World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Jewell Shannon

Case No. D2012-1331

1. The Parties

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

The Respondent is Jewell Shannon of banteng, tangerang, Indonesia.

2. The Disputed domain name and Registrar

The disputed domain name <legoshopuk.com> is registered with Register.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the“Center”) on June29,2012.On June29,2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name.On June 29, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Registrar further confirmed that the language used at the time of registration was English.

The Center verified that the Complaint satisfied the formal requirements of the UniformDispute Resolution Policy (the“Policy” or“UDRP”), the Rules for UniformDispute Resolution Policy (the“Rules”), and the WIPO Supplemental Rules for UniformDispute Resolution Policy (the“SupplementalRules”).

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 July 6, 2012.In accordance with the Rules, paragraph 5(a), the due date for Response was July 26, 2012.The Respondent did not submit any response.Accordingly, the Center notified the Respondent’s default on July 30, 2012.

The Center appointed Reinhard Schanda as the sole panelist in this matter on August 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 the Rules, paragraph 7.

4. Factual Background

Complainant owns countless registered trademarks practically all over the world, all of them containing the term “lego”. The very most of them were registered before May 2012.

According to the Whois-information provided by the Registrar the disputed domain name was registered on May26,2012.

5. Parties’ Contentions

A. Complainant

The Complainant based in Denmark is the owner of LEGO marks, and all other trademarks used in connection with the famous LEGO brand of construction toys and other LEGO branded products, including in Indonesia. The Complainant's licensees are authorized to exploit the Complainant's intellectual property rights, including its trademark rights, in Indonesia and elsewhere. Complainant and its licensees, through their predecessors, commenced use of the LEGO mark in the United States of America 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 approximately 5.9% at end 2010. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in Indonesia.

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 trademark LEGO is among the best-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials. The LEGO trademark has been recognized as being famous. According to the list of the official top 500 Superbrands for 2009/2010 provided by Superbrands UK, LEGO is number 8 of the most famous trademarks and brands in the world.

The LEGO Group has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. The LEGO Group also maintains an extensive web site under the domain name <LEGO.com>.

The mark LEGO is in possession of substantial inherent and acquired distinctiveness. The awareness of the trademark LEGO is considered in the whole community to be significant.According to the provisions of Article 6bis of the Paris Convention for protection of Industrial Property (“PC”), confirmed and extended by Article 16.2 and Article 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”), the statute of a well-known trademark provides the owner of such a trademark with the right to prevent any use of the well-known trademark or a confusingly similar denomination in connection with any products or services (i.e. regardless of the list of the products and services for which the trademark is registered). Thus, the protection for LEGO mark goes far beyond toys and goods similar to toys.

The Complainant contends, that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The dominant part of the disputed domain namecomprises the word “lego”, which is identical to the registered trademark LEGO, which has been registered by the Complainant as trademarks and domain names in numerous countries all over the world. The fame of the trademark LEGO has been confirmed in numerous previous UDRP decisions.

The addition of the suffix ”shop” and “uk” is not relevant and will not have any impact on the overall impression of the dominant part of the marks, LEGO, instantly recognizable as a world famous trademark. The addition of the top-level domain “.COM” 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 trademark 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 trademark of the Complainant.With reference to the reputation of the mark LEGO, there is a considerable risk that the trade public will perceive the Respondent’s disputed domain name either as a disputed domain name owned by the Complainant or that there is some kind of commercial relation with the Complainant.By using the trademark as a dominant part of the disputed domain name, the Respondent exploits the goodwill and the image of the trademark, which may result in dilution and other damage for the Complainant’s trademark.

Summarizing this, the Complainant is the owner of the well known trademark LEGO. The disputed domain name in question is clearly confusingly similar to the Complainants registered trademark LEGO. The suffix “shop” does not detract from the overall impression and the disputed domain name must therefore be considered to be confusingly similar with the Complainant’s trademark.

