WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. N/A, Gleb Marchenko / PrivacyProtect.org, Domain Administration
Case No. D2012-1798
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is N/A, Gleb Marchenko of Mogilev, Belarus with privacy protection of the disputed domain name provided by PrivacyProtect.org, Domain Administration of Nobby Beach, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <playlego.net> (the “Domain Name”) is registered with DomainContext, Inc. (the “Registrar”).
3. Procedural History
A complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2012 (the “Complaint”). On September 7, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 10, 2012, the Registrar transmitted by email to the Center its verification response disclosing the registrant and contact information for the Domain Name which differed from the named Respondent and corresponding contact information set forth in the Complaint. The Center sent an email communication to the Complainant on September 18, 2012 providing the registrant and contact information for the Domain Name disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on September 18, 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 September 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for the Respondent to file a response to the Complaint was October 9, 2012. Email responses were sent by “A. Hitchens” from the email address listed in the registration information for the Respondent to the Center on September 18, 2012 and September 22, 2012. Although not a fully compliant response with respect to the Rules, the Panel will nevertheless consider this email with respect to this Decision.
The Center appointed Marylee Jenkins as the sole panelist in this matter on November 9, 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 bases the Complaint on trademark registrations in numerous jurisdictions throughout the world for the marks LEGO and LEGO and design for use in connection with construction toys and other LEGO branded products and has provided evidence of such registrations and ownership in multiple countries, including Australia and Belarus. The Complainant along with its licensees has also expanded use of the LEGO trademark to areas including computer hardware and software, books, videos and computer controlled robotic constructions sets, and maintains a web site at “www.lego.com”. The Complainant has presented evidence that the trademark LEGO is well-known annexing to the Complaint a list of the “Official Top 500 2009/10” Superbrands UK as compiled by the Centre for Brand Analysis, which ranks the LEGO brand at number 8. The Complainant further cited prior UDRP decisions in which the fame of the LEGO trademark has been confirmed and provided evidence of the ownership of more than 2,400 domain names containing the mark LEGO as well as several of the listed domain names including the word “play”.
The Domain Name was registered on March 29, 2012 to the Respondent and is set to expire on March 29, 2013. The web page accessible at the Domain Name uses the LEGO trademark and images of LEGO products prominently as well as providing information and access to multiple LEGO games and products. The web page also makes use of a similar color scheme as the Complainant’s official website (accessible at “www.lego.com”).
5. Parties’ Contentions
The Complainant asserts that the Domain Name is identical or confusingly similar to the Complainant’s trademark LEGO, that the Respondent has no rights or legitimate interests with respect to the Domain Name, and the Domain Name was registered and is being used in bad faith by the Respondent to create a likelihood of confusion with the trademark LEGO and with the Complainant as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. Particularly, the Complainant alleges that the Respondent is using the Domain Name intentionally to attract, for commercial gain, Internet users to the website.
The Respondent asserts that his website is not being used for commercial purposes or to discredit the LEGO trademark. The Respondent asserts that his site was “made not for making money” or “discredit the Lego TM. ”Further, he asserts that “it’s just project for fun, because I liked to play lego constructors since my childhood” and “would like many people will know about Lego.”
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party (complainant) asserts to an ICANN-approved dispute resolution service provider that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the domain name holder has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainant is required to establish that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel finds that the Complainant has provided sufficient evidence to establish that it is the owner of and has rights in and to the mark LEGO and variations thereof.
