World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Michael Onstad

Case No. D2011-1306

1. The Parties

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

The Respondent is Michael Onstad of Winona, Minnesota, United States of America.

2. The Domain Names and Registrar

The disputed domain names <legodisplaycase.com> and <legodisplays.com> are registered with GoDaddy.com, Inc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2011. On July 29, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 31, 2011 and August 5, 2011, the Registrar 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 August 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 28, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 29, 2011.

The Center appointed Desmond J. Ryan as the sole panelist in this matter on September 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.

4. Factual Background

The disputed domain names were each registered on January 13, 2011.

The Complainant is a member of the world famous Lego Group of Companies which has through itself, its predecessors and licensees used the trademark LEGO for over sixty years. It owns trademark registrations consisting of, or including the word LEGO in almost all countries of the world ranging from Afghanistan to Zimbabwe. It owns United States of America trademark registration No. 1018875 filed September 17, 1974 and claiming first use in commerce from June 4, 1953. It is listed as the 8th top brand in the by Brand Analysis Superbrands official top 500 for the years 2009/2010. In 2009 it had a turnover of more than USD 2.8 billion and has sold Lego products in more than 140 countries, including the United States. It owns over 1,000 domain names which include the word LEGO and maintains an extensive website at “www.lego.com”. The Complainant claims that its trademark is a well-known trademark within the meaning of Article 6 bis of the Paris Convention and is thus entitled to protection beyond the specific areas in which the trademark has actually been used. Such fame has brought many attempts to trade off its reputation and the Complainant has been forced to defend its rights and has been the successful complainant in over 150 complaints filed under the Policy.

The disputed domain names each resolves to a pay-per-click portal site with links to a variety of third party commercial sites including sites offering both the Complainant's products and competitors' products.

On March 24, 2011 the Complainant's authorized representative sent a letter of demand to the Respondent at its then proxy address but received no reply. Reminder letters sent on May 13, 2011 and June 17, 2011 likewise produced no reply.

5. Parties’ Contentions

A. Complainant

The Complainant contends that its well-known trademark LEGO is the dominant part of each of the disputed domain names. It contends, citing Dr. Ing.h.c.F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488 that:

"it is a long-established precedent that confusing similarity is generally recognized when well-known trademarks are paired off with different kinds of generic prefixes and suffixes".

The Complainant further contends that the disputed domain names are clearly confusingly similar to the Complainant's LEGO trademark and that confusion with it may result in tarnishment, dilution and other damage to the mark.

The Complainant asserts that it has not licensed or authorized the Respondent to use its trademark in the disputed domain names and has not found any registered trademarks or trade names in the name of the Respondent or any other thing that would suggest that the Respondent has been using Lego in any way that would give him any legitimate interests or rights in the disputed domain names. The Complainant contends citing Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055 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 Names incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the Domain Names could be claimed by Respondent."

The Complainant states that the Respondent is not an authorized dealer of the Complainant and has never had a business relationship with it. The Complainant contends that given the notoriety of its LEGO trademark it is highly unlikely that the Respondent would not have known of it when registering the disputed domain names and that incorporating the mark into their domain names would likely violate the exclusive rights which the Complainant has long held in its mark. The Complainant further contends that the Respondent's use of the disputed domain names to direct to sponsored links to online sites offering third party products do not constitute a bona fide use of the domain names. Accordingly, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names.

For the reasons set out above, and for the further reasons discussed below, the Complainant contends that the disputed domain names were registered and are being used in bad faith. The Complainant points to the Respondent's failure to respond to its letters of demand as an indication of bad faith. The Complainant further contends that the Respondent's use of the disputed domain names to link to third party, and sometimes competing websites indicates a deliberate attempt, for commercial gain to attract users to its website by creating confusion with the Complainant's well-known LEGO trademark.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has shown clearly that it has long established and extensive rights in its trademark LEGO and has done so on many previous cases under the Policy. The disputed domain names each comprise, as its first and distinguishing component, the word “Lego”. The addition of the descriptive words "displays" and "display cases" does nothing to distinguish the disputed domain names from the Complainant's famous mark. Rather, do they tend to reinforce the likelihood that Internet users would assume that the disputed domain names would lead to the source of LEGO products thus described.

The Panel therefore finds that the disputed domain names are confusingly similar to the trademark LEGO in which the Complainant has rights.

B. Rights or Legitimate Interests

By the time the Respondent, whose address is in the United States, registered the disputed domain names on January 13, 2011, the Complainant's LEGO trademark had been in use in the United States for almost seventy-five years and had become one of the world's best known trademarks. In this Panel’s view, it seems beyond question therefore that at the time of registering the disputed domain names the Respondent was fully aware of the trademark and of the Complainant's rights in it. As found in numerous prior UDRP decisions, the Respondent's subsequent use of the disputed domain names to point to third party websites, some of which offer goods in competition to the Complainant was not a use of the disputed domain names in connection with the bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy see, for example LEGO Juris A/S v. Holly Cooper / WhoisGuard Protectede, WIPO Case No. D2010-0545. The Complainant has not authorized the Respondent to use its trademark and there is no other basis upon which it could reasonably be concluded that the Respondent had any right or legitimate interest in the disputed domain names. The Respondent has had ample opportunity to rebut the claims of the Complainant and to put forward evidence of any claim it may have to rights or legitimate interests. It has failed to do so.

The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

The facts and circumstances discussed in Section B above are in themselves sufficient to establish that the Respondent registered the disputed domain names in bad faith.

The Respondent's failure to respond to the Complainant's representatives letters and its continued use of the disputed domain names, otherwise than in relation to the bona fide offering of goods and services clearly indicate bad faith use of the disputed domain names. The only reasonable conclusion is that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark. No other conclusion is readily apparent. As stated by the learned panelist in LEGO Juris A/S v. Online Toy Superstore, WIPO Case No. D2010-0839:

"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 its own domain name, in combination with the term "playsets.com" which directly relates to the products offered under the third party trademark."

The Panel therefore finds that the disputed domain names have been registered and are being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <legodisplaycase.com> and <legodisplays.com> be transferred to the Complainant.

Desmond J Ryan AM
Sole Panelist
Dated: September 21, 2011

 

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