World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. F.H.U. Betternet Rafal Biegun

Case No. D2012-0266

1. The Parties

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

The Respondent is F.H.U. Betternet Rafal Biegun, Sucha Beskidzka, Poland.

2. The Domain Name and Registrar

The disputed domain name <legodisney.com> (the "Disputed Domain Name") is registered with Az.pl, Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2012. On February 13, 2012, the Center transmitted a request for registrar verification by email to Az.pl, Inc. in connection with the Disputed Domain Name. On February 15, 2012, Az.pl, 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 Paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint by email and by courier, and the proceedings commenced on February 17, 2012. In accordance with the Paragraph 5(a) of the Rules, the due date for Response was March 8, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 12, 2012.

On February 17, 2012, the Center informed the Registrar by email that the Disputed Domain Name is set to expire on March 22, 2012 and made reference to Paragraph 3.7.5.7 of the ICANN Expired Domain Deletion Policy. According to this provision, a complainant shall have the option to renew or restore a disputed domain name under the same commercial terms as the registrant in the event that the domain name, which is the subject of a UDRP dispute, expires during the course of the dispute. Furthermore, the Center required confirmation from the Registrar that the Disputed Domain Name will be placed in the Registrar LOCK status, and that the Disputed Domain Name will remain in such status after the lapse of the expiry date until the UDRP proceedings are concluded. Furthermore, the Center asked the Registrar whether the parties are required to perform any action to keep the Disputed Domain Name under Registrar LOCK status so that the administrative procedure can continue as required under the Policy. In its email of February 22, 2012, the Registrar demanded payment of the renewal fee either from the Complainant or the Respondent. On February 24, 2012, the Complainant informed the Registrar by email that it issued the renewal fee for the Disputed Domain Name and brought this to the Center's attention via email on February 28, 2012.

The Center appointed Michael A.R. Bernasconi as the sole panelist in this matter on March 21, 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.

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 2400 domain names containing the term “lego” including the domain name <lego.pl>.

The Respondent is the registered owner of the Disputed Domain Name, i.e. <legodisney.com>. The Disputed Domain Name was registered on March 22, 2011.

With an email dated May 9, 2011, the Complainant requested the Respondent to transfer the Disputed Domain Name to the Complainant. Since the Respondent did not react, the Complainant sent a further email to the Respondent on May 17, 2011, requesting again the Respondent to transfer the Disputed Domain Name. On 15 June, 2011, the Complainant sent an email communication containing a "final reminder" to the Respondent, requesting compliance with the Complainant's requests. However, the Respondent failed to answer to any of these communications.

On March 28, 2012, the Panel performed an informal check of the Disputed Domain Name from a computer with a Swiss IP address. This test revealed that the Disputed Domain Name redirected Internet users to a web page that merely contained a list of links ("Sponsored Listings") without showing any further relevant content. The "Sponsored Listings" consisted of links that directed the user to web pages that related to the Complainant's LEGO trademark and to web pages that contained online games or age-restricted content.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Disputed Domain Name contains the word "lego" and is therefore confusingly similar to the Complainant's LEGO trademark, a well-known trademark of high reputation. Furthermore, the Complainant argues that the term "disney" in the Disputed Domain Name does not have any impact on the overall impression of a user because "lego" allegedly is the dominant part of the domain name and therefore instantly recognizable. In addition, the Complainant points out that the term "disney" is identical to the name of the DISNEY trademark owned by Disney Enterprises, Inc. and that the Complainant concluded a valid manufacturing agreement with said company which allows the Complainant amongst other things to use the DISNEY logo on its packaging. Therefore, the Complainant is of the view that anyone who sees the Disputed Domain Name is bound to mistake it for a domain name related to the Complainant.

Furthermore, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant adduces that the Respondent has no license or authorization of any other kind that would allow it to use the trademark LEGO. It also makes the argument that the Respondent is not an authorized reseller of the Complainant's products. Due to the fame of the LEGO trademark, it is very unlikely in the eyes of the Complainant that the Respondent was unaware of the Complainant's legal rights in the trademark LEGO at the point in time of the registration of the Disputed Domain Name.

Finally, the Complainant contends that the Disputed Domain Name was registered and is 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 constituted a violation of Complainant's rights. The Complainant furthermore brings forward that the Respondent uses the web site relating to the Disputed Domain Name intentionally for commercial gain by creating a likelihood of confusion with the Complainant's trademark LEGO.

B. Respondent

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 Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainants has rights; and that

(B) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and that

(C) the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

An analysis of the Disputed Domain Name <legodisney.com> reveals that it comprises two parts, one of which is identical to the Complainant's trademark LEGO. 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.

