WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Protected Domain Services/ “vienka.com”, “vienka sweety”
Case No. D2011-1869
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondents are Protected Domain Services (the “First Respondent”) of Denver, United States of America/ “vienka.com”, “vienka sweety” (the “Second Respondent”) of Jakarta, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <legotechnic8110.com> (the “Domain Name”) is registered with Name.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2011, naming the then-named registrant of the Domain Name, Protected Domain Services as sole Respondent. On October 31, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 4, 2011, the Registrar transmitted by email to the Center its verification response advising that Protected Domain Services, being a “whois protection service” of the Registrar, was not the current registrant of this domain and advising that the registrant in fact was “vienka.com”, “vienka sweety”. The Center sent an email communication to the Complainant on November 8, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant by notice to the Center dated November 18, 2011 amended its Complaint to name the second Respondent.
The Center verified that the Complaint as amended 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 Respondents of the Complaint, and the proceedings commenced on November 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 11, 2011. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on December 14, 2011.
The Center appointed William Peter Knight as the sole panelist in this matter on January 12, 2012. 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 Domain Name was registered on July 30, 2011.
According to the Complaint, the Complainant is a Danish company that owns the trademark LEGO and all other trademarks used in connection with the famous LEGO brand of construction toys and other LEGO branded products, which it licenses to related entities that manufacture and distribute such toys and other products around the world. The Complainant and its predecessors in title have been in business from the early years of the twentieth century, producing children’s toys since 1932 and using the LEGO trademark since 1934. The Complainant and its licensees (collectively the “LEGO Group of Companies” or the “LEGO Group”) have grown to a worldwide business, the revenue for the LEGO Group in 2009 exceeding 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 and Indonesia.
The Complainant has registered the trademark LEGO in many countries, including in the Europe, the United States and Indonesia and is also the owner of more than 1000 domain names containing the term LEGO.
Within the range of the Complainant’s products, “Technic” is a designation of a line of interconnecting plastic rods and parts. The purpose of this line is to offer the challenge of creating more advanced models with more complex movable arms, such as machines with wheels. “8110” is a particular model of the LEGO “Technic” range, being a toy truck featuring a pneumatically powered, articulated crane with working grab and a recovery winch on the front (and which may be rebuilt into a snow plough) which includes working steering, four-wheel drive and suspension, gear block for extreme ground clearance and a detailed engine with moving pistons.
The Complainant has not licensed either of the Respondents to use its registered trademark LEGO or its “Technic” or “8110” product designations.
At the time of filing of the original Complaint, the Domain Name was being used to display images and information regarding the LEGO Technic 8110 product with a prominent link being provided to the Amazon website where the product could be purchased. As at the date of this administrative decision, the Domain Name directs to an index page with no information on it of any kind.
The Complainant has attempted to make contact with the Respondents with respect to the use of the Domain Name on two occasions, but the Respondents have not replied to those approaches.
5. Parties’ Contentions
The Complainant asserts, inter alia, as follows:
(i) that the Domain Name is confusingly similar to the Complainant’s name and its registered trademarks for LEGO;
(ii) that the Respondents have no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
In respect of (i), the Complainant claims that the dominant element of the Domain Name is LEGO and that this is a well-known mark. The Complainant says that the addition of the suffix is not sufficient to prevent the Domain Name from being confusing similar to the Complainant’s registered trademarks because the word and numbers “Technic” and “8110” are product designations of the Complainant which, in fact, serve to strengthen the confusing similarity of the Domain Name to the Complainant’s registered trademarks.
In respect of (ii), the Complainant states that there is no indication that either of the Respondents is commonly known by the name “legotechnic8110” or any of its component parts and that the Complainant has not licensed the use of its trademarks by either of the Respondents. The Complainant says that the use made of the Domain Name at the time of filing the Complaint was not one of a genuine reseller of the Complainant’s products, it simply provided an opportunity for click-through revenue from Amazon. As a result, and given the fame of the LEGO trademark, the Complainant argues, neither of the Respondents could claim any actual or contemplated bona fide or legitimate use of the Domain Name, relying on Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055; Dr. Ing. h.c. F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312 and Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314, amongst others.
