World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Oneandone, Private registration / Thang Do

Case No. D2012-0470

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 Oneandone, Private registration of Pennsylvania, United States of America / Thang Do of Victoria, Australia.

2. The Domain Names And Registrar

The disputed domain names <legoalienconquestalienmothership.com> and <legoninjagofiretemplex.com> (the “Domain Names”) are registered with 1&1 Internet AG.

3. Procedural History

Two separate Complaints were filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2012. On March 8, 2012, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the Domain Name <legoninjagofiretemplex.com> and on March 9, 2012 in connection with the Domain Name <legoalienconquestalienmothership.com>. On March 9, 2012 and on March 12, 2012, 1&1 Internet AG transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaints. The Center sent an email communication to the Complainant for the Domain Name <legoninjagofiretemplex.com> on March 14, 2012 and for Domain Name <legoalienconquestalienmothership.com> on March 15, 2012, providing the registrant and contact information disclosed by 1&1 Internet AG, and inviting the Complainant to submit an amendment to the Complaints. The Complainant filed an amendment to the Complaint on March 15, 2012, requesting consolidation of the two Complaints.

The Center verified that the Complaint together with the amendment to 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 March 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 5, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 10, 2012. On March 15 and on March 29, 2012, a third party contacted by email the Complainant and the Center.

The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on April 13, 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 in this administrative proceeding is LEGO Juris A/S. The Complainant is the owner of the LEGO trade mark, which is used extensively in relation to the well-known brand of children’s construction toys. The use of the LEGO brand was started in 1953, and has since grown into a group of companies which in 2009 had revenue of more than USD 2.8 billion.

The Complainant is the registered proprietor of a substantial number of trade mark registrations for the LEGO mark and other related marks in many other countries throughout the world as set out in Annex 6 to the Complaint. For example only these registrations include the following Community trade mark registration:

Mark

Territory

Registration number

Date of Registration

Class of goods and services

LEGO

CTM

0039800

05/10/1998

3, 9, 14, 16, 20, 24, 25, 28, 38, 41 & 42

The Complainant operates online primarily by means of a website via the domain name <lego.com> but it is also the owner of more than one thousand domain names containing the term “lego” as set out in Annex 8 to the Complaint.

According to the Complainant, LEGO was number eight in an “official” chart of the five hundred most famous trade marks/brands in the world for 2009/2010.

The Complainant’s trade mark rights in the LEGO mark have been recognized in a number of previous UDRP proceedings (including recent cases: LEGO Juris A/S v. Nasirudin, EazySmart.com, WIPO Case No. D2011-0617; LEGO Juris A/S v. Owen Jones, WIPO Case No. D2011-0537; LEGO Juris A/S v. Xianbin Chen, WIPO Case No. D2011-0505; LEGO Juris A/S v. Bridge Port Enterprises Limited, WIPO Case No. D2011-0442; LEGO Juris A/S v. Probuilders, WIPO Case No. D2011-0226; and LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840; and at least 13 other decisions in WIPO UDRP cases initiated in 2010).

5. Parties’ Contentions

A. Complainant

Identical or confusingly similar

The Complainant submits that the Domain Names are identical or confusingly similar to the Complainant’s “world famous” trade mark LEGO. The Complainant contends that the trade mark LEGO should be considered a well-known mark for the purposes of Article 6bis of the Paris Convention for the Protection of Industrial Property – which would provide the Complainant with a right to prevent any use of that mark, or any confusingly similar denomination, with any product or services. The Complainant also relies on the fact that the fame of the LEGO mark has been confirmed “in numerous previous UDRP decisions” for example, Case No. 2010-0840 LEGO Juris A/S v Rampe Purda, where the panel held that “LEGO is clearly a well-known mark”.

The Complainant submits that the dominant part of both the Domain Names is the word “lego” and that this is identical to the Complainant’s trade mark LEGO. The addition of the suffixes “alienconquestalienmothership” and “ninjagofiretemplex” are not, the Complainant states, “relevant” and do not have any impact on the dominant part of the name, “lego”, which is instantly recognizable as a world famous trade mark.

The Complainant relies in support on Dr. Ing. h. c. F. Porsche AG v Rojeen Rayaneh, WIPO Case No. D2004-0488, which stated that “long-established precedent has generally recognised confusing similarity where well-known trademarks have been adapted with a wide range of prefixes or suffixes”.

The Complainant also relies on the fact that as “Alien Conquest” and “Ninjago” (in the latter case, one of the products in this line is named “Fire Temple”) are product lines released by the LEGO Group in 2011, the suffixes are likely to strengthen the impression that the Domain Names belong to or are affiliated with the Complainant.

