World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Domain Administration

Case No. D2011-0604

1. The Parties

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

The Respondent is Domain Administration of Burbank, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <wwwlegoclub.com> (the “Domain Name”) is registered with Fabulous.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2011. On April 5, 2011, the Center transmitted by email to InTrust Domains, Inc. a request for registrar verification in connection with the Domain Name. On April 28, 2011, Fabulous.com transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Complainant filed an amendment to the Complaint May 9, 2011.

On May 10, 2011, 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”).

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 May 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 30, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2011.

The Center appointed Pedro W. Buchanan Smith as the sole panelist in this matter on June 9, 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.

This Panel further considers that the Complaint was properly notified to the registered domain name holder, as provided for in paragraph 2(a) of the Rules.

The Panel has not received any further requests from the Complainant or the Respondent regarding submissions or waivers, extensions of deadlines and the Panel has not found it necessary to request any further information, statements or documents from the Parties, nor the need as an exceptional matter, to hold any in-person hearings as necessary for deciding the Complaint, as provided for in paragraphs 12 and 13 of the Rules. Therefore, the Panel has decided to proceed under the customary expedited nature contemplated for this type of domain name dispute proceedings.

The language of this proceeding is English, pursuant to paragraph 11(a) of the Rules.

4. Factual Background

The Complainant 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. A list of the registered trademarks on which this Complaint is based was provided by the Complainant as Annex 6.

The Complainant’s licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights, in the Unites States and elsewhere. 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 U.S. during 1953, to identify construction toys made and sold by them. Over the years, the business of making and selling LEGO branded toys has grown remarkably. By way of example, the revenue for the LEGO Group in 2009, was more than USD 2.8 billion. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in the United States.

The Complainant is also the owner of more than 1000 domain names containing the term LEGO. The Complainant provided a list of the domain names that are being used by the LEGO Group. It is the strict policy of the Complainant that all domain names containing the word LEGO should be owned by the Complainant.

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. Indeed, the LEGO trademark and brand have been recognized as being famous. The Complainant provided as Annex 9, a list of the official top 500 Superbrands for 2009/10, provided by Superbrands UK, showing LEGO as number 8 of the most famous trademarks and brands in the world.

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 website under the domain name <LEGO.com> as listed in Annex 10.

As shown, the mark LEGO is in possession of substantial inherent and acquired distinctiveness. The awareness of the trademark LEGO is considered in the whole Community to be significant. According to the provisions of Article 6bis of the Paris Convention for Protection of Industrial Property (“PC”), confirmed and extended by Article 16.2 and Article 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”), the statute of a well-known trademark provides the owner of such a trademark with the right to prevent any use of the well-known trademark or a confusingly similar denomination in connection with any products or services (i.e., regardless of the list of the products and services for which the trademark is registered). Thus, the protection for LEGO goes far beyond toys and goods similar to toys.

5. Parties’ Contentions

A. Complainant

The dominant part of the Domain Name < LEGOclub.com> comprises the word LEGO, which is identical to the registered trademark LEGO, which has been registered by the Complainant as trademarks and domain names in numerous countries all over the world.

The fame of the trademark has been confirmed in numerous previous UDRP decisions, LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840 (“LEGO is clearly a well-known mark”); LEGO Juris A/S v. Domain Administrator; WIPO Case No. D2010-1260 (“In the present case, the disputed domain names incorporate the Complainant’s well-known registered trademark LEGO”); and LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680 (“LEGO is a mark enjoying high reputation as construction toys popular with children”).

The Domain Name is confusingly similar to the Complainant’s world famous trademark LEGO. The addition of the prefix “www” and the suffix “club” are 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. In the case of Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488, it was stated that it is a long-established precedent that confusing similarity is generally recognized when well-known trademarks are paired up with different kinds of generic prefixes and suffixes. As the Complainant has a fan club named “LEGO Club” with its own homepage, said suffix is rather fitted to strengthen the impression that the Domain Name belongs to, or is affiliated with Complainant.

Furthermore, the concerned Domain Name is a typo of “www.LEGOclub.com”, which is registered by the Complainant and redirects to the LEGO Club’s homepage.

The addition of the top-level domain (Tld) “com” does not have any impact on the overall impression of the dominant portion of the Domain Name and is therefore irrelevant to determine the confusing similarity between the trademark and the Domain Name.

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 trademark also risk being tarnished by being connected to a website. By using the trademark as a dominant part of the Domain Name, the Respondent exploits the goodwill and the image of the trademark, which may result in dilution and other damage for the Complainant’s trademark. Persons seeing the Domain Name at issue, even without being aware of the content, are likely to think that the Domain Name is in some way connected to the Complainant, (i.e., initial interest confusion).

