WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Dani Ben Moshe
Case No. D2010-2127
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Dani Ben Moshe of Nesher, Tsafon, Israel.
2. The Domain Name and Registrar
The disputed domain name <spongeboblego.net> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2010. On December 9, 2010, the Center transmitted by email to GoDaddy.com, Inc a request for registrar verification in connection with the disputed domain name. On December 10, 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 December 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2011.
The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on January 19, 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
LEGO Juris A/S, based in Denmark is the owner of LEGO, and all other trademarks used in connection with the famous LEGO brands of construction toys and other LEGO branded products
The Complainant and its licensees (collectively “the LEGO Group of Companies or the LEGO Group”), through their predecessors, commenced use of the LEGO mark in the United States during 1953, to identify construction toys made and sold by them. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries. The Complainant is also the owner of more than 1000 domain names containing the term LEGO (annex 8).
The trademark LEGO is among the best-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials.
The LEGO Group has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. The LEGO Group also maintains an extensive web site under the domain name <lego.com>.
The Respondent registered the Domain Name on September 12, 2010.
The Respondent did not provide a Response
5. Parties’ Contentions
The Complainant states that the dominant part of the domain name <spongeboblego.net> comprises the word LEGO, which is identical to the registered trademark LEGO, which has been registered by the Complainant as a trademark and domain name in numerous countries all over the world. The addition of the prefix “spongebob” is not relevant and will not have any impact on the overall impression of the dominant part of the name, LEGO, instantly recognizable as a world famous trademark
The Complaint claims that anyone who sees the Domain Name is bound to mistake it for a name related to the Complainant. The likelihood of confusion includes an obvious association with the trademark of the Complainant. With reference to the reputation of the trademark LEGO there is a considerable risk that the trade public will perceive the Respondent’s Domain Name either as a domain name owned by the Complainant or that there is some kind of commercial relation with the Complainant.
The Complainant states that it has not found that the Respondent has any registered trademarks or trade names corresponding to the Domain Name. The Complainant has also not found anything that would suggest that the Respondent has been using LEGO in any other way that would give them any legitimate rights in the name. Consequently the Respondent may not claim any rights established by common usage.
The Complainant asserts that no license or authorization of any other kind, has been given by the Complainant to the Respondent, to use the trademark LEGO. The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.
Consequently the Complainant claims that Respondent has no rights or legitimate interest in respect of the Domain Name.
The Complainant claims that on October 14, 2010 he sent a cease and desist letter, by e-mail, in which the Respondent were informed that the unauthorized use of the LEGO trademark within the Domain Name violated the Complainant’s rights in said trademark. No reply was received so a reminder was sent on October 26, 2010 also going without response.
The Domain Name is currently connected to a web site displaying sponsored links and links to Amazon.com where LEGO products are being sold (Annex 11). Consequently, the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.
The Complainant finally states that LEGO is a famous trademark worldwide. There is no doubt that the
Respondent was aware of the rights the Complainant has in the trademark and the value of said trademark, at the point of the registration. There is no connection between the Respondent and the Complainant. By using the Domain Name the Respondent is not making a legitimate non-commercial or fair use without intent for commercial gain but is misleadingly diverting consumers. Consequently, by referring to the above-mentioned, the Respondent should be considered to have registered and to be using the Domain Name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, the Complainant must prove that each of the three elements is present:
(i) the domain name registered by the Respondent 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 interests in respect of the domain names in question; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
This first element requires that the Complainant demonstrate that (1) it has trademark rights and (2) the disputed domain name is identical or similar to a trademark in which the Complainant has rights.
1. The Panel finds that the Complainant has established that it is the owner of the registered trademark LEGO based on the evidence provided by the Complainant (annex 6).
2. The disputed domain name consists of two different well known trademarks, the first consisting of the trademark SPONGEBOB property of Viacom International Inc. and the second consisting of the Complainants registered trademark LEGO. The Panel considers that even with the incorporation of another famous trademark the addition of such term is not sufficient to avoid confusion.
The Panel is aware that a third company's famous mark, SPONGEBOB, also is contained in the disputed domain name and that Viacom International Inc is not a party to this proceeding. However, the Panel finds the Complainant nonetheless satisfies the requirements of the Policy. In this case, the Panel finds the domain name <spongeboblego.net > is confusingly similar to the Complainant's LEGO mark.
B. Rights or Legitimate Interests
The second element requires the Complainant to prove that Respondent has no rights or legitimate interests in respect of the domain name in question.