The Complainant also states that the addition of the top level domain suffix “.com” does not have any impact on the overall impression of the dominant portion of the Domain Names and is therefore also irrelevant.

The Complainant submits therefore that the Domain Names are confusingly similar to the Complainant’s registered trade mark LEGO, and that anyone who sees the Domain Names is bound to mistake them as belonging to the Complainant.

Rights or legitimate interests

The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Names for the following reasons:

- the Complainant has not found that the Respondent has any registered trade marks or trade names corresponding to the Domain Names, nor any other uses of LEGO that would give them any legitimate rights to use the LEGO mark;

- the Complainant has provided no license or authorization of any kind to the Respondent to use the Complainant’s rights in the trade mark LEGO, and the Respondent is not an authorized dealer of the Complainant’s product and has never had a business relationship with the Complainant;

- whilst the <legoalienconquestmothership.com> Domain Name was created on October 1, 2011 and the <legoninjagofiretemplex.com> Domain Name on September 23, 2011, the registration of those Domain Names do not by themselves give the Respondent a right or legitimate interest in respect of the Domain Names;

- it is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in LEGO at the time of registration of the Domain Names. That, taken together with the fact that the Respondent cannot claim to have any rights to the use of the word LEGO, proves that the Respondent’s interest cannot have been legitimate;

- the Respondent is not using either of the Domain Names in connection with a bona fide offering goods or services as defined in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 in that, whilst goods are available by means of the websites at the Domain Names:

- the Respondent is not the actual reseller, the reseller is Amazon, the links are therefore merely sponsored links;

- at the time the Complaint was filed, there was no disclosure of information regarding the relationship with the trade mark owner on the websites at the Domain Names; and,

- the use of the Domain Names exclusively for driving traffic to sponsored links is not considered a bona fide offering of goods or services (LEGO Juris A/S v. Jan Cerny, WIPO Case No. D2010-0707).

For the above reasons, the Complainant states that the Respondent has no rights or legitimate interests in the Domain Names.

Registered and Used in Bad Faith

The Complainant submits that the trade mark LEGO which has “the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the whole Community and throughout the world”, has, on account of this, been the subject of a recent “skyrocketing” of third party domain name registrations comprising the trade mark LEGO in combination with other words which has led to many complaints filed by the Complainant under the UDRP, in 2010 and 2011 and subsequent decisions in its favour. The Complainant argues that the considerable value and goodwill of the LEGO mark is likely to have contributed to this trend and what made the Respondent register the Domain Names.

The Complainant tried to contact the Respondent in relation to both the <legoalienconquestmothership.com> Domain Name and the <legoninjagofiretemplex.com> Domain Name on December 7, 2011, by means of a cease and desist letter which offered compensation for the expenses of the registrations and any renewal fees. When this bounced back the Complainant used an online form provided by the Registrar on December 19, 2011, but did not receive a response. The Complainant contends that the failure to respond to such correspondence is itself relevant in a finding of bad faith (News Group Newspapers Limited and News Networks Limited v. Momm Amed Ia, WIPO Case No. D2000-1623).

The Complainant further submits that since both of the websites at the Domain Names contain sponsored links from which the Respondent most likely derives income, the Respondent is deliberately using the Domain Names to attract Internet users to the websites for commercial gain, in accordance with paragraph 4(b)(iv) of the Policy (regarding evidence of bad faith).

B. Respondent

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

6. Discussion And Findings

The Panel must decide the Complaint on the basis of the Parties’ statements, the documents submitted in support of those statements, and in accordance with the Policy, the Rules and any rules and principle of law that it deems applicable (paragraph 15 of the Rules). For the Complainant to prevail it must establish each of the following elements of paragraph 4(a) of the Policy:

(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and

(iii) The Respondent’s Domain Names have been registered and are being used in bad faith.

The Rules state that if a party, in the absence of exceptional circumstances, does not comply with any provision of the Rules, “then the Panel shall draw such inferences therefrom as it considers appropriate” (see also Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009). In the absence of any response from the Respondent the Panel reserves the right to exercise this discretion.

A. Identical or Confusingly Similar

The Domain Names are both made up of a large number of words “lego alien conquest mothership” on the one hand and “lego ninjago fire templex” on the other. The Complainant has conclusively established that it is the registered proprietor of a very large number of trade marks that are identical to the first of those words, i.e. LEGO.