However, in the case at hand, the Disputed Domain Name contains a further part, which is identical to the DISNEY trademark. Said trademark is owned by Disney Enterprises, Inc., is registered in many countries all over the world and benefits from a very high degree of reputation (Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489). Disney Enterprises, Inc., however, is not a party to the present proceedings. Therefore, the question needs to be answered whether the insertion of the DISNEY trademark in the present case conflicts with the perception of identity or confusing similarity with regard to the LEGO trademark, given that DISNEY is a very famous third party trademark. For the following reasons, the Panel answers this question in the negative, i. e., the Disney trademark does not conflict with the perception of identity or confusing similarity.

In the context of disputed domain names that comprised two trademarks, previous UDRP panels consistently came to the conclusion that identity or at least confusing similarity is established in cases where the complainant was the owner of both trademarks or in a constellation where two complainants were the owner of one respective trademark each (Konica Corporation, Minolta Kabushiki Kaishaka aka Minolta Co., Ltd. v. IC, WIPO Case No. D2003-0112; Saab Automobile AB et al. v. Joakim Nordberg, WIPO Case No. D2000-1761). Even in cases where the domain name in dispute contained a third party trademark, i.e. a trademark of which the Complainant was neither the owner nor a licensee, previous UDRP panels consistently held that the inclusion of such third party trademark does not itself change the fact that the disputed domain name shall be considered confusingly similar (F. Hoffmann-La Roche AG v. Softech Ltd., DNS Administrator (gold), WIPO Case No. D2007-1699; Chevron Corporation v. Young Wook Kim, WIPO Case No. D2001-1142).

Furthermore, as convincingly established by the Complainant, LEGO Systems A/S, a sister company of the Complainant, and Disney Enterprises, Inc. entered into a valid manufacturer agreement on April 13, 2010. According to said agreement, LEGO Systems A/S is provided with a license that amongst others allows LEGO Systems A/S to produce LEGO-toys that make use of brands such as "Toy Story" or "Cars" owned by Disney Enterprises, Inc. Additionally, said license allows LEGO Systems A/S to use the DISNEY-logo on LEGO packaging. As convincingly established by the Complainant, LEGO Systems A/S already made significant use of said license. Accordingly, the Panel is of the view that Internet users who legitimately try to find the Complainant's website and may even be aware, directly or indirectly, of the cooperation between Disney Enterprises, Inc. and LEGO Systems A/S, are misled into thinking that the Complainant is the registrant of the Disputed Domain Name or otherwise associated therewith.

The top-level suffix (".com") in the Disputed Domain Name 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).

Therefore, the Panel finds 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 adduced that the Respondent has not been authorized to use the trademark LEGO. Furthermore, the Respondent is neither commonly known by the Disputed Domain Name nor adduces itself arguments why it shall have the right or a legitimate interest in the Disputed Domain Name.

Further, it remained undisputed that the Respondent does not use and has not made preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. The informal check performed by the Panel on March 28, 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 web page is a list of "Sponsored Listings" 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. Some links even contain links to domain names of which the Complainant is already the registrant. For these reasons, it is very probable that an Internet user might be misled into thinking that the web page is related or even operated by 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

As consistently held by previous UDRP panels, LEGO is a world-famous trademark benefitting from a very high degree of reputation (see 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 predecessor of LEGO has registered the LEGO trademark in the United States of America in 1953 (see LEGO Juris A/S v. Kang Zheng, WIPO Case No. D2010-1924). In 2011, at the point in time when the Respondent registered the Disputed Domain Name, the LEGO trademark had been registered in more than 100 countries. Furthermore, the Complainant convincingly established that it is the registrant of the domain name <lego.pl>, registered in Poland, the country where the Respondent is based. Therefore, it is highly unlikely that the Respondent did not know of the Complainant's trademark LEGO at the time of the registration of the Disputed Domain Name. After the registration, the Complainant informed the Respondent several times by email and letter that the registration and use of the Disputed Domain Name violated the Complainant's trademark rights. 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 Name (see Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488 where the respective UDRP panel comes to the same conclusion).

Finally, it is rather obvious that the Disputed Domain Name was being used by the Respondent in bad faith. The Respondent formed the Disputed Domain Name of two very well known brand names. Thereby, the Respondent not only tries to benefit from the fame of the LEGO trademark, but in the view of the Panel also tries to benefit from the cooperation between LEGO Systems A/S and Disney Enterprises, Inc. Since the Disputed Domain Name leads to a web page that merely contains a list of links, the Panel draws the conclusion that this web page has the sole purpose to generate traffic to other websites in order to generate income.

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 Name, the Panel holds that the Respondent registered and used the Disputed Domain Name 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 <legodisney.com> shall be transferred to the Complainant.

Michael A.R. Bernasconi
Sole Panelist
Dated: April 18, 2012

 

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