By the terms used in paragraph 4(a) of the Policy it is clear that the overall burden of proof is on the Complainant, however the Policy provides the Respondent means to demonstrate its rights to and legitimate interests in the domain name in responding to a Complaint. If the Respondent does not make use of these means and the Complainant has established a prima facie case under sub paragraph 4(a)(ii), the burden is shifted to the Respondent to prove the contrary.
The Complainant has stated that the disputed domain name website features the Complainants trademark,
that the domain name is currently connected to a web site displaying sponsored links and links to <amazon.com> where LEGO products are being sold (Annex 11). The Complainant asserts that the Respondent has never been commonly known by the domain name. The Complainant finally claims that the Respondent has no legitimate interest in the domain name. There is no connection between the Respondent and the Complainant.
Furthermore, the Complainant asserts that no license or authorization of any kind has been given to the Respondent to use the trademark LEGO. The Respondent is not an authorized dealer of Complainant’s products and has never had a business relationship with the Complainant.
The Respondent has not provided a response to the allegations set forth by the Complainant, though given the opportunity.
There is no evidence in the case file demonstrating that the Respondent might have rights or legitimate interest in the domain name.
In the absence of a Response this Administrative Panel is satisfied that the Complainant has satisfied the second element, Paragraph 4(a) of the Policy and has established a prima facie case that the Respondent has no rights or legitimate interest in said domain name.
C. Registered and Used in Bad Faith
This third element requires that the Complainant demonstrate that (1) the domain name has been registered in bad faith and (2) is being used in bad faith.
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
The disputed domain name is composed of two words, “spongebob” and “lego”. The first is a registered trademark owned by a third party and the second the registered trademark owned by the Complainant. In this respect it is important to mention the fact that Lego manufactures and sells a line of SPONGEBOB LEGO pieces (annex 13).
Since the domain name clearly refers to a world famous cartoon that Lego has been merchandising one can reasonably conclude that the Respondent had perfect knowledge of the existence of the LEGO trademark and the fact that Lego was merchandising the Spongebob cartoon. Whatever the intention of the Respondent in creating this website, he undoubtedly had knowledge that he was incorporating, to his domain name, without authorization, a third parties trademark, demonstrating bad faith registration.
Notwithstanding the above, if the Respondent did not have knowledge of such registered trademarks, though one can reasonably infer the contrary, it was known to him since the day the Complainants counsel contacted the Respondent and informed him of Complainants prior rights. Therefore all use after such notification suggests use of the domain name in bad faith. This is sufficient evidence to conclude that the Respondent was in all likelihood well aware of the Complainant’s marks and wanted to refer to the Complainant.
Consequently, the Panel considers that whatever the intention of the Respondent in creating this website, it undoubtedly has the ability to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant by registering a domain name corresponding to a well known trademark. This behavior constitutes bad faith use and may tarnish the Complainant’s reputation by, among other things, attracting internet users to a webpage that does not correspond to what they are looking for.
The above can only lead the Panel to conclude that the Respondent’s attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the services provided on the website.
Therefore, in accordance with paragraph 4 (b)(iii) of the Policy, the above findings lead to the conclusion that the domain name in dispute has been registered and used in bad faith.
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 <spongeboblego.net> be transferred to the Complainant.1
Rodrigo Velasco Santelices
Dated: February 2, 2011
1 The Panel is aware that this results in the transfer to the Complainant of a domain name that includes the trademark SPONGEBOB, which the Panel understands is owned by Viacom International Inc. that is not a party to the current proceeding. In other cases under the UDRP procedure, the Complainants have presented evidence of the consent of other trademark owners with a potential interest in the transferred domain name. See inter alia, Pfizer, Inc. v. Martin Marketing, WIPO Case No. D2002-0793 and Yahoo, Inc. v. M&A Enterprise, WIPO Case No. D2000-0748. However, though in this particular case no evidence was provided of such consent one can not disregard the fact that Lego Juris A/S does manufacture and commercialize SPONGEBOB related LEGO pieces worldwide, consequently one can infer that some type of consent does exist between such companies
Notwithstanding the above, however, neither the Policy nor the Rules expressly require such consent and the Panel accepts Complaints request that the domain name be transferred to Complainant, noting that such order is expressly without prejudice to any rights, which may be asserted by Viacom International Inc. who has the same recourse to a proceeding under the Policy or to court action that Complainant Lego Juris A/S had in this proceeding.