Summarizing this, the Complainant is the owner of the well-known trademark LEGO. The Domain Name is clearly confusingly similar to the Complainant’s registered trademark LEGO.

The prefix “www” and the suffix “club” do not detract from the overall impression and the Domain Name must therefore be considered to be confusingly similar with the Complainant’s trademark.

The Complainant 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.

It is also clear that no license or authorization of any other kind has been given by the Complainant to the Respondent, to use the trademark LEGO. In the case of Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055, the panel stated that, “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent.”

The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. This was stated by the panel as a factor in the finding of no legitimate interest with the Respondent in case of Dr. Ing. h.c. F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312.

The Domain Name was registered on December 16, 2010. The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the domain name. It is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in the name LEGO at the time of the registration. It is rather obvious that it is the fame of the trademark that motivated the Respondent to register the Domain Name. That is, the Respondent cannot claim to have been using LEGO, without having been aware of the Complainant’s rights to it. This, among other facts, proves to the Panel that the Respondent’s interests cannot have been legitimate.

LEGO is a famous trademark worldwide and in the case of Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314, it was established that any use of such a trademark in a domain name would violate the rights of the trademark owner. The panel stated that “given the notoriety of the Complainant’s Deutsche Bank Mark, any use which the Respondent would make of any domain name, as here, that incorporated the Complainant’s Deutsche Bank Mark, or one confusingly similar thereto, would likely violate the exclusive trademark rights which the Complainant has long held in its mark”.

The Respondent is today not using the Domain Name in connection with a bona fide offering of goods or services. Instead the Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic to a website displaying sponsored links. By doing this, the Respondent is using the LEGO trademark and misleading Internet users to commercial websites for its own commercial gain and consequently, the Respondent is tarnishing the trademark LEGO.

Further, the use of the Domain Name to host sponsored links is not a bona fide use of the Domain Name, see, e.g., LEGO Juris A/S v. J.h.Ryu, WIPO Case No. D2010-1156 (“Further, Respondent’s use of the Disputed Domain Name to sponsor links to paid advertising is not use of the Disputed Domain Name in connection with a bona fide offering of goods or services”).

No evidence has been found that the Respondent uses the Domain Name as a company name or has any other legal right in the name LEGO. The Respondent is trying to sponge off the Complainant’s world famous trademark. In the case of Drexel University v. David Brouda, WIPO Case No. D2001-0067, the Panel stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant.”

Accordingly, the Respondent has no rights or legitimate interests in respect of the Domain Name.

The trademark LEGO in respect of toys belonging to the Complainant has the status of well-known and reputed trademark with a substantial and widespread reputation throughout the whole community and throughout the world. The awareness of the trademark LEGO is considered, in the whole community in general, to be significant and substantial. The number of third party domain name registrations comprising the trademark LEGO in combination with other words has skyrocketed the last years (e.g., 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).

The considerable value and goodwill of the mark LEGO is most likely, a large contribution to this and also what made the Respondent register the Domain Name. The Complainant first tried to contact the Respondent on January 23, 2011, through a cease and desist letter, sent by e-mail. The Complainant advised the Respondent that the unauthorized use of the LEGO trademark within the Domain Name violated the Complainant’s rights in said trademark. The Complainant requested a voluntary transfer of the Domain Name and offered compensation for the expenses of registration and transfer fees (not exceeding out of pocket expenses). No response was received, so two reminders were sent, the first one on February 3, 2011, and the last one on February 14, 2011, however without any reply. Since the efforts of trying to solve the matter amicably were unsuccessful, the Complainant chose to file a complaint according to the UDRP process.

The use of sponsored links is another factor indicating bad faith. In the case of The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC, WIPO Case No. 2009-0057 the Panel stated; “The record further reflects the Respondent’s use of the disputed Domain Names to attract Internet users to the Respondent’s website in order to generate pay-per-click advertising revenues. The Panel concludes for the foregoing reasons that the Respondent registered and is using the disputed Domain Names in bad faith.” This discussion applies for this case as well. Consequently, the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.

Further, in LEGO Juris A/S v. Online Toy Superstore, WIPO Case No. D2010-0839 regarding the domain name <LEGOplaysets.com> the Panel stated; “The bad faith of the Respondent may also be inferred through a simple logical process as well, in the sense that it would, indeed, be highly unlikely that the Respondent would come up randomly and unintentionally with a famous word, such as “lego”, and register it as it’s [sic] own domain name[.]” These circumstances apply in this case as well.

