WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Wioletta Balcerak
Case No. D2011-1320
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Wioletta Balcerak of Malopolskie, Poland.
2. The Domain Name and Registrar
The disputed Domain Name <klockilego.org> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2011. On August 2, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com, a request for registrar verification in connection with the disputed domain name. On August 3, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 5, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 25, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2011.
The Center appointed Derek M. Minus as the sole panelist in this matter on September 1, 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 a Denmark-based corporation, founded in 1932, that has become the world’s fifth largest manufacturer of play materials and the largest manufacturer of construction toys. The Complainant and its licensee companies (collectively “the LEGO Group”), through their predecessors, commenced use of the LEGO trademark in the USA since 1953 to identify and distinguish its interlocking brick construction toys.
Since that time, the business of making and selling LEGO branded toys has grown remarkably. The LEGO Group revenues exceeded USD 2.8 billion in 2009. The LEGO mark is now registered in over 180 countries in international class 28, among several others, of the Nice Classification. The Complainant maintains its corporate website at “www.lego.com” in addition to owning more than 1,000 domain names comprising the LEGO trademark, including “www.lego.pl”.
The LEGO trademark 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 trademark and brand have been recognized as being one of the most famous trademarks and brands in the world, according to 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 Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including Poland. The Complainant holds a CTM trademark for LEGO which is designated to Poland with registration number 000039800 first registered in 1998. The Complainant's licensees are authorized to exploit the Complainant's intellectual property rights, including its trademark rights, in Poland and elsewhere.
5. Parties’ Contentions
The Complainant asserts that:
The Respondent registered the disputed Domain Name on March 10, 2011 without the Complainant’s authorization, and the disputed Domain Name currently direct users to web pages published by the Respondent.
(a) The disputed Domain Name < klockilego.org> is confusingly similar to the names and trademarks in which the Complainant has extensive rights.
The disputed Domain Name reproduces entirely the LEGO trademark, which itself has no particular meaning and is therefore highly distinctive.
(b) The Respondent has no rights or legitimate interests in respect of the disputed Domain Name.
The Complainant has not granted the Respondent a license or other authorization to use its trademark in relation to the disputed Domain Name.
The disputed Domain Name is composed of the Complainant’s trademark LEGO and a generic word for “blocks” in Polish. The use of a generic and descriptive term in conjunction with the Complainant’s trademark does not mean that the disputed Domain Name is not confusingly similar, as the generic term does not provide any element of distinctiveness to the Domain Name.
The Respondent is not using the disputed domain name in relation with any bona fide offering of goods and services. The Respondent is not itself a genuine reseller of the Complainant’s products. The Respondent uses the disputed domain name to link to a website where the Complainant’s products are advertised.
The Respondent is not making legitimate non-commercial or fair use of the disputed Domain Name. The Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic to a web site displaying sponsored links. By doing this, the Respondent is using the LEGO trademark for his own commercial gain and misleadingly diverting consumers from the Complainant’s websites to the Respondent’s website.
(c) The Respondent registered and is using the disputed Domain Name in bad faith:
The Respondent has registered the disputed domain name in order to take advantage of the confusing similarity between the disputed Domain Name and the Complainant’s LEGO trademark in order to benefit from the goodwill associated with the LEGO trademark and this constitutes evidence of bad faith registration and use on behalf of the Respondent.
The Complainant also sent the Respondent a cease and desist letter by e-mail on April 29, 2011 and two reminders requesting immediate transfer of the disputed Domain Name. However the Respondent did not reply. The Respondent’s lack of reply reinforces the inference of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving, on the balance of probabilities, each of the following three elements:
(i) that the disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant holds rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name; and
(iii) that the disputed Domain Name has been registered and is being used in bad faith by the Respondent.
As the Respondent did not file a Response or otherwise reply to the Complainant’s contentions, the Panel shall decide the Complaint on the basis of the Complainant’s submissions and such inferences as can be reasonably drawn from the failure to submit a Response as the Panel considers applicable (Rules, paragraph 14(b)).
A. Identical or Confusingly Similar
The Panel finds that the Complainant is the owner of the LEGO trademark both by extensive registration and reputation, to the extent that it can legitimately claim LEGO to be a well-known mark of substantial inherent and acquired distinctiveness. The fame of the LEGO trademark has been confirmed in numerous previous UDRP decisions; in LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840 “LEGO is clearly a well-known mark”, in 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 disputed domain name <klockilego.org> incorporates the Complainant’s LEGO trademark in its entirety with the addition of the prefix “klocki” which means “blocks” in Polish, and the top level “.org” identifier at the end.
Whether a domain name that incorporates a Complainant’s trademark together with a prefix or suffix is confusingly similar to the trademark, has been considered in a number of UDRP decisions. It has been held that a domain name consisting of the Complainant’s trademark and ending with the “.com” gTLD is confusingly similar to the Complainant’s trademark (see Sanofi-Aventis v. The Counsel Group, LLC, WIPO Case No. D2005-0650).
