World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Moustafa Mahmoud

Case No. D2012-2199

1. The Parties

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

The Respondent is Moustafa Mahmoud of Dubai, United Arab Emirates.

2. The Domain Names and Registrar

The disputed domain names <legomeme.com>, <legomeme.net>, <ohmylego.com> and <ohmylego.net> are registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2012. On November 7, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 7, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for the disputed domain names.

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 November 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 2, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 03, 2012.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on December 13, 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 a company incorporated in Denmark. The Complainant is the owner of the LEGO trademark and all other trademarks used in connection with the famous LEGO brand of construction toys and other products.

The Complainant and its licensees, through their predecessors in business, commenced use of the LEGO trademark in 1953. The annual revenue of the Lego group of companies has grown to more than USD 2.8 billion. Lego products are sold in more than 130 countries throughout the world. The Complainant is also the owner of a great number of domain names consisting of or containing the word “Lego” as set out in Annex 8 to the Complaint. LEGO is rated as a “Superbrand” in a report set out in Annex 9 to the Complaint, which shows LEGO as raking number 8 of the most famous trademarks and brands in the world.

The Complainant has registered the trademark LEGO in several countries around the world including Respondent jurisdiction in the United Arab Emirates.

The Respondent is based in Dubai, United Arab Emirates.

The disputed domain names were all registered on June 12, 2012.

5. Parties’ Contentions

A. Complainant

Complainant provides as Annex 6 the lists of the registered trademark on which the Complaint is based including Complainant trademark LEGO registered in the United Arab Emirates with trademark registration number 10222.

The Complainant maintains that its LEGO trademark not only has substantial inherent distinctiveness but also has acquired substantial reputation through use and extensive advertising. It further submits that the LEGO trademark is a well-known trademark in accordance with the provisions of Article 6bis of the Paris Convention.

The Complainant submits that the disputed domain names comprises the word “lego”, which is identical to the registered trademark LEGO. The disputed domain names are confusingly similar to the Complainant world famous trademark LEGO.

It also states that the dominant part of the disputed domain names is the word “lego”, which is identical to the registered trademark LEGO. In addition, the designations “meme” and “ohmy” are not relevant and does not have any impact on the over impression of the dominant part of the domain names.

The Complainant further alleges that the addition of the generic top-level domain name (gTLD) “.com” does not have any impact on the overall impression of the dominant portion of the domain name and is therefore irrelevant to the determine the confusing similarity between the trademark and the domain name.

The Complaint goes on to submit that the Respondent has no rights or legitimate interests in respect of the disputed domain names. It states that the Respondent has no license or authorization given by the Complainant to the Respondent, to use the trademark LEGO. The Complaint cites in support of its contentions Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055, where the panel found that, in the absence of any license or permission from the Complainant, no actual of contemplated bona fide or legitimate use could be claimed by the Respondent. The Complainant also notes that the Respondent is not an authorized dealer of the Complainant and has never had a business relationship with it.

The disputed domain names having been registered on June 2012, the Complainant states that the Respondent cannot claim to have been using LEGO, without being aware of the Complainant’s rights to it.

The Complainant goes on to state that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. Instead the Respondent has intentionally chosen domain names based on a registered trademark in order to generate traffic to a web site displaying sponsored links, thereby using the disputed domain names for commercial gain and consequently, the Respondent is tarnishing the trademark LEGO.

The Complainant concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

In relation to the disputed domain names having been registered and used in bad faith, the Complainant submits that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s trademark LEGO as to the source, sponsorship, affiliation or endorsement of its website.

The Complainant summarizes by saying that the Respondent was aware of the Complainant’s trademark rights and the value of said trademark, at the point of the registration and that there is no connection between the Respondent and the Complainant. By using the domain names the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain but is misleadingly diverting consumers for its own commercial gain.

The Complainant requests the Panel to decide that the disputed domain names be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy establishes three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) The Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

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

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

Each of the aforesaid three elements must be proved by a complainant to warrant the Panel ordering the remedy requested.

A. Identical or Confusingly Similar

The disputed domain names are confusingly similar to the Complainant’s well-recognized and well-known LEGO mark. The disputed domain names incorporate the Complainant’s renowned LEGO mark entirely.

The mere addition of generic words such as the terms “meme” and “ohmy” does not dispel the confusing similarity caused by the wholesale adoption into the disputed domain names of the Complainant’s LEGO mark. It has been long established that confusing similarity generally occurs when well-known trademarks are paired with generic prefixes and suffixes. Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488; AmerCable Incorporated v. Edward Van Rossum, WIPO Case No. D2009-1292.

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

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out in particular, but without limitation, three circumstances which, if proved by Respondent, shall be evidence of Respondent’s rights to or legitimate interests in the disputed domain name for the purpose of paragraph 4(a)(ii) of the Policy, namely:

(i) before any notice of the dispute to the Respondent, the Respondent’s use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or

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

(iii) the Respondent 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 made a prima facie showing the Respondent has no rights or legitimate interests in the disputed domain names, and that the Respondent has never been licensed or authorized by the Complainant to use the LEGO mark or the disputed domain names. Moreover, it does not appear that the Respondent is commonly known by the disputed domain names or that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names. The Respondent has failed to come forth with any demonstration of rights or legitimate interests in the disputed domain names.

The Panel accordingly determines that the Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances that constitute evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy:

“(i) circumstances indicating that the respondent has registered or 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 respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent 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 respondent has engaged in a pattern of such conduct; or

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

(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location”.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The LEGO mark is well-known throughout the world. The fame of the mark has been confirmed in numerous previous UDRP decisions. See e.g. Lego Juris A/S v. Level 5 Corp, WIPO Case No. D2008-1692; LEGO Juris A/S, v. Anton, WIPO Case No. D2010-0237.

The Panel is of the opinion that it is inconceivable that the Respondent was unaware of the LEGO mark when registering the disputed domain names in June 2012. The disputed domain names <legomeme.com>, <legomeme.net>, <ohmylego.com>, <ohmylego.net> contains the Complainant’s trademark in its entirety as a suffix and dominant part and they were all registered on the same date.

The registration of a domain name that is practically identical to a well known trademark by a third party that has no legitimate connection with the trademark or relationship with the owner of the mark, may in certain circumstances constitute bad faith registration.

According to paragraph 4(b)(iv) of the Policy, bad faith is established if it is evidenced that the disputed domain name is used to intentionally attempt to attract, for commercial gain, Internet users to