WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Above.com PTY. LTD
Case No. D2012-0121
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services AB, Sweden.
The Respondent is Above.com PTY. LTD of Beaumaris, Australia.
2. The Domain Names and Registrar
The disputed domain names <legonijago.com> and <legoninjaco.com> are registered with Key-Systems GmbH dba domaindiscount24.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 24, 2012.
On January 24, 2012, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the disputed domain names. On January 26, 2012 and on January 30, 2012, Key-Systems GmbH dba domaindiscount24.com transmitted by email to the Center its verification responses confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain names.
On January 31, 2012, 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 Paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint per email and by courier. The proceedings commenced on January 31, 2012. In accordance with Paragraph 5(a) of the Rules, the Respondent was required to submit a response by February 20, 2012. However, the Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 21, 2012.
The Center appointed Michael A.R. Bernasconi as the Panel in this matter on March 2, 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 Paragraph 7 of the Rules. Absent to exceptional circumstances, the decision is anticipated by March 16, 2012, in accordance with Paragraph 15 of the Rules.
The language of the proceedings is English in accordance with Paragraph 11(a) of the Rules.
4. Factual Background
The Complainant is a company domiciled in Billund, Denmark and is the owner of the trademark LEGO and several other trademarks used in connection with the LEGO trademark. The Complainant and its licensees, through their predecessors, commenced use of the LEGO trademark in the United States of America during 1953, to identify construction toys made and sold by them. Furthermore, the Complainant is the owner of more than 1,700 domain names containing the term LEGO.
The Respondent is the registered owner of the disputed domain names <legonijago.com> and <legoninjaco.com> (hereinafter: "Disputed Domain Names"). The Disputed Domain Names were registered on March 31, 2011 and on May 24, 2011, respectively.
With an email dated November 29, 2011, the Complainant requested the Respondent to transfer the Disputed Domain Names to the Complainant. Since the Respondent did not react, the Complainant sent a further email to the Respondent on December 5, 2011, requesting again the Respondent to transfer the Disputed Domain Names. On December 19, 2011, the Complainant sent a further email to the Respondent, requesting the Respondent to forward the letter to the registrant of the domain name.
On March 5, 2012, the Panel performed an informal check of the Disputed Domain Names from a computer with a Swiss IP address. This test revealed that the two web pages to which the Internet user was directed merely contained sponsored links without any further relevant content. The sponsored links directed the user to commercial web pages related to toys, online games and web pages with age-restricted content.
5. Parties’ Contentions
The Complainant contends that the Disputed Domain Names are confusingly similar to the Complainant's trademark, since both Disputed Domain Names comprise the word LEGO, a well-known trademark of high reputation. The Complainant adduces that the addition of the suffixes "nijago" and "ninjaco" to "lego" are irrelevant and do have not have any further impact on the overall impression of the dominant part of the Disputed Domain Names. Additionally, the Complainant asserts that the suffixes "nijago" and "ninjaco" are misspelled versions of the Complainant's product line "Ninjago Masters of Spinjitzu" (hereinafter: "Ninjago"). Therefore, according to the Complainant, the use of these suffixes in the Disputed Domain Names are rather fitted to strengthen the impression that the Disputed Domain Names belong to the Complainant. According to Complainant, this leads to a high risk of confusion and a tarnish of the trademark LEGO.
Furthermore, the Complainant brings forward that the Respondent has no rights to use the trademark name LEGO since the Respondent is neither the owner of the trademark nor is the Respondent the holder of a license or other authorization of any other kind issued by the Complainant. Based on the reputation of the trademark name LEGO, the Complainant additionally assesses that the Respondent does not use the Disputed Domain Names with a bona fide offering of goods and services. According to the Complainant, it is the Respondent's intention to generate traffic to websites displayed as sponsored links.
In addition, the Complainant contends that the Disputed Domain Names were registered and are being used in bad faith. In support of its argument that LEGO is a well-known trademark, the Complainant refers to several UDRP cases in which the respectively registered domain name comprised the name LEGO in combination with other words. Furthermore, the Complainant points out that it contacted the Respondent several times and advised it that the use of the Complainant's trademark LEGO constitutes a violation of Complainant's rights. The Complainant furthermore brings forward that the Respondent uses the websites relating to the Disputed Domain Names intentionally for commercial gain by creating a likelihood of confusion with the Complainant's trademark LEGO.
The Respondent did not reply to the Complainant’s contentions. Accordingly, and based on Paragraph 14(b) of the Rules, the Panel shall draw such inferences from this default of the Respondent as it considers appropriate.
