com> and <legoiland.com> and offering links to third party goods directly competitive with those of Complainant, Respondent is diverting traffic from Complainant’s “www.lego.com” and “www.legoland.com” websites.
Accordingly, the Panel finds that Complainant has satisfied the requirements of 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 names <legodeal.com> and <legoiland.com> be transferred to Complainant.
Clark W. Lackert
Dated: February 1, 2011