The Complainant further contends that Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not found that the Respondent has any registered trademarks 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 them any legitimate rights in the disputed domain 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 trademark 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 May 26, 2012. The mere registration of a disputed domain name does not give the owner a right or a legitimate interest in respect of the disputed domain name. It is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in the mark LEGO at the time of the registration. It is rather obvious that it is the fame of the trademark 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 today not using the disputed domain name in connection with a bona fide offering of goods or services.Instead the Respondent has intentionally chosen a disputed domain name based on a registered trademark in order to generate traffic to a web site linking to “www.amazon.com” where the Complainant’s products are offered.The website can easily be mistaken for an official LEGO website as it is using the bright red colors in the same color scheme as the Complainant uses.The Respondent is from Indonesia but the website is maintained in English.

The Respondent is not an authorized reseller of the Complainant. Further, the Respondent has not accurately disclosed the relationship with the trademark owner, nor does it state that it is an affiliate or sales agent. Instead there is a copyright text displayed at the bottom of the website;“© Copyright 2011 | LEGO Shop UK which instead could be read as the Respondent has copyrights in the LEGO or LEGO Duplo mark.By not accurately disclosing the relationship with the trademark owner, Respondent fails to meet the requirements for making a bona fide offering of goods.

The Respondent is trying to sponge off the Complainant’s world famous trademark. No evidence has been found that the Respondent uses the disputed domain name as a company name or has any other legal right in the name LEGO. Referring to the above mentioned the Respondent has no rights or legitimate interest in respect of the disputed domain name.

Finally the Complainant contends that the disputed domain name at dispute was registered and is being used in bad faith. The trademark LEGO in respect of toys belonging to the Complainant has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the whole community and throughout the world. The awareness of the trademark LEGO is considered, in the whole community in general, to be significant and substantial.

The considerable value and goodwill of the mark LEGO is most likely, a large contribution to this and also what made the Respondent register the disputed domain name at issue here. The Complainant first tried to contact the Respondent on June 8, 2012 through a cease and desist letter. The Complainant advised the Respondent that the unauthorized use of the LEGO trademark within the disputed domain name violated the Complainant’s rights in said trademark. The Complainant requested a voluntary transfer of the disputed domain name and offered compensation for the expenses of registration and transfer fees (not exceeding out of pocket expenses). No response was received and a reminder was sent on June 14, 2012 and June19,2012.Since the efforts of trying to solve the matter amicably were unsuccessful, the Complainant chose to file a complaint according to the UDRP process. It has been mentioned in earlier UDRP proceedings that the failure of a respondent to respond to a cease and desist letter, or a similar attempt at contact, has been considered relevant in a finding of bad faith.

The website connected to the disputed domain name is selling LEGO products through “www.amazon.com” and most likely, the Respondent receives compensation each time a customer clicks through to the Amazon page. The Respondent has not implied in any means, through letters or through its website that they have any other intentions with the registration of the disputed domain name other than to profit from it. Consequently, the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the websites.

Consequently, the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the websites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the websites.

To summarize, LEGO is a famous trademark worldwide. There is no doubt that the Respondent was aware of the rights the Complainant has in the trademark and the value of said trademark, at the point of the registration. There is no connection between the Respondent and the Complainant. By using the Disputed domain name the Respondent is not making a legitimate non-commercial or fair use without intent for commercial gain but is misleadingly diverting consumers for his own commercial gain. Consequently, by referring to the above-mentioned, the Respondent should be considered to have registered andto 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 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a disputed domain name should be cancelled or transferred:

(1) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the disputed domain name;and

(3) the disputed domain name has been registered and is being used in bad faith.

For the below discussed reasons, the Panel finds that:

1. the disputed domain name <legoshopuk.com> is confusingly similar toComplainant’s registered trademarks,

2. the Respondent has not established any right or legitimate interest in the disputed domain name <legoshopuk.com>and

3. the Respondent has registered and is using the disputed domain name <legoshopuk.com>in bad faith.

A. Identical or Confusingly Similar

The Complainant is the owner of countless registered trademarks all over the world, which contain the term “lego”.Previous UDRP panels have held that a trademark registration with a national trademark authority is sufficient to establish rights in a complainant’s mark under Policy, paragraph 4(a)(i).See Trip Network Inc. v. Alviera, FA 914943 (finding that the complainant’s national trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy, paragraph 4(a)(i));see also Metro. Life Ins. Co. v. Bonds, FA 873143 (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy, paragraph 4(a)(i)). Thus, the Panel concludes that Complainant owns rights in its LEGO mark under Policy, paragraph 4(a)(i).

