WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Above.com Domain Privacy / Strata Services
Case No. D2012-2174
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Above.com Domain Privacy of Beaumaris, Victoria, Australia / Strata Services of Hong Kong, SAR of China.
2. The Domain Name and Registrar
The disputed domain name <legofriend.com> is registered with Above.com, Inc. (the Registrar).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2012. On November 2, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 7, 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 November 9, 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 amended Complaint on November 9, 2012.
The Center verified that the Complaint together with the amended 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 November 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 6, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 7, 2012.
The Center appointed Nicolas Ulmer as the sole panelist in this matter on December 18, 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 is the owner of the trademark LEGO, and many similar trademarks that are used in connection with the famous LEGO brand of construction toys and other products. The Complainant holds numerous LEGO trademarks in many jurisdictions, including China. According to the Complaint the LEGO brand is licensed to specific licensees who are authorized to use the LEGO trademark. Also according to the Complaint LEGO products are sold in 130 countries and sales revenue from LEGO products exceeded USD 2.8 billion in 2009. The Complainant also states that it holds 2,400 domain names and has a strict policy that all domain names containing the word “lego” should be owned by it.
It appears that the Complainant sent a cease and desist letter and two reminders of the letter without any response from the Respondent. The disputed domain name was registered in July of 2012.
5. Parties’ Contentions
The Complainant contends that the LEGO name and trademark are famous, extensively advertised and entitled to protection. As to the disputed domain name the Complainant asserts that it is confusingly similar to its world famous trademark and that the addition of the suffix “friend” does not diminish this similarity, particularly as the Complainant has a product line called “Lego Friends”. The Complainant further asserts that it has accorded the Respondent no rights in its trademarks or name and that the Respondent has no rights in the same; and that it is clear that the disputed domain name was registered in bad faith with knowledge of the Complainant’s trademarks and fame and then was used in bad faith to generate traffic with sponsored links.
The Complainant accordingly asks that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name begins with and contains the entirety of the Complainant’s well-known and trademarked name and is therefore confusingly similar to it. The addition of the suffix “friend” does little or nothing to dissipate this confusing similarity, and arguably augments it as the Complainant has a product line by that name. The first element of paragraph 4(a) of the Policy is accordingly proven.
B. Rights or Legitimate Interests
There is nothing in the case file to suggest that the Respondent has any rights or legitimate interest in the Complainant’s trademark or the disputed domain name, or that it is known by that name. The Complainant has clearly and convincingly explained that it is aware of no trademark or right on which the Respondent could rely and that the Complainant has never licensed its trademark to or authorized its use by the Respondent. In the absence of any reply or explanation by the Respondent, the Complainant has met its burden of proving the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Complainant’s evidence of the fame, reputation and goodwill that attaches to its LEGO trademark is convincing, and it is not plausible that the Respondent’s July 2012 choice of that trademarked word for the disputed domain name was serendipitous. Indeed there have, the Complainant points out, been a large number of recent unauthorized domain name registrations seeking improperly to capitalize on the LEGO mark. The Panel is convinced that the registration of the disputed domain name was in bad faith.
The Respondent’s bad faith use of the disputed domain name is also evident. The disputed domain name has been used for “pay per click” advertising links, including potential links to the Complainant’s competitors products. This is not legitimate use within the meaning of the Policy; to the contrary the Respondent has sought to make use of the Complainant’s fame, trademarks and goodwill for its own profit. The failure to answer cease and desists letters is further, additional, indicia of bad faith.
The third element of paragraph 4(a) of the Policy is, accordingly, also proven.
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 <legofriend.com> be transferred to the Complainant.
Date: December 21, 2012