WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. UAB “Memelio zaislai”
Case No. D2011-2028
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is UAB "Memelio zaislai of Klaipeda, Lithuania.
2. The Domain Name and Registrar
The disputed domain name <legobaltic.com> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2011. On November 17, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On November 17, 2011, Tucows Inc. 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 November 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 14, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 15, 2011.
On December 15, 2011, the Respondent sent an email to the Center indicating that it was having difficulty with the Center’s correspondence being in English and that it would like to forward disputed domain name to the Complainant. On December 20, 2011, the Complainant sent an email to the Respondent asking it to transfer the disputed domain name and indicating that the Respondent may continue its website activity under a different domain name that does not incorporate the trademark LEGO. On December 20, 2011, the Center notified the parties that unless it is instructed to suspend or continue the proceeding by December 21, 2011, it will proceed with the appointment of the Panel. By email of the same date, i.e. December 20, 2011, the Respondent again indicated that the Center could do what it wanted with the disputed domain name. On December 21, 2011, the Complainant requested that the Center suspend the proceeding and, by separate email, provided instructions to the Respondent for transferring the disputed domain name to it. Then on January 19, 2012, the Respondent again emailed the Center indicating that it could do what it needed to with the disputed domain name. On the same day, i.e. January 19, 2011, the Complainant requested that the Center reinstitute the proceeding, which the Center did as of January 20, 2011.
The Center appointed R. Eric Gaum as the sole panelist in this matter on January 27, 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.
After receiving notification of the Panel appointment, by email dated January 27, 2012 the Respondent notified the Center that it had no idea what was so difficult about linking the disputed domain name directly to <lego.com>, that it found the various emails from the Center difficult to understand, and that “lego is lego and we are lego Baltic now and in future.” By email dated January 30, 2012, the Complainant emailed the Respondent again asking if it is willing to transfer the domain name. By email dated February 9, 2012, the Respondent states that “since February 8. 2012 legobaltic.com should be forwarded to lego.com and we cancel our domain at iv.lt hope you can work with it”.
4. Factual Background
The Complainant LEGO Juris A/S, based in Denmark, is the owner of the trademark LEGO and all other trademarks used in connection with the LEGO brand of construction toys and other LEGO branded products.
The Complainant and its licensees, through their predecessors, commenced use of the LEGO mark in the United States during 1953, to identify construction toys made and sold by them.
Provided as Annex 6 to its Complaint are lists of Complainant’s registered trademarks on which this Complaint is based including a Community trademark. Lithuania is part of the European Union member countries and the Community trademark is therefore covered in Lithuania, where the Respondent is located.
The Respondent is UAB "Memelio zaislai of Klaipeda, Lithuania doing business as Memeltoys.
5. Parties’ Contentions
LEGO Juris A/S is the owner of the trademark LEGO and all other trademarks used in connection with the famous LEGO brand of construction toys and other LEGO branded products. The Complainant's licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights, in Lithuania and elsewhere.
The Complainant and its licensees, through their predecessors, commenced use of the LEGO mark in the United States during 1953, to identify construction toys made and sold by them. Their use of the LEGO mark has been extensive, exclusive and continuous since 1953. Over the years, the business of making and selling LEGO brand toys has grown remarkably. By way of example, the revenue for the LEGO Group in 2009, was more than USD2,8 billion. 2010 was another good year for the LEGO Group. Its global market share rose from 4.8% at the close of 2009 to approx. 5.9% at end 2010. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries.
The Complainant is also the owner of more than 1000 domain names containing the term “LEGO”. It is the strict policy of the Complainant that all domain names containing the term “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. For instance, the official top 500 Superbrands for 2009/10, provided by Superbrands UK, shows 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>.
The dominant part of the disputed domain name comprises the word “LEGO”, which is identical to the registered trademark LEGO, which has been registered by the Complainant as a trademark and domain names in numerous countries all over the world. The disputed domain name is confusingly similar to the Complainant’s world famous trademark LEGO.
The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed 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 it any legitimate rights in the name. Consequently, the Respondent may not claim any rights established by common usage.
