World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Howtogetrealmoneyonline.com

Case No. D2012-0832

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 Howtogetrealmoneyonline.com of Pickering, Canada.

2. The Domain Name and Registrar

The disputed domain name <legoninjagofiretemple.net> is registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2012. On April 19, 2012, the Center transmitted a request for registrar verification in connection with the disputed domain name by email to eNom, Inc. On April 20, 2012, eNom Inc. 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 April 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 an amendment to the Complaint on April 25, 2012

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 April 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 16, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 18, 2012.

The Center appointed Hariram Jayaram as the sole panelist in this matter on May 30, 2012. The Panel finds that it is 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, LEGO Juris A/S, is the owner of the LEGO trade mark, and all other trade marks used in connection with the LEGO brands of construction toys and other LEGO branded products.

The disputed domain name was registered on August 29, 2011.

5. Parties’ Contentions

A. Complainant

The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(1))

The Complainant, based in Denmark is the owner of the LEGO trade mark and all other trade marks used in connection with the famous LEGO brands of construction toys and other LEGO branded products. The Complainant's licensees are authorized to exploit the Complainant's intellectual property rights, including its trade mark rights, in the United States and elsewhere. The Complainant and its licensees (collectively “the LEGO Group of Companies or the LEGO Group”), through their predecessors, commenced use of the LEGO mark in the U.S. during 1953, to identify construction toys made and sold by them. Over the years, the business of making and selling LEGO branded toys has grown remarkably. The revenue for the LEGO Group in 2009, was more than USD 2, 8 billion. 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 the LEGO products are sold in more than 130 countries, including in the United States. The Complainant is also the owner of more than 2400 domain names containing the term ”lego”. It is the strict policy of the Complainant that all domain names containing the word ”lego” should be owned by the Complainant.

The trade mark LEGO is among the best-known trade marks in the world, as a result of decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials. The LEGO trade mark and brand have been recognized as being famous. The LEGO Group has expanded its use of the LEGO trade mark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. The LEGO Group also maintains an extensive web site with the domain name “www.lego.com”. The mark LEGO is in possession of substantial inherent and acquired distinctiveness. The awareness of the trade mark LEGO is considered in the whole Community to be significant.

Thus, the protection for LEGO goes far beyond toys and goods similar to toys. The dominant part of the disputed domain name <legoninjagofiretemple.net> comprises the word ”lego”, which is identical to the registered trademark LEGO, registered by the Complainant as trade marks and domain names in numerous countries.

The disputed domain name is confusingly similar to the Complainant’s world famous trade mark LEGO. The addition of the suffix “ninjagofiretemple” is not relevant and will not have any impact on the overall impression of the dominant part of the name, LEGO, instantly recognizable as a world famous trade mark. As the Complainant has a specific product named "LEGO Ninjago Fire Temple", the said suffix is rather fitted to strengthen the impression that the disputed domain name belongs to, or is affiliated with the Complainant. The addition of the top-level domain (tld) “net” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to determine the confusing similarity between the trade mark and the disputed domain name. Anyone who sees the disputed domain name is bound to mistake it for a name related to the Complainant.

The likelihood of confusion includes an obvious association with the trade mark of the Complainant. With reference to the reputation of the trade mark LEGO, there is a considerable risk that the trade and public will either perceive the disputed domain name as a domain name owned by the Complainant or assume that there is some kind of commercial relation with the Complainant.

By using the trade mark as a dominant part of the disputed domain name, the Respondent exploits the goodwill and the image of the trade mark, which may result in dilution of and other damage to the Complainant’s trade mark. Anyone seeing the disputed domain name, even without being aware of the content, is likely to think that the disputed domain name is in some way connected to the Complainant.

The Respondent has no rights or legitimate interests in respect of the Domain Name;

(Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2))

The Complainant has not found that the Respondent has any registered trade marks 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. It is also clear that no license or authorization of any other kind has been given by the Complainant to the Respondent, to use the trade mark LEGO. The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. The Respondent registered the disputed domain name on August 29, 2011.

The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the domain name. It is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in the name LEGO at the time of the registration. It is rather obvious that it is the fame of the trade mark that has motivated the Respondent to register the disputed domain name.

