WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Whois Privacy Services Pty Ltd / Bridge Port Enterprises Limited
Case No. D2011-0999
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondents are Whois Privacy Services Pty Ltd of Fortitude Valley, Australia; and Bridge Port Enterprises Limited of St John’s, Antigua and Barbuda (hereinafter “the Respondent”).
2. The Domain Name and Registrar
The disputed domain name <legobilding.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 June 14, 2011. On June 14, 2011, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the Domain Name. On June 15, 2011, Fabulous.com (the “Registrar”) 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 Center sent an email communication to the Complainant on June 15, 2011 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 June 15, 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 June 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 6, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 7, 2011.
The Center appointed Tee Jim Tan, S.C. as the sole panelist in this matter on July 12, 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
The Complainant is LEGO Juris A/S, a limited company incorporated in Denmark. The Complainant is the owner of the trade mark LEGO, and other trade marks which are used in connection with the well-known LEGO brands of construction toys and other LEGO branded products. The Complainant commenced use of its LEGO mark in the United States of America in 1953. Over the years, the business of the Lego Group of companies has grown. In 2009, the Lego Group’s revenue was more than USD 2.8 billion. Lego products are also sold in more than 130 countries, including in Australia where one of the Respondents is apparently located.
The Complainant is the owner of a significant number of trade marks worldwide for the LEGO mark in respect of a wide range of goods and services. The Complainant is also the owner of more than 1,000 domain names containing the word “lego”, and maintains a website under the domain name <lego.com>.
The Respondent is the registrant of the Domain Name at which the website “www.legobilding.com” is located (“Website”). The Website offers sponsored links to various online shops where the Complainant’s and its competitors’ products are offered. The Domain Name was apparently registered on November 22, 2007.
The Complainant first tried to contact the registrant of the Domain Name by sending a cease and desist letter from its representatives Melbourne IT Digital Brand Services to the email address […]@gmail.com on January 28, 2011. The WhoIs information previously displayed the said email address as the contact email for the registrant of the Domain Name. Two reminders were sent on April 13, 2011 and May 13, 2011. In the absence of a reply, the Complainant filed this Complaint with the Center for resolution pursuant to the Policy.
On June 15, 2011, the Registrar disclosed the registrant and contact information for the Domain Name. The registrant and contact information was different from the previous WhoIs information. It was now a privacy registration. The Complainant claims that it is the same registrant under the privacy registration because the Website is the same as it was when the cease and desist letter was sent, and because there was no other indication that in the WhoIs that the Domain Name should have been transferred to a new party.
5. Parties’ Contentions
The Complainant contends that:
5.1 The LEGO trade mark is among the best-known trade marks 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. Superbrands UK ranked the LEGO brand as number 8 in the list of top 500 brands.
5.2 The LEGO trade mark has substantial inherent and acquired distinctiveness. Article 6bis of the Paris Convention for the protection of Industrial Property and Article 16(3) of the Trade-Related Aspects of Intellectual Property Rights allows the proprietor of a well-known trade mark to prevent any use of the well-known trade mark or a confusingly similar denomination in connection with any products or services.
5.3 The fame of the LEGO trade mark is also confirmed by the following UDRP decisions: LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840; LEGO Juris A/S v. Domain Administrator, WIPO Case No. D2010-1260 and LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680.
5.4 The Domain Name is confusingly similar to the LEGO mark for the following reasons:
5.4.1 The dominant part of the Domain Name comprises the word “lego”, which is identical to the LEGO mark.
5.4.2 The suffix “bilding” is not relevant and will not have any impact on the overall impression of the dominant part of the name, “lego”. Moreover, the suffix “bilding” is most likely a typo of the word “building”, which is used by the Complainant for several of its products.
5.4.3 The top-level domain “.com” also does not have any impact on the overall impression of the Domain Name and is irrelevant to the determination of whether there is confusing similarity between the LEGO trade mark and the Domain Name.