The disputed domain name is still connected to a website which leads the visitor to the Respondent’s own online shopping site by inviting the Internet user to click on the registered logos DUPLO (which also belongs to the Complainant) or LEGO. The website has not evolved over time to purport any other intentions other than commercially benefit from its registration and use. The Respondent has not been granted use of the LEGO or DUPLO logo on the website. Consequently, the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.
The Respondent did not reply to the Complainant’s contentions. However, Respondent did send several emails to the Center and the Complainant, summarized above, indicating its consent to the transfer of the disputed domain name.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, a “Panel shall 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." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has 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.
In accordance with paragraph 14(b) of the Rules, the Panel may draw such inferences as are appropriate from the Respondent’s failure to reply to the Complainant’s assertions and evidence or to otherwise contest the Complaint. The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 (January 20, 2003). As a result of the Respondent’s default, the Panel may even accept as true all of the allegations of the Complaint. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (February 29, 2000).
A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of a number of United States and foreign trademark registrations for the LEGO trademark with use in interstate commerce claimed back to 1953 and first use back to 1934 (see, e.g., United States Registration No. 1,018,875). Based on the registered trademarks and the Complainant’s continuous use of the marks, the Complainant clearly has rights in the marks.
The disputed domain name is confusingly similar to the Complainant’s trademark LEGO. The disputed domain name incorporates the Complainant’s well-known registered trademark LEGO. The addition of the suffix “baltic” is not relevant and has little, if any, impact on the overall impression of the dominant part of the name, “LEGO”, which is instantly recognizable. The suffix is simply a territorial distinguisher referring to the Baltic countries. The Respondent resides in Lithuania, so the suffix simply represents the Respondents origin and place of business. The addition of a geographic qualifier is insufficient to prevent the composite disputed domain name from being confusingly similar to the Complainant’s mark. AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553 (July 28, 2000). Nor does the addition of the generic top-level domain “.com” have any impact on whether the disputed domain name and trademark are confusingly similar.
The Panel finds that the disputed domain name is confusingly similar to the LEGO trademarks, and that the Complainant has established it has rights in the trademarks, pursuant to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several circumstances, without limitation, that if found by the Panel shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name for purposes of paragraph 4(a)(ii).
There is no evidence in the record that would indicate that the Respondent has any rights or legitimate interests in respect of the disputed domain name. Presumably, the Respondent would have provided a response to the Complaint had it had any rights or legitimate interests.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names pursuant to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, which are set forth in paragraph 4(b) of the Policy, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that the holder 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 trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder’s website or location.
The Complainant first tried to contact the Respondent on July 13, 2011 through a cease and desist letter, in which the Respondent was informed that the unauthorized use of the LEGO trademark within the disputed domain name violated the Complainant’s rights in the trademark. The Complainant requested a voluntary transfer of the disputed domain name and offered compensation for the expenses of registration and transfer fee, not exceeding out of pocket expenses. No reply was received so a reminder was sent on July 26, 2011. On August 18, 2011 the Respondent replied and said they couldn’t read the attachment. The Complainant attached the letter once more by replying to the Respondent.
After this the Complainant never heard back from the Respondent. The Complainant also explained in its initial email the same content as described in the attached letter. The Respondent never complied with the request to transfer the disputed domain name. The failure to respond to a cease and desist letter, or a similar attempt of contact, has been considered relevant in a finding of bad faith. News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623 (January 18, 2001).
Until February 8, 2012, after the Panel had been appointed, the disputed domain name was still connected to a website that led visitors to the Respondent’s own online shopping site by inviting the Internet user to click on the registered logos DUPLO or LEGO. The website had not evolved over time to purport any other intentions other than commercially benefit from its registration and use. The Respondent had not been granted use of the LEGO or DUPLO logo on the website. Consequently, the Respondent was using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946 (February 13, 2003).
Accordingly, the Panel finds that the Complainant has established that the Respondent registered and used the disputed domain names in bad faith, pursuant to paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <legobaltic.com> be transferred to the Complainant.
R. Eric Gaum
Dated: February 10, 2012