In support of (iii), the Complainant asserts that, on the date the Domain Name was registered, each of the Respondents must have been aware of the Complainant’s rights in its LEGO trademarks, and this is of course supported not only by the specific product reference in the Domain Name but also the actual use made of the Domain Name at the time of filing the original Complaint. The Complainant also relies upon the use of the Domain Name for the sole purpose of gaining pay-per-click revenue from Amazon and failure of the Respondents to respond to the Complainant’s correspondence regarding the Domain Name, relying on The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC, WIPO Case No. Case No. 2009-0057, News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623, Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598 and America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460. In such circumstances, the Complainant argues, the registration and use of the Domain Name at the time of filing the original Complaint must be regarded as registration and use in bad faith, in that it involves using the Domain Name in order intentionally to attempt to attract, for commercial gain, Internet users to other on-line locations, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondents’ website in the terms of paragraph 4(b)(iv) of the UDRP; see Philip Morris Inc. v. Alex Tsypkin, WIPO Case No. D2002-0946.
The Complainant requests that the Domain Name be transferred to it.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy.
The Respondents have had ample opportunity to respond to the allegations of the Complainant and have not done so. The Respondents, failing to respond, have not explained either the registration or use of the Domain Name.
Paragraph 15(a) of the Rules instructs the Panel to decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. In the absence of any response from the Respondents, the onus upon the Complainant will be satisfied if a conclusion which is capable of being drawn from the evidence, provided by the Complainant that is found by the Panel to be credible, and not contradicted by the Respondents.
A. Identical or Confusingly Similar
It is clear to the Panel that the Complainant is the owner of the LEGO trademark.
In this case, the addition of the word and numbers “Technic” and “8110” do not serve to distinguish the Domain Name from the Complainant’s trademark because these are specific product designations of the Complainant that would be known to internet users interested in seeking out the Complainant or its products. Indeed, the Panel finds that these additional elements in the Domain Name would, if anything, exacerbate the likely deception of such Internet users seeking the latest of the Complainant’s products. The dominant impression given by the Domain Name remains the Complainant’s trademark LEGO.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark LEGO and, accordingly, paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The Complainant’s name and mark is world famous. The Respondents were entitled to demonstrate some right or legitimate interest with respect to the Domain Name, and paragraph 4(c) of the Policy gives good examples of how the Respondent could have done so. The Respondents have given no such explanation.
The use of a domain name to attract Internet users interested in the Complainant’s products, as the Domain Name was undoubtedly intended to do, solely for the purpose of generating pay-per-click revenue does not amount to a legitimate interest in a domain name for the purposes of the Policy; see the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), sections 2.3 and 2.6.
The Panel, therefore, agrees with the Complainant’s submission that the Respondents do not have any rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy directs that the Complainant must establish that the Domain Name has been registered and is being used in bad faith.
So far as concerns the first limb of this requirement, registration in bad faith, the Panel notes the following:
(a) the Domain Name was registered at a time when the Respondents must have been aware of the pre-existing rights of the Complainant, and the Domain Name itself and the only use that has been made of it make this apparent;
(b) there is virtually no commercial use which could be made of the Domain Name that would not infringe the legal rights of the Complainant and be misleading and deceptive upon the public; and
(c) if the Respondents had any intention to make some legitimate use of the Domain Name, they have had opportunity either to do so or otherwise to explain its conduct, but have done neither.
Therefore the Panel concludes that the Respondents registered the Domain Name with bad faith, in the sense required by the Policy.
Turning now to the second limb of this requirement, “use in bad faith”:
(a) the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its registration as a trademark and use in many countries;
(b) the Respondents have provided no evidence whatsoever of any actual or contemplated good faith use by it of the Domain Name, and its use at the time of filing the Complaint was plainly intended to attract Internet users interested in the Complainant’s product for the purpose of gaining pay-per-click revenue;
(c) taking into account all of the above, the Panel finds that it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondents that would not be illegitimate;
(d) in the Panel’s view, the fact that the Domain Name is not now used at all does not change the position. The Respondents have already shown their intention to use the Domain Name in bad faith, and to leave it with them would only permit them to do so again. The fact that the Respondents have not responded to the Complainant’s approaches is a relevant consideration, to which the Panel would add the manifestly inadequate address the second Respondent provided for the WhoIs register, that is, “jakarta, jakarta, jakarta”; see the WIPO Overview 2.0, section 3.2.
The Panel therefore concludes that the Respondents have registered and are using the Domain Name in bad faith.
In the light of the findings in paragraph 6 above, the Panel concludes that:
- the Domain Name <legotechnic8110.com> is confusingly similar to the trademark LEGO belonging to the Complainant; and
- the Respondents have no rights or legitimate interests in the Domain Name; and
- the Domain Name has been registered and is being used in bad faith.
Accordingly, the Panel orders in accordance with paragraphs 4(i) of the Policy and 15 of the Rules that the Domain Name <legotechnic8110.com> be transferred to the Complainant.
William Peter Knight
Dated: January 16, 2012