5.4.4 Persons who are not aware of the content of the Domain Name are likely to think that the Domain Name is connected in some way with the Complainant. There is a risk that the trade and the public will perceive the Domain Name as one which is owned by the Complainant or that some commercial relationship with the Complainant exists.
5.5 The Respondent has no rights or legitimate interests in respect of the Domain Name for the following reasons:
5.5.1 The Complainant has not found that the Respondent owns any registered trade marks or trade names that correspond with the Domain Name.
5.5.2 The Complainant found no evidence that the Respondent uses the Domain Name as a company name or has any other legal right in the name “Lego”.
5.5.3 The Complainant has not found anything that would suggest that the Respondent has been using “lego” in any other way that would give any legitimate rights in the name, and thus, the Respondent cannot claim any rights established by common usage.
5.5.4 The Complainant did not grant the Respondent any licence or authorization to use the LEGO mark.
5.5.5 The mere registration of a domain name does not grant the registrant a right or legitimate interest in respect of the domain name.
5.5.6 The Respondent cannot claim to have been using the LEGO mark without being aware of the Complainant’s rights to it because it is highly unlikely that the Respondent would not have been aware of the Complainant’s legal rights in the “lego” name at the time the Domain Name was registered.
5.5.7 The Domain Name is not used in connection with a bona fide offering of goods or services. Instead, the Domain Name was chosen based on a registered trade mark in order to generate traffic to the Website, which merely contains sponsored links to online shops where the Complainant’s products as well as those of its competitors are offered.
5.6 The Domain Name was registered and is being used in bad faith for the following reasons:
5.6.1 The LEGO mark is well-known and has a substantial and widespread reputation throughout the world. The number of third party domain name registrations comprising the LEGO mark has increased considerably in recent years. This is most likely due to the value and goodwill of the LEGO mark and possibly led the Respondent to register the Domain Name.
5.6.2 The Respondent failed to respond to the Complainant’s cease-and-desist letter despite two reminders.
5.6.3 Instead, the Respondent changed its domain name registration to a privacy registration with WhoIs Privacy Services Pty Ltd. The Website remained unchanged from the version which existed when the cease-and-desist letter was sent, and there is no other indication in the WhoIs that the Domain Name should have been transferred to a new party.
5.6.4 The Respondent most likely derives income from the sponsored links on the Website when visitors click on the links. The Respondent is using the LEGO mark to divert visitors to the Website for this purpose, by creating a likelihood of confusion with the LEGO mark as to the source, sponsorship, affiliation or endorsement of the Website.
5.6.5 Bad faith can also be inferred from the fact that it is highly unlikely that the Respondent would devise a famous word (such as the LEGO mark) randomly and unintentionally and register it as a domain name in combination with a term which directly relates to the products offered under the LEGO mark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Elements of the Policy
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present in order to succeed in the Complaint:
(i) The Domain Name is identical with or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
In accordance with paragraph 14(a) of the Rules, if the Respondent fails to comply with time frame for submitting the Response and exceptional circumstances are absent, the Panel shall proceed to a decision based on the Complaint.
B. Identical or Confusingly Similar
The Complainant has provided evidence of its trade mark registrations for the LEGO mark in numerous classes of goods and services worldwide. The Complainant has also provided evidence of recognition of the LEGO mark and numerous UDRP decisions which indicate the renown of the LEGO mark as well as the considerable goodwill and reputation the mark enjoys. On the basis of the evidence, the Panel is satisfied that the LEGO mark is distinctive of the Complainant’s business and goods and that the Complainant has rights in the LEGO mark.
The Domain Name incorporates the LEGO mark in its entirety. Further, the suffix “bilding” is visually and aurally similar to the term “building” which is apt to refer to the Complainant’s Lego construction toys. The use of the term with the well-known mark LEGO is likely to mislead the public to believe, and to act on the belief, that the Domain Name belongs to the Complainant or is in some way associated with the Complainant. In this regard, the Panel agrees with the UDRP decision of Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488 which states that:
“Long-established precedent has generally recognised confusing similarity where well-known trademarks have been adapted with a wide range of prefixes or suffixes.”
