World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Tony To / Domains By Proxy, LLC

Case No. D2012-0103

1. The Parties

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

The Respondent is Tony To of Marysville, Washington, United States of America and Domains By Proxy, LLC of Scottsdale, Arizona, United States of America.

2. The Domain Name and Registrar

The disputed domain name <lego5508.com> (‘the Disputed Domain Name’) is registered with Wild West Domains, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 20, 2012. On January 20, 2012, the Center transmitted by email to Wild West Domains, LLC a request for registrar verification in connection with the Disputed Domain Name. On January 23, 2012, Wild West Domains, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 25, 2012, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed a request for amendment to the Complaint on January 25, 2012.

The Center verified that the amended 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 January 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was ultimately April 12, 2012.

In the meantime, there were indications that the Respondent was prepared to transfer the Disputed Domain Name to the Complainant. The proceedings accordingly were suspended on two occasions at the request of the Complainant but no agreement to transfer was entered into and the proceedings were reinstituted at the request of the Complainant.

The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 13, 2012.

The Center appointed Michael D. Cover as the sole panelist in this matter on April 24, 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 Complainant is a limited company incorporated in Denmark. The Complainant is the owner of the LEGO trademark and all other trademarks used in connection with the famous LEGO brands of construction toys and other products. The Complainant and its licensees, through their predecessors in business, commenced use of the LEGO trademark in the US in 1953 and the annual revenue of the LEGO Group of Companies has grown to more than USD 2.8 billion. LEGO products are sold in more than 130 countries throughout the world. The Complainant is also the owner of a great number of domain names consisting of or containing the word ‘Lego’ as set out in Annex 8 to the Complaint. LEGO is rated as a ‘Superbrand ‘in a report set out in Annex 9 to the Complaint, which shows LEGO as number 8 of the most famous trademarks and brands in the world.

The Respondent Domains by Proxy, LLC has an address in Scottsdale, Arizona, United States. Tony To has an address in Marysville, Washington, United States.

5. Parties’ Contentions

A. Complainant

The Complainant maintains that its LEGO trade mark not only has substantial inherent distinctiveness but also has acquired substantial reputation through use. It further submits that the LEGO trademark is a well-known trade mark in accordance with the provisions of Article 6bis of the Paris Convention.

The Complainant submits that the Disputed Domain Name is confusingly similar to its LEGO trademark in which the Complainant has rights. It cites various UDRP decisions where LEGO has been found to be a well-known mark and that the addition of the numerical element is not relevant and has no impact on the overall impression of the dominant part of the name LEGO. It concludes that the Complainant is the owner of the well-known trade mark LEGO and that the Disputed Domain Name is clearly confusingly similar to the Complainant’s registered trademark LEGO.

The Complaint goes on to submit that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. It states that the Respondent has no registered trade marks corresponding to the Disputed Domain Name and that no licence or authorization has been given by the Complainant to the Respondent. It cites in support its contentions Guerlain S.A. v. Peikan <guerlain.net> WIPO Case No. D2000-0055, where the Panel found that, in the absence of any licence or permission from the Complainant, no actual of contemplated bona fide or legitimate use could be claimed by the Respondent. The Complainant also notes that the Respondent is not an authorized dealer of the Complainant and has never had a business relationship with it.

The Dispute Domain Name having been registered on September 6, 2011, the Complainant states that it is highly unlikely that the Respondent would not have known of the LEGO trademark. The Complainant goes on to state that the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. Instead, the Disputed Domain Name resolves to a site displaying links to the on-line sale of toys, thereby using the Disputed Domain Name for commercial gain. The Complainant concludes that the Respondent has no rights or legitimate interest in respect of the Disputed Domain Name.

In relation to the Dispute Domain Name having been registered and used in bad faith, the Complainant submits that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to the website to which the Disputed Domain Name redirects, by creating a likelihood of confusion with the Complainant’s trademark LEGO. The Complainant summarizes by saying that the Respondent should be considered to have registered and be using the Disputed Domain Name in bad faith.

The Complainant requests the Panel to decide that the Disputed Domain Name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

The Complainant is required to demonstrate on the balance of probabilities that the Disputed Domain Name is identical or confusingly similar to its trademark LEGO, that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel accepts the submissions of the Complainant that the Disputed Domain Name is confusingly similar with the well-known trademark LEGO in which the Complainant has rights. The addition of the non-distinctive matter ‘5508’ and also ‘.com’ does not detract from the dominant element ‘Lego’. This has been established in many UDRP decisions, including Nintendo of America Inc. v. Fernando Sascha Gutierrez <unlimitedwiidonwloads.com> WIPO Case No. D2009-0434, where the panel found that the addition of non-distinctive terms does nothing to reduce the confusing similarity of the disputed domain name in question with the complainant’s well-known trademark.

B. Rights or Legitimate Interests

The Panel also accepts that Respondent has no rights or legitimate interests in the Disputed Domain Name. Such use as has taken place of the Disputed Domain Name has not been bona fide, as it relies on confusing links to on-line toy offerings, does not involve the Respondent being known by the Disputed Domain Name and cannot be said to be legitimate noncommercial or fair use of the Disputed Domain Name, without the intent for commercial gain to misleadingly divert consumers. The Respondent has not been licensed or authorized by the Complainant to use the Complainant’s well-known trademark LEGO.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy contains a non-exhaustive list of circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Sub-paragraph (iv) is applicable in relation to this Complaint, in that the Panel finds that the Respondent has been using the Disputed Domain Name to attract, for commercial gain, internet users to the Respondent’s website by creating a likelihood of confusion with Complainant’s well-known trademark LEGO by creating a likelihood of confusion. The Panel accepts that it would have been highly unlikely, as submitted by the Complainant, that the Respondent would have been unaware of that well-known trademark when the Respondent registered the Disputed Domain Name in late 2011, the well-known trade mark LEGO having been in use by that point for nearly 60 years.

The Panel accordingly finds that the Disputed Domain Name has been registered and is 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 Disputed Domain Name <lego5508.com> be transferred to the Complainant.

Michael D. Cover
Sole Panelist
Dated: May 8, 2012

 

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