6. Discussion and Findings
According to Paragraph 4(a) of the Policy, the Complainant must prove that
(A) The Disputed Domain Names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and that
(B) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and that
(C) the Disputed Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The visual analysis of the Disputed Domain Names <legonijago.com> and <legoninjaco.com> reveals that they both comprise the Complainant's trademark name LEGO in its entirety. Previous UDRP Panels have held that identity or confusing similarity is sufficiently established if "a domain name wholly incorporates a complainant's registered mark" (see Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302 with further references). The Panel follows this finding. Furthermore, the Disputed Domain Names contain the additional generic suffixes "nijago" and "ninjaco", respectively. Although these suffixes are not identical to the name of the Complainant's product line "Ninjago", they obviously imitate said name. Since the trademark name LEGO as well as the suffixes "nijago" and "ninjaco" directly relate to the Complainant and its products, the risk is high that internet users are misled into thinking that the Complainant is the registrant of the Disputed Domain Names or otherwise associated therewith.
Moreover, the top-level suffix (".com") in the Disputed Domain Names is of no significance in the present case and therefore does not have any influence on the Panel's conclusion regarding identity or confusing similarity (see Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698).
Consequently, the Panel has no difficulty in finding that the prerequisite of identity or confusing similarity as a first criterion, as per Paragraph 4(a) of the Policy, is established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy defines the circumstances which, if proved, establish a registrant's right or legitimate interests to a disputed domain name.
The Complainant convincingly established that the Respondent has not been authorized to use the trademark LEGO. Furthermore, the Respondent is neither commonly known by the Disputed Domain Names nor adduces itself arguments why it shall have the right or a legitimate interest in the Disputed Domain Names.
It remains undisputed that the Respondent does not use and has not made preparations to use the Disputed Domain Names or a name corresponding to the Disputed Domain Names in connection with a bona fide offering of goods or services. An informal check performed by the Panel on March 5, 2012, from a computer with a Swiss IP address revealed that the Respondent itself neither offers goods nor services. The sole relevant content of the two web pages is a list of "Sponsored Links" based on the respective IP address of the Internet user that diverts the Internet traffic to web pages related to toys, online games and web pages with age-restricted content. Such conduct serves the purpose of generating revenues, e.g. from the advertised pay-per-click products. Even though the web page displayed no content relating to the Complainant at the time the Panel performed the informal check, it is probable that an Internet user might be mislead into thinking that the web page is related or even operated by the Complainant due to the two parts in the Disputed Domain Names directly relating to the Complainant.
The Panel hence draws the conclusion that Paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Regarding the registration and the use of the Disputed Domain Names in bad faith according to Paragraph 4(a)(iii) of the Policy, the Panel considers the following.
LEGO is a world-famous trademark benefitting from a very high degree of reputation (see only LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840 and LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680). The Complainant's product line "Ninjago" is advertised throughout the Internet. Therefore, a simple Internet search before the registration of the Disputed Domain Names would have helped to resolve all doubt, if there has ever been any. Furthermore, as convincingly established by the Complainant, the LEGO trademark had been registered in the United States of America by the predecessor of LEGO in 1953. In 2011, at the point in time when the Respondent registered the Disputed Domain Names, the LEGO trademark had been registered in more than 100 countries. It is therefore highly improbable that the Respondent was unaware of the existence of the Complainant's trademark prior to the registration of the Disputed Domain Names. After the registration, the Complainant requested the Respondent several times by email and letter that the Disputed Domain Names be transferred to the Complainant. Consequently, the Panel draws the conclusion that the Respondent knew of the Complainant, its products and its trademarks prior to and after the registration of the Disputed Domain Names.
Finally, it is rather obvious that the Disputed Domain Names are being used by the Respondent in bad faith. By exploiting the fame of Respondent's trademark LEGO and the product line "Ninjago", the Respondent attempts to attract Internet users with the intention to find the Complainant's website. Since both Disputed Domain Names lead to web pages that merely contain a list of links, the Panel draws the conclusion that these web pages have the sole purpose to generate traffic to other websites in order to generate income. Moreover, it is held by previous UDRP panels, "the misspelling is compelling evidence of the Respondent's use in bad faith under Paragraph 4(b)(iv) of the Policy." (Arthur Guinness Son & Co. (Dublin) Limited and Diageo Ireland v. Denis Jalbert, WIPO Case No. D2003-0784)
Under these circumstances and taking into consideration the fact that the Respondent failed to provide any evidence whatsoever of any actual or contemplated good faith use by itself of the Disputed Domain Names, the Panel holds that the Respondent registered and used the Disputed Domain Names in bad faith.
Therefore, Paragraph 4(a)(iii) of the Policy is satisfied.
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 Names <legonijago.com> and <legoninjaco.com> be transferred to the Complainant.
Michael A.R. Bernasconi
Dated: March 16, 2012