However, the Panel is not convinced that the Complainant is correct in assuming that the “dominant” part of either one of the Domain Names is the word LEGO, and that the rest of the words in those Domain Names are irrelevant. Furthermore, the Domain Names are both of a substantial length and incorporate other distinctive words or phrases, e.g. “ninjago”, “fire templex” and “alien conquest mothership”. In the Panel’s view, these are not “generic suffixes” as the Complainant suggests. The Panel is therefore not entitled to dismiss them as irrelevant. These additional words prevent the Domain Names being identical to the trade mark LEGO, and the Panel must consider whether or not they also prevent the Domain Names from being confusingly similar.

The Complainant states that “Alien Conquest” and “Ninjago” (in the former, one of the products is called “Mothership” and, in the latter, one of the products is named “Fire Temple”) are product lines released by the Complainant in 2011, so the suffixes are likely to increase the impression that the Domain Names belong to or are affiliated with the Complainant and therefore the risk of confusion.

The Complainant operates its business by means of the domain name <lego.com>, and persons searching for the “Alien Conquest Mothership” and “Fire Temple” products online, by reference to those names, might reasonably assume that the Domain Names are related to the main LEGO domain name - which is owned by the Complainant, and by which the Complainant operates its business online.

Accordingly, the Panel finds that the Domain Names are confusingly similar to the Complainant’s trade mark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.

B. Rights or Legitimate Interests

The Complainant has established a prima facie case that the Respondent does not have any rights or legitimate interests in the contested domain names as follows:

(1) The Complainant is the proprietor of a variety of registered trade marks for the word mark LEGO and other related marks throughout the world;

(2) The Complainant did not find that the Respondent had a registered trade mark or any trade names corresponding to the Domain Names;

(3) The Respondent has no license, permission or authorization from the Complainant to use any of the Complainant’s marks;

(4) Whilst the Respondent does provide links to purchase the “Alien Conquest Mothership” and “Fire Temple” LEGO products (and also other unrelated products) online via Amazon, it does so only by means of what appear to be paid links. The Panel is inclined to agree with the decision made in LEGO Juris A/S v. Suka LLC, WIPO Case No. D2011-1057, that no bona fide offering of goods or services can normally be found when a site is using a registered trade mark as a part of its name to indirectly solicit orders from others “even if the products finally sold are made by Complainant”; and,

(5) The Respondent is not or has not been commonly known by the Domain Names.

In such circumstances, the burden of production shifts to the Respondent to show that it does not have some right or legitimate interest in the Domain Names (Sony Kabushiki Kaisha v. sony.net, WIPO Case No. D2000-1074).

The Respondent has provided no submissions and, in the absence of any such submissions, the Panel is satisfied that the Respondent has no rights or legitimate interests in the Domain Names for the purposes of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

“Lego” is a word that refers exclusively to the Complainant’s goods. The Panel considers that it would be unlikely for a domain name including that word to be registered which was not deliberately making reference to the Complainant’s goods. In this case, if there were any doubt (though in the Panel’s view there is not), it would be overcome by the simple fact that the remaining part of both of the Domain Names refers to the names of products created and sold by the Complainant. As such, in the absence of any rights or legitimate interests, the registration can only have been made in the knowledge that it would infringe third party’s intellectual property rights.

Numerous past UDRP decisions (see for example Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397 and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806) have established that when a registrant registers a domain name, it represents and warrants to the registrar that, to the extent of its knowledge, the registration of that domain name will not infringe any third-party rights, and that to do so in the knowledge that it will infringe, constitutes a registration in bad faith. The Panel therefore considers that the registration of the Domain Names in this case was made in bad faith, in all likelihood to take advantage of the Complainant’s goodwill in the LEGO brand in order to generate traffic to websites containing pay-per-click links.

The Policy provides several commonly cited examples of evidence of the registration and use of a domain name in bad faith. Paragraph 4(b)(iv) of the Policy provides that it is evidence of bad faith if a complainant is able to show that the Respondent has attempted “to attract, for commercial gain, Internet users to [the] web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the] web site”. In the present case, both Domain Names appear to the Panel to have been registered to do precisely that. The websites at the Domain Names contain sponsored links, which will provide the Respondent with an income from any persons looking to purchase the Complainant’s products and who, on finding the Respondent’s website, click through to the Amazon website.

This situation has been adjudicated by UDRP panels numerous times, and in each case the consensus has been that, whilst the Respondent is entitled to register a domain name to operate a website containing sponsored links, it may not be entitled to do so in circumstances in which the domain name containing those links is confusingly similar to the Complainant’s trade mark, especially in cases where it has been found that the respondent has no rights or legitimate interests.

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 Domain Names <legoalienconquestalienmothership.com> and <legoninjagofiretemplex.com> be transferred to the Complainant.

Charters Macdonald-Brown
Sole Panelist
Dated: April 25, 2012

 

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