A review of the second-level domain of the Domain Name shows that it comprises the Complainant’s well-known mark LEGO in combination with the word “play” as a prefix. A review of the Complainant’s trademark registrations used in connection with a wide variety of goods and services shows that the word “play” can clearly be viewed as being associated with the Complainant and the Complainant’s construction toys. Further, the idea suggested by the Domain Name, in view of the Complainant’s many registered trademarks and long-time use thereof, is that any possible services or goods offered on a web site at this Domain Name are authorized by or affiliated with the Complainant. This association is further strengthened by the many domain names that the Complainant already owns and uses that incorporate the LEGO mark along with the word “play” or a variation thereof. Based on these findings and the submitted evidence, the Panel concludes that paragraph 4(a)(i) has been satisfied based upon the Domain Name being confusingly similar to the Complainant’s mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panel to be proven based on her evaluation of all of the evidence presented, can demonstrate the holder’s rights to or legitimate interests in the Domain Name. These circumstances include:
(i) before any notice to the holder of the dispute, the holder’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or
(iii) the domain name holder is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has shown that it has well and long established rights to the LEGO mark at the time of the Respondent’s registration of the Domain Name in March of 2012 and that the Respondent nevertheless registered the Domain Name. No evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent had been using or was making demonstrable preparations to use the Domain Name in connection with any type of bona fide offering of goods or services.
Nor can such unauthorized uses of the Complainant’s intellectual property constitute legitimate noncommercial or fair use of the Domain Name. Rather the Complainant is well known for its construction toys as well as its related software games and the Respondent registered the Domain Name and is using the Domain Name to direct Internet users to its own website which prominently displays the LEGO mark and where LEGO software games and related information are being offered for apparent commercial gain. Although the Respondent’s website includes a copyright notice indicating that “All rights belong to their respective owners” (translated to English and as shown in the uncontested evidence), such “respective owners” are not listed nor are there any notices visible on the Respondent’s website disclaiming any relationship with the Complainant. Additionally, the Respondent states that the “site was made not for making money or other things, that can discredit Lego TM. It’s just project for fun.” However, such uses of the Complainant’s intellectual property are clearly not authorized by the Complainant but instead are trading on the fame of the Complainant’s mark to direct users to the Respondent’s web site. Additionally, the visitor tracking tool, Yandex.Metrika, embedded in the Respondent’s home page (as verified by the Panel upon visiting the website at the Domain Name) calls into question this statement set forth in the Respondent’s email.
Moreover, the Respondent has presented no evidence of having any trademark rights in the Domain Name or any portion thereof or being commonly known by the Domain Name or any portion thereof as an individual, business or other organization. The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name and that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the domain name holder includes, but is not limited to:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the holder’s website or location.
Based upon the evidence submitted, the Panel finds that the Respondent had knowledge of the Complainant’s mark LEGO and its rights therein at the time the Respondent registered the Domain Name. This finding is supported by the evidence showing that: (i) the Complainant’s mark LEGO has a strong reputation and is widely known; (ii) the Complainant owns numerous trademark registrations used in connection with a wide variety of goods and services throughout the world; (iii) the Domain Name comprises the Complainant’s mark LEGO and the word “play” which is descriptive of goods and services clearly associated with the Complainant and the Respondent’s web site incorporates other intellectual property of the Complainant; (iv) the Domain Name was registered well after the first use in commerce by the Complainant of its LEGO mark; and (v) the Complainant owns several domain names that include the mark LEGO and the word “play” or a variation thereof, which direct to sites owned by the Complainant. Along with the above finding that the Respondent has no rights or legitimate interests in the Domain Name, the Panel finds that the Respondent registered the Domain Name in bad faith.
The Complainant has further asserted that the Respondent acquired the Domain Name in bad faith primarily for the purpose of diverting Internet users looking for the Complainant to the Respondent’s site for its own commercial benefit. Particularly, the Complainant has argued that the “Respondent most likely receives an income each time a visitor click [sic] to enter the website.” The Respondent’s apparent use of a visitor tracking tool in addition to the use of the Complainant’s intellectual property on the site supports the Complainant’s assertions.
Based upon the above findings and submitted evidence, the Panel concludes that the Respondent registered and is using the Domain Name to intentionally attempt to attract for apparent commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s site or of a product or service on the Respondent’s site. The Panel also finds that the Respondent registered and is using the Domain Name to create initial interest confusion among Internet users who visit the Respondent’s site as to the source, sponsorship, affiliation or endorsement of the site for its own apparent commercial gain.
The Panel thus concludes that the Respondent registered and is using the Domain Name in bad faith and that Paragraph 4(a)(iii) of the Policy has been satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <playlego.net> be transferred to the Complainant.
Dated: November 23, 2012