The incorporation of a trademark in its entirety has been held to be sufficient to establish that a domain name is identical or confusingly similar to a Complainant’s registered trademark (see Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201). It was decided by the panel in Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525, that “when a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy”.
The Domain Name is confusingly similar to the Complainant’s world famous trademark LEGO in which the Complainant has rights, as neither the addition of the generic word “klocki” nor the gTLD “.org” nor both together, are sufficient to prevent confusion with the Complainant’s unique registered trademark. Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(c) of the Policy provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name, as follows:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
The Respondent registered the Domain Name on March 10, 2011. As was stated in Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134 “mere registration [of a domain name] does not establish rights or legitimate interests in the disputed domain name”. The Respondent is not a licensee or authorized agent of the Complainant or in any way authorized to use the Complainant’s trademark LEGO.
The Complainant is not in possession of, nor has the Respondent provided the Complainant with any evidence demonstrating that the Respondent might be commonly known by the disputed Domain Name as an individual, business, or other organization, or that the Respondent has any registered trademarks or trade names corresponding to the Domain Name. The Respondent cannot claim to have been using the Complainant’s LEGO trademark whilst unaware of the Complainant’s rights in it. The evidence is that the Respondent is not making, noncommercial or fair use of the disputed domain name, without intent for commercial gain.
The Panel accepts the Complainant’s submission that it is the fame of the LEGO trademark that has motivated the Respondent to register the Domain Name based on the Complainant’s registered trademark, in order to generate traffic to a web site displaying displaying sponsored links. The Respondent has not demonstrated or established any such right or legitimate interest.
The use of the Domain Name to sponsored links is not a bona fide use of the Domain Name, see
LEGO Juris A/S v. J.h.Ryu, WIPO Case. No. D2010-1156, where the panel found that: “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.”
The Panel therefore finds that the Complainant has made a prima facie case of the Respondent’s lack of rights to or legitimate interests in the disputed domain name. Given that the Complainant has satisfactorily made out a prima facie case that the Respondent lacks rights or legitimate interests, the burden is on the Respondent to establish its right or legitimate interest in the disputed Domain Name (see PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174). The Respondent has not demonstrated or established any such right or legitimate interest.
The Respondent has not provided evidence of circumstances illustrated by paragraph 4(c) of the Policy, or any other circumstances evidencing any rights to, or legitimate interests in the disputed domain names. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed Domain Name and the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances, which “in particular but without limitation”, shall be evidence of the registration and use of a domain name in bad faith. These four circumstances, which are framed in the alternative are:
(i) circumstances indicating that you have registered or you have 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.
The list of four circumstances set out in paragraph 4(b) of the Policy, which are deemed to indicate bad faith, are expressly non-exclusive.
The LEGO trademark is in global use and predates the Respondent’s very recent registration of the Domain Name. It is therefore highly unlikely that the Respondent was unaware of the Complainant’s trademark when it registered the Domain Name. The registration of the disputed Domain Name by the Respondent without authorization is evidence of its bad faith registration, see Heineken Brouwerijen B.V. v. Mark Lott, WIPO Case No. D2000-1487 (where the panel found that the international fame of a trademark precludes innocent registration of a confusingly similar domain name).
Further, the Respondent is using the disputed Domain Name to access a website on which the Complainant’s trademarked logo is featured. The Domain Name is currently connected to a web site displaying sponsored links which promotes LEGO products and sells them online. The Respondent is not an authorized reseller of LEGO products and has not added a disclaimer to explain the non-relationship with the Complainant. This is a further indication of bad faith. In The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC, WIPO Case No. D2009-0057 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.”
The Panel finds that the Respondent has intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website. It is irrelevant whether the Respondent is actually getting revenue from the pages himself. In Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912, the respondent claimed that he had not received any money from the website. The panel stated that, “these facts do not exclude bad faith under paragraph 4(b)(iv) for the following reasons: (i) paragraph 4(b)(iv) requires the respondent to intend to attract Internet users ‘for commercial gain', but this gain does not need to be derived by the respondent himself.”
The Complainant tried to contact the Respondent on April 29, 2011 through a cease and desist letter, sent by e-mail. No response was received from the Respondent to the letter or the two reminders that were sent on June 17 and June 29, 2011. The failure of a respondent to respond to a cease and desist letter, or a similar attempt at contact, has been considered relevant in a finding of bad faith, see News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623.
The Panel accepts that the disputed Domain Name was registered and is being used in bad faith pursuant to paragraph 4(b)(iv) 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 disputed Domain Name <klockilego.org> be transferred to the Complainant.
Derek M. Minus
Dated: September 22, 2011