That is, the Respondent cannot claim to have been using LEGO, without being aware of the Complainant’s rights to it. This, among other facts, proves that the Respondent’s interests cannot have been legitimate. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent is not an authorized reseller of the Complainant. Instead the Respondent has intentionally chosen a domain name based on a registered trade mark in order to generate traffic to a site that contains sponsored links to amazon.com for sale of LEGO products etc. By doing this, the Respondent is using the LEGO trade mark and misleading Internet users to commercial web sites. No evidence has been found that the Respondent uses the name as a company name or has any other legal right in the name LEGO.

Further, there is no visible disclaimer that the website is not endorsed or sponsored by the Complainant to explain the non-existing relationship with the trademark holder. Moreover, there is a copyright text inserted at the bottom of the website which reads “© 2012 Legoninjagofiretemple.net. All Rights Reserved”, which further strengthens the impression that the Respondent has rights in the name LEGO. The Respondent is trying to sponge off the Complainant’s world famous trade mark. Referring to the above mentioned the Respondent has no rights or legitimate interest in respect of the disputed domain name.

The Domain Name was registered and is being used in bad faith.

(Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3))

The trade mark LEGO in respect of toys belonging to the Complainant has the status of a well-known and reputed trade mark with a substantial and widespread reputation throughout the whole Community and throughout the world. The awareness of the trade mark LEGO is considered, in the whole Community in general, to be significant and substantial. The number of third party domain name registrations comprising the trade mark LEGO in combination with other words has skyrocketed in the last few years. The considerable value and goodwill of the mark LEGO most likely contributed to this, and also made the Respondent register the disputed domain name.

The Complainant first tried to contact the Respondent on October 6, 2011 through a cease and desist letter. In the letter the Complainant advised the Respondent that the unauthorized use of the LEGO trade mark in the disputed domain name violated the rights in the trade mark LEGO, owned by the Complainant. The Complainant requested the immediate transfer of the disputed domain name and offered compensation for the expenses of registration and renewal fees (not exceeding out of pocket expenses). No reply was received so a reminder was sent on October 20, 2011 and November 16, 2011. The Respondent replied on the final reminder and explained that this was the first time it had seen the letter and asked how to proceed with the transfer.

The Complainant sent instructions to the Respondent and asked it to unlock the disputed domain name and to provide the authorization code for the disputed domain name. After numerous reminders made by the Complainant to unlock the disputed domain name, with a final reminder on January 10, 2012, to unlock the disputed domain name, the Complainant chose to file a complaint according to the UDRP process. As stated earlier the disputed domain name is currently connected to a website displaying links to “www.amazon.com” and other websites similar to “www.amazon.com”. Consequently, the Respondent is using the disputed domain name to intentionally attempt to attract Internet users to a website for commercial gain, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of its website. Consequently, by referring to the above-mentioned, the Respondent should be considered to have registered and to be using the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following elements to obtain an order for the domain name to be transferred to it:

- The domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

- The Respondent has no rights or legitimate interests in respect of the domain name; and

- The domain name has been registered and is being used in bad faith.

As the Respondent did not submit any response, the Panel will, in accordance with paragraph 5(e) of the Rules, decide this dispute based on the Complaint.

A. Identical or Confusingly Similar

The Complainant is the registered owner of the trade mark LEGO. The trade mark has been used by the Complainant in a number of countries for a variety of goods and services. The Complainant manufactures and sells especially LEGO branded construction toys. Apart from the gTLD “.net”, the disputed domain name incorporates the Complainant’s trade mark LEGO in its entirety, followed by the suffix “ninjagofiretemple” for the combination of which (i.e. LEGO Ninjago Fire Temple) the Complainant has a specific product.

Several WIPO UDRP decisions have confirmed that the addition of suffixes used to describe products sold by the complainant increases the likelihood of association between the domain name and the said trade mark. Some of these cases are as follows:

In Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505, the Panel found that:

“…the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark …The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the Complainant’s registered trademark”.

In Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056, the panel found that:

“The finding of confusion in this case is strengthened by the fact that as highlighted by Complainant, all of the words that Respondent has combined with the WAL-MART mark have a real connection to WAL-MART's services and activities so that there is a likelihood that consumers will be misled by the twenty-three Domain Names registered by Respondent given the notoriety of Complainant's mark”.

