World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. John Sasson

Case No. D2012-1951

1. The Parties

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

The Respondent is John Sasson of Loxahatchee, Florida, United States of America.

2. The Domain Names and Registrar

The Disputed Domain Names <legolandminicities.com>, <legolandminicity.com> and <legolandnewyorkcity.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on October 3, 2012. On October 3, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 5, 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 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 7, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 8, 2012.

The Center appointed Daniel Kraus as the sole panelist in this matter on November 19, 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 states that it has used the LEGO trademark since at least 1953 in connection with construction toys, that the LEGO trademark is among the best-known trademarks in the world, and that it has been identified by Superbrands UK as the eighth most-famous trademark in the world. Complainant further states that its products are sold in more than 130 countries and that revenue for Complainant and its licensees was more than USD 2.8 billion in 2009, 2010 being a good year” too. Complainant has provided a 20-page list of trademark registrations that it owns worldwide for LEGOLAND, filed e.g. in the United States of America in 1998 already. These trademarks are referred to collectively hereafter as the “LEGOLAND Trademark”.

The Disputed Domain Names were registered on May 24, 2012, and are redirected to a web site at “www.hubpages.com” containing in particular links to “www.amazon.com” where LEGO products are offered.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Disputed Domain Names are confusingly similar to the LEGO Trademark because the Disputed Domain Names contain the LEGO Trademark in its entirety; the addition of the suffixes “mini cities”, “mini city” and “New York City” are not relevant and will not have any impact on the overall impression of the dominant part of the respective domain name.

Further, according to the Complainant, the Respondent does not have any rights or legitimate interests in respect of the Disputed Domain Names because no license or authorization of any other kind has been given by the Complainant to the Respondent, to use the trademark LEGO; 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; using the Disputed Domain Names to generate traffic to a web site displaying links to “www.amazon.com” where the Complainant’s products are offered is not a bona fide offering of goods or services; and the links displayed on the website connected to the Disputed Domain Names should be seen as sponsored links as the Respondent most likely derives income once a visitor clicks on the links and is redirected to “www.amazon.com”.

Finally, the Complainant argues that the Disputed Domain Names were registered and are being used in bad faith because, by using the Disputed Domain Names in connection with web site containing links to “www.amazon.com” where LEGO products were offered, the Respondent has been using the Disputed Domain Names 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; there is no disclaimer on the website explaining the non-existing relationship between the parties; and, because LEGO is a famous trademark, it is highly unlikely that the Respondent was not aware of the rights the Complainant has in the trademark and the value of said trademark, at the point of the registration.

B. Respondent

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

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) the Disputed Domain Names have been registered and are being used in bad faith. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the trademark registrations cited by Complainant it is apparent that Complainant has rights in and to the LEGO Trademark. This conclusion is further supported by numerous previous decisions under the Policy regarding the same complainant and trademark, including, just to cite two recent decisions, LEGO Juris A/S v. Colin Heggie, WIPO Case No. D2011-1304, or LEGO Juris A/S v. James Holmes, WIPO Case No. D2012-0490.

As to whether the Disputed Domain Names are identical or confusingly similar to the LEGOLAND Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Names only (i.e., “legolandminicities”, “legolandminicity” and “legolandnewyorkcity”), as it is well-established that the top-level domain name (i.e., ”.com”) should be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2: “The applicable top-level suffix in the domain name (e.g., ".com") would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”

The addition of certain terms, as here (that is, “minicities, “minicity”), or even “newyorkcity” can exacerbate the confusing similarity between Complainant’s trademark and the Disputed Domain Names and increase the risk of confusion between the Disputed Domain Names and the trademarks. Costco Wholesale Corporation and Costco Wholesale Membership, Inc. v. Kenneth Terrill, WIPO Case No. D2010-2124, (citing Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561, (citing Yellow Corporation v. MIC, WIPO Case No. D2003-0748, according to which “when a domain name is registered which is a well-known trademark in combination with another word, the nature of the other word will largely determine the confusing similarity”)).

Here, because the above mentioned words are associated with the LEGO and LEGOLAND Trademarks, the Panel finds they increase the confusing similarity between the Disputed Domain Names and Complainant’s trademark. See, e.g., Gateway Inc. v. Domaincar, WIPO Case No. D2006-0604 (finding the domain name <gatewaycomputers.com> confusingly similar to the trademark GATEWAY because the domain name contained “the central element of the [c]omplainant’s GATEWAY Marks, plus the descriptive word for the line of goods and services in which the [c]omplainant conducts its business”); and Guccio Gucci S.p.A. v. Hainei Zhou, WIPO Case No. D2011-1017.

As the Complainant has specific products including the terms, “LEGO”, “City” and “Mini”, the suffixes are rather fitted to strengthen the impression that the Disputed Domain Names belong to, or are affiliated with Complainant (Annex 13 of the Complaint). Moreover, in LEGO Juris A/S v. Fateha el yakhloufi, WIPO Case No. D2012-0995 regarding the domain name <legolandje.com>, the panel found that “the Domain Name is confusingly similar to Complainant’s trademark, incorporating Complainant’s LEGOLAND mark in its entirety while adding the suffix “je”.” The same applies in the present case.

Accordingly, the Panel finds that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainant has argued that, inter alia, Respondent does not have any rights or legitimate interests in respect of the Disputed Domain Names because no license or authorization of any other kind has been given by the Complainant to the Respondent, to use the Trademark LEGO and that 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; using the Disputed Domain Names to generate traffic to a web site displaying links to “www.amazon.com” where the Complainant’s products are offered is not a bona fide offering of goods or services; and the links displayed on the website connected to the Disputed Domain Names should be seen as sponsored links as the Respondent most likely derives income once a visitor click on the links and is redirected to “www.amazon.com”.

It has been found by previous panels that under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview 2.0, paragraph 2.1.

Accordingly, as a result of Complainant’s allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant 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 registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’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 registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

In the present case, Complainant argues that bad faith exists pursuant to Policy, paragraph 4(b)(iv), given that the website used by Respondent in connection with the Disputed Domain Names have been connected to a web site containing links to Amazon.com where LEGO products were offered. This arrangement appears to be similar to that described in other proceedings brought by the same complainant as here, LEGO Juris A/S v. Andrew Vierling, WIPO Case No. D2010-1913 and Lego Juris A/S v. Adry Asry, WIPO Case No. D2011-1224.

In those cases, the panel decided 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’s use of the disputed domain name is to intentionally attempt, for commercial gain, to divert Internet traffic to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web site.” This argumentation is also valid in the present case.

Accordingly, the Panel is satisfied that Complainant has proven the third element 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 Names <legolandminicities.com>, <legolandminicity.com> and <legolandnewyorkcity.com> be transferred to the Complainant.

Daniel Kraus
Sole Panelist
Dated: December 3, 2012

 

Explore WIPO