To summarize, 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 noncommercial or fair use without intent for commercial gain but is misleadingly diverting consumers for its own commercial gain. 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.

B. Respondent

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

6. Discussion and Findings

The Panel considers that the Respondent, by registering the Domain Name with the Registrar (an Internet Corporation for Assigned Names and Numbers’ –ICANN– accredited domain name registrar), agreed to be bound by all terms and conditions of the Registrar’s Agreement, and any pertinent rule or policy, and particularly agreed to be bound by the Policy (incorporated and made a part of the Registrar’s Agreement by reference), which requests that proceedings be conducted according to the Rules and the selected administrative-dispute-resolution service provider’s supplemental rules, in the present case being the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy. Therefore, the dispute subject matter of this proceeding is within the scope of the above mentioned agreements and Policy, and this Panel has jurisdiction to decide this dispute.

Furthermore, the Panel considers that in the same manner, by entering into the above mentioned Service Agreement, the Respondent agreed and warranted that neither the registration of the Domain Name nor the manner in which it may intend to use the Domain Name will directly or indirectly infringe the legal rights of a third party, and that in order to resolve a dispute under the Policy, Respondent’s domain name registration services may be suspended, cancelled or transferred.

The Panel also particularly considers that it is essential to dispute resolution proceedings that fundamental due process requirements be met.

Such requirements include that the Parties and particularly the Respondent in this case be given adequate notice of proceedings initiated against them; that the Parties may have a fair and reasonable opportunity to respond, exercise their rights and to present their respective cases; that the composition of this Panel be properly made and the Parties be notified of the appointment of this Panel; and that both Parties be treated with equality in these administrative proceedings.

In the case subject matter of this proceeding, the Panel is satisfied that these proceedings have been carried out by complying with such elemental due diligence requirements, and particularly contemplating the notification of the filing of the Complaint and the initiation of these proceedings giving the Respondent a right to respond.

Paragraph 4(a) of the Policy directs that the Complainant must prove the presence of each of the following elements: (i) that 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) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

This Panel finds that the Respondent’s Domain Name <wwwlegoclub.com > is confusingly similar to the Complainant’s very well-known LEGO trademark. The Complainant’s trademark was registered significantly earlier than the date of registration of the Respondent’s Domain Name <wwwlegoclub.com>. Moreover, the Complainant owns the almost identical domain name: <legoclub.com>.

Furthermore, neither the addition of the characters [www] nor the addition of the gTLD “.com” are distinctive elements. In the case of the gTLD “.com” the same is just a necessary element required for the registration of a first level domain name. In the case of the addition of the characters [www], in the opinion of this Panel, clearly correspond to the word wide web and must likely in such registration the character [.] was missing.

B. Rights or Legitimate Interests

This Panel finds, in general, from the information and facts that were analyzed and from the lack of evidence to the contrary, that there is no indication that the Respondent has any rights or legitimate interests in connection with the Complainant’s LEGO trademark nor with the Domain Name; That the Respondent has not used nor prepared to use the <wwwlegoclub.com> Domain Name in connection with any good faith offering of goods or services as contemplated under paragraph 4(c)(i) of the Policy; nor that the Respondent is commonly known by the Domain Name as contemplated under paragraph 4(c)(ii) of the Policy; nor that the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue as contemplated under paragraph 4(c)(iii) of the Policy. The Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 3(b)(ix)(2) of the Rules.

C. Registered and Used in Bad Faith

The Panel finds, from the information and facts that were analyzed, and from the lack of evidence to the contrary, that the registration of the Domain Name <wwwlegoclub.com> by the Respondent is in bad faith, in particular but without limitation, as by using the Domain Name, has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such web site or location or of a product or service on its web site or location, pursuant to paragraph 4(b)(iv) of the Policy. The bad faith of the Respondent is also clearly inferred from the fact that LEGO is a famous trademark worldwide, that in the opinion of this Panel, was definitively not selected randomly nor unintentionally by the Respondent, who was aware of the rights that the Complainant has in the trademark and the value of said trademark, at the point of the registration, and therefore has clearly made a bad faith use of the Domain Name.

7. Decision

Therefore, and in consideration of the Complaint’s compliance with the formal requirements for this domain name dispute proceeding, to the factual evidence and legal contentions that were submitted, to the conclusive confirmation of the presence of each of the elements contemplated in Paragraph 4(a)(i), (ii) and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by paragraphs 14(a) and (b) and 15(a) of the Rules, this Panel orders that the Domain Name <wwwlegoclub.com> be transferred to the Complainant.

Pedro W. Buchanan Smith
Sole Panelist
Dated: June 30, 2011

 

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