The Complainant asserts that Respondent’s disputed domain name <legoshopuk.com>is confusingly similar to the Complainant’s LEGO mark. The Panel notes that the disputed domain name contains Complainant’s LEGO mark, the descriptive terms “shop” and “uk”, and the generic top-level domain (“gTLD”) “.com.”Past UDRP panels have held that the addition of a descriptive term and a gTLD both fail to remove a disputed domain name from the realm of confusing similarity.SeeNovell, Inc. v. Taeho Kim, FA 167964 (finding the <novellsolutions.com> disputed domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, respondent has used this word paired with complainant's trademark NOVELL”);see alsoAm. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy, paragraph4(a)(i) because the appended term related directly to the complainant’s business);see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the disputed domain name from the mark.”).

The Panel is of the view that the disputed domain name <legoshopuk.com>is confusingly similar to Complainant’s LEGO mark under Policy, paragraph 4(a)(i), as the disputed domain name contains Complainant’s mark in its entirety, with the addition of the terms “shop” and “uk” at the end of the Complainant’s mark. The Panel finds that such an addition does not negate the confusing similarity between Complainant’s mark and Respondent’s disputed domain name under Policy, paragraph 4(a)(i).See Sutton Group Fin. Servs. Ltd. v. Rodger, WIPO Case No. D2005-0126 (finding that the disputed domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a disputed domain name is immaterial to the analysis under Policy, paragraph 4(a)(i));see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the disputed domain name in dispute contains the identical mark of the complainant combined with a generic word or term). Thus, the Panel holds also in this case that Respondent’s disputed domain name <legoshopuk.com> is confusingly similar to Complainant’s LEGO mark under Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name.The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:

(a) He has made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute;

(b) He is commonly known by the disputed domain name, even if he has not acquired any trademark rights;or

(c) He intends to make a legitimate, non-commercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Panel determines that the Complainant has discharged the onus of proof for the second criterion:The Respondent has failed to demonstrate any legitimate right or interest.

According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the disputed domain name. See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270;Inter-Continental Hotel Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252;Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the disputed domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”);see also Clerical Medical Investment Group Limited. v. Clericalmedical.com (Clerical and Medical Services Agency), WIPO Case No. D2000-1228 (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).

The Complainant contends that the Respondent is not commonly known by the disputed domain name <legoshopuk.com>. Complainant alleges that it never licensed or otherwise permitted Respondent to use its LEGO mark.Complainant argues that Respondent does not own a trademark registration for the <legoshopuk.com>. Furthermore the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.Finally the Respondent is not an authorized reseller of the Complainant.

In the circumstances, the Panel finds the Complainant’s supported allegations convincing.Taking into account the absence of rebuttal by the Respondent, the Panel further finds that the second element of the Policy is established.

C. Registered and Used in Bad Faith

The Complainant contends that Respondent registered and is using the disputed domain name in bad faithPrevious panels have determined that a respondent’s competing use is evidence of bad faith registration and use because the respondent is attempting to commercially benefit from the likelihood that Internet users become confused as to complainant’s affiliation with the disputed domain name.See Scholastic Inc. v. Applied Software Solutions, Inc., WIPO Case No. D2000-1629 (finding bad faith under Policy, paragraph4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market);see alsoLuck's Music Library v. Stellar Artist Mgmt., FA95650 (finding that the respondent engaged in bad faith use and registration by using disputed domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).

Having seen the record, the Panel is of the view that Respondent registered the disputed domain name with a full awareness of the Complainant and its LEGO trademark for purposes of commercially benefiting from the goodwill associated with Complainant’s mark. The Panel finds that the disputed domain name <legoshopuk.com> is creating confusion as to the source and affiliation of Complainant to the disputed domain name and corresponding website. See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum August21,2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain);see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (finding that the respondent’s use of the <saflock.com> disputed domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the disputed domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Since the Panel determines that Respondent is attempting to commercially gain by creating confusion as to Complainant’s affiliation with the disputed domain name, the Panel holds that Respondent has registered and is using the disputed domain name <legoshopuk.com>in bad faith under Policy, paragraph 4(b)(iv).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and15of the Rules, the Panel orders that the disputed domain name <legoshopuk.com> be transferred to the Complainant.

Reinhard Schanda
Sole Panelist
Dated: August 15, 2012

 

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