The Panel also notes that the likelihood of confusion is unlikely to be dispelled by the use of the top-level domain “.com”, as it has been widely recognized as a technical requirement for registration. Hence, the Panel finds that the Domain Name is confusingly similar to the Complainant’s LEGO mark and finds for the Complainant in respect of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, the Respondent may establish its rights to or legitimate interests in the Domain Name by showing any of the following:
(i) The Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) The Respondent has been commonly known by the Domain Name, even if the Respondent has acquired no trade mark or service mark rights; or
(iii) 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 trade mark or service mark at issue.
As the Respondent failed to file a Response, the Panel does not have before it any evidence of the circumstances specified in paragraph 4(c) of the Policy or of any other circumstances which might reasonably be said to give the Respondent a right to or a legitimate interest in the Domain Name.
There is no evidence that the Respondent is known by the Domain Name prior to its registration or that it has any registered trade marks that are identical with or similar to the Domain Name. On the contrary, the Panel accepts that the LEGO mark is such a well-known mark that the Respondent must have known that the Complainant or the Lego Group owns the rights to the LEGO mark when it registered the Domain Name. The Complainant has also stated that it has never consented to the use of the LEGO mark in the Domain Name.
Further, the Website does not identify the Respondent or indicate that the Respondent is in any way related to the name “Lego”. Instead, it is apparent that the Domain Name is used to misleadingly divert consumers to the Website which displays sponsored links to other webpages which offer products that are offered by the Complainant and its competitors.
For the above reasons, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name and finds for the Complainant in respect of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the Domain Name in bad faith, namely:
(i) Circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trade mark or service mark, or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Circumstances showing that the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) Circumstances showing that the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) The Respondent has, by using the Domain Name, intentionally attempted to attract, for commercial gain, Internet users to its Website 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 the Respondent’s Website or location or of a product or service on the Respondent’s Website or location.
By failing to file a Response, the Respondent has failed to invoke any circumstance that could demonstrate that it did not register and use the Domain Name in bad faith and to assist the Panel in this regard.
As regards registration in bad faith, the Complainant has provided evidence that the LEGO mark has been registered before the Domain Name was registered on November 22, 2007. Given the renown of the LEGO mark, the Panel finds that the Respondent knew or must have known that the Complainant and/or the Lego Group owns the rights to the LEGO mark when it registered the Domain Name. Therefore, the Panel finds that the Domain Name was registered in bad faith.
As regards use in bad faith, the Panel finds that the Domain Name appears to be used to attract Internet users to the Website to generate pay-per-click revenue. The Domain Names resolve to the Website, which is essentially a landing page which displays sponsored links to other online shops which offers products sold by the Complainant and its competitors. This is likely to result in commercial gain for the Respondent. In this regard, the Panel is of the view that the use of the Domain Name in such a manner is indicative of use in bad faith: see also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 and The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC, WIPO Case No. D2009-0057.
It is also notable that the Respondent failed to respond to the Complainant’s cease-and-desist letter (despite two reminders) and, in the interim, changed the registration of the Domain Name to a privacy registration with Whois Privacy Services Pty Ltd. In the Panel’s view, the failure and the change are also indicative of bad faith. There is ample support for this view. In News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623, it was held that a respondent’s failure to acknowledge or reply to a cease-and-desist letter can be evidence of bad faith. It has also been held that the use of a privacy registration service to avoid disclosure of the real identity of the respondent is relevant to a finding of bad faith: see Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696.
For the above reasons, the Panel finds that the Domain Name was registered and used in bad faith. The Panel therefore finds for the Complainant in relation to paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, and in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <legobilding.com> be transferred to the Complainant.
Tee Jim Tan, S.C.
Dated: July 20, 2011