There have also been several cases involving domain names similar to the one at issue, including the case below:

In LEGO Juris A/S v. Oneandone, Private registration / Thang Do, WIPO Case No. D2012-0470, the disputed domain names <legoalienconquestalienmothership.com> and <legoninjagofiretemplex.com> were found to be confusingly similar to the LEGO trade mark. In this case, the panel found that the use of product lines released by the Complainant as suffixes in the domain names “…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 disputed domain name in this case is very similar, if not nearly identical, to the domain names disputed in LEGO Juris A/S v. Oneandone, Private registration/Thang Do mentioned above. The LEGO trade mark is clearly identifiable in the disputed domain name and the use in the disputed domain name of the name of a product manufactured and sold by the Complainant serves to increase, rather than diminish, the likelihood of confusion between the disputed domain name and the Complainant’s LEGO trade mark.

The Panel agrees with the findings in the above decisions and concludes that the disputed domain name is confusingly similar to the Complainant’s LEGO trade mark.

The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has submitted that the Respondent has no rights or legitimate interests in the disputed domain name. It has alleged that the Respondent has no registered trade marks or trade names corresponding to the disputed domain name; the Respondent has not been using the word “LEGO” in any other way that would give the Respondent legitimate rights to the name; the Respondent has not been given any license or authorization by the Complainant to use the LEGO trade mark; the Respondent is not an authorized dealer or reseller of the Complainant’s products; the Respondent has never had a business relationship with the Complainant; the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services; and the Respondent is using the LEGO trade mark to mislead Internet users to commercial websites unrelated to the Complainant. The Respondent, who did not file a Response, neither disputed these contentions nor provided information as to the Respondent’s rights or interests in the disputed domain name.

On the basis of the Complainant’s submissions and evidence at hand, the choice of words in the disputed domain name, and the apparent purposeful use of the disputed domain name to generate traffic to a web site containing links to amazon.com for the sale of LEGO products, the Panel finds that the Respondent is not making use of the disputed domain name for a bona fide offering of goods and services, and is not making a legitimate noncommercial or fair use of the disputed domain name.

In LEGO Juris A/S v. Jan Cerny, WIPO Case No. D2010-0707, the panel found:

“There is a consensus view by previous UDRP panels that such use cannot be considered a bona fide offering of goods or services, or a noncommercial or fair use in circumstances as the ones that are present in this case”. a

The site in evidence at the disputed domain name appears to largely consist of links to the Complainant’s goods at amazon.com and click-through advertisements. As such, it cannot be considered a bona fide offering of goods or services, or a noncommercial or fair use.

The Panel agrees with the above decision and finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The disputed domain name resolves to a website which features unauthorized links to websites selling the Complainant’s products, specifically “www.amazon.com”, as well as sponsored advertisements. Such use of the disputed domain name and the registration of the disputed domain name show that the Respondent is well aware of the business of the Complainant and that the disputed domain name has been created with the intention to reap commercial benefit generated through confusion and customer diversion. Given the reputation of the Complainant’s mark, as well as the existence of links to “www.amazon.com” where the Complainant’s products are being sold, it is implausible in this Panel’s view that the Respondent independently registered and used the disputed domain name without knowledge of the Complainant’s trade mark. This is an obvious attempt to capitalize on the Complainant’s trade mark and, as alleged by the Complainant, to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

In LEGO Juris A/S v. Andrew Vierling, WIPO Case No. D2010-1913, the panel found that:

“The Respondent may be fully entitled to operate a webpage that redirects Internet users interested in Complainant’s branded products to Amazon.com, but in the circumstances of this case the Panel is not persuaded that such right would extend to the use of a domain name which incorporates and is confusingly similar to the Complainant’s trademark for such a purpose. As such, the Panel finds the effect of the Respondent use of the disputed Domain Name is to intentionally attempt, for commercial gain, to divert Internet traffic to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web site.”

In the absence of any explanation or rebuttal by the Respondent, it is apparent from the Complainant’s submissions that the Respondent has registered and is using the disputed domain name in bad faith.

The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 <legoninjagofiretemple.net> be transferred to the Complainant.

Hariram Jayaram
Sole Panelist
Dated: June 13, 2012

 

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