World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. PrivacyProtect.org / Kim Bum - Kim Bum LLC

Case No. D2012-2025

1. The Parties

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

The Respondents are Domain Admin, PrivacyProtect.org, of Queensland, Australia / Kim Bum - Kim Bum LLC of Seoul, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <legosongs.com> is registered with RegisterMatrix.com Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2012. On October 12, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 24, 2012, the Registrar 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 October 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 October 30, 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 Respondents of the Complaint, and the proceedings commenced on October 31, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2012. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on November 21, 2012.

The Center appointed Christophe Caron as the sole panelist in this matter on November 26, 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, LEGO Juris A/S, based in Denmark, is an important company of toys’ construction.

The Complainant uses its numerous trademarks, notably composed of the term “lego”, to designate all its activities.

The Complainant is the owner of several LEGO international trademarks and multiple LEGO trademarks around the world, such as the LEGO trademark No. 66677, registered in Republic of Korea, where the Respondent is located, in International class 28, in January 21, 1980 and duly renewed.

The term “lego” is also the Company’s name.

The Complainant also developed a presence on the Internet and is the owner of several domain names which contain the term “lego”.

The disputed domain name <legosongs.com> was registered on June 26, 2012.

Moreover, a cease and desist letter was sent on August 17, 2012 by the Complainant to one of the Respondents (PrivacyProtect.org) in order to settle the dispute, but that Respondent did not reply to this letter.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions and arguments.

The Complainant argues that the dominant part of the disputed domain name <legosongs.com> comprises the word “lego”, which is identical to the trademark LEGO registered by the Complainant in numerous countries all over the world.

According to the Complainant, the disputed domain name <legosongs.com> is confusingly similar to the Complainant’s world famous trademark LEGO.

The fame of its trademark LEGO has been confirmed in numerous previous UDRP decisions.

Moreover, the Complainant adds that there is a considerable risk that the Internet User will perceive the Respondents’ domain name either as a domain name owned by the Complainant or that there is some kind of commercial relation with the Complainant.

According to the Complainant, the suffix “songs” does not detract from the overall impression of the domain name and it is rather fitted to strengthen the impression that the domain name belongs to, or is affiliated with Complainant and must therefore be considered to be confusingly similar with the Complainant’s trademark.

Moreover, the Complainant adds that the Respondents have also placed the domain name for sale on an auction website called “www.sedo.com”.

The Complainant argues further that it has not found that the Respondents have any registered trademarks or trade names corresponding to the disputed domain name and states that the Respondents are not authorized to use the trademark LEGO. The Complainant adds that it is highly unlikely that the Respondents would not have known of the Complainant’s legal rights in LEGO trademark at the time of the registration.

According to the Complainant, it is rather obvious that it is the fame of the trademark LEGO that has motivated the Respondents to register the disputed domain name.

According to the Complainant, the Respondents have intentionally chosen a domain name based on a registered trademark in order to generate Internet traffic and income through a website containing sponsored links which are related to the brand LEGO. When clicking on the links you are redirected to <e.g.klossbutiken.se> which is an online shop where LEGO products can be acquired.

By doing this, the Respondents are misleading Internet users to a commercial web site and consequently, the Respondents are tarnishing the trademark LEGO. According to the Complainant, the Respondents are trying “to sponge off” the Complainant’s world famous trademark.

The Complainant concludes that by using the disputed domain name <legosongs.com>, the Respondents are not making a legitimate noncommercial or fair use without intent for commercial gain but rather Respondents are misleadingly diverting consumers for their own commercial gain. Consequently, the Respondents should be considered to have registered and to be using the disputed domain name in bad faith.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondents

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant have rights; and

(ii) Respondents have no rights or legitimate interests in respect of the disputed domain name; and

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

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant is the owner of several LEGO international trademarks and multiple LEGO trademarks around the world, such as the LEGO trademark No. 66677, in International class 28, registered in Republic of Korea, where the Respondent is located, on January 21, 1980 and duly renewed.

This Panel finds that the disputed domain name <legosongs.com> reproduces the Complainant’s trademarks. Furthermore, this Panel believes that since the term “lego” is included in the disputed domain name, the likelihood of confusion is accentuated by the notoriety of the LEGO trademark.

Moreover, the term “lego” is used at the first position of the disputed domain name <legosongs.com>. In this Panel’s opinion, the addition of the term “songs” in the disputed domain name is not relevant and leads the public to believe that the Complainant is the owner of the disputed domain name.

The Panel therefore finds that the disputed domain name is confusingly similar to many registered trademarks in which Complainant has rights. Thus, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(c) of the Policy provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name, as follows:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the disputed domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making 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 or service mark at issue.”

This Panel is satisfied that the Respondents do not appear to have been commonly known by the disputed domain name, they are not licensee or agent of the Complainant, nor in any way are authorized to use the Complainant’s trademarks.

Furthermore, according to the Registrar’s verification, the disputed domain name was registered on June 26, 2012, after the Complainant’s registration of its famous trademarks. The Respondents cannot claim to have been using the term “lego”, without being aware of the Complainant’s rights to it. To this Panel, this proves that the Respondents’ interests cannot have been legitimate.

Therefore, this Panel states that the Respondents are not using the disputed domain name in connection with a bona fide offering of goods or services. Moreover, the Respondents have chosen a domain name based on a registered trademark in order to generate traffic to the website to a site with sponsored links which are related to the famous trademark LEGO. When clicking on the sponsored links Internet users are redirected to <e.g.klossbutiken.se> which is an online shop where LEGO products can be acquired but also products from other toys manufacturers. The Respondents are using the LEGO trademark in order to redirecting Internet users to other commercial web sites and consequently, the Respondents are tarnishing the trademark LEGO.

The Respondents have not provided evidence of circumstances illustrated by paragraph 4(c) of the Policy, or any other circumstances evidencing any rights, or legitimate interests in the disputed domain name. Hence, the Panel finds that the Respondents have no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances, which “in particular but without limitation”, shall be evidence of the registration and use of a domain name in bad faith. These four circumstances, which are framed in the alternative, but are expressly non-exclusive, are:

“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”

Firstly, the Respondents have placed the disputed domain name for sale on an auction website called “www.sedo.com”. It indicates that the Respondents probably acquired the domain name for the purpose of selling, renting or otherwise transferring it to the complainant or to a competitor for valuable consideration.

Secondly, the use of the term “songs” which is not relevant, in this Panel’s opinion, leads Internet users to believe that the website is owned by Complainant. It creates a likelihood of confusion with Complainant’s trademarks and activities. The likelihood of confusion is accentuated by the notoriety of the LEGO trademark.

Thirdly, the disputed domain name <legosongs.com> refers to a website with sponsored links which are related to the famous trademark LEGO. When clicking on the sponsored links you are redirected to online shops where LEGO products can be acquired and also products from other toys manufacturers. To this Panel, this could be considered as an evidence of bad faith registration and use.

By using the domain name, the Respondents have intentionally attempted to attract, for commercial gain, Internet users to their web site.

For all these reasons, it appears to this Panel that the disputed domain name <legosongs.com> was registered and is being used in bad faith.

The Panel therefore finds that paragraph 4(a)(iii) of the Policy is made out.

7. Decision

In accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel states that:

The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.

The Respondents have no rights or legitimate interests in respect of the disputed domain name.

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

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 <legosongs.com> be transferred to the Complainant.

Christophe Caron
Sole Panelist
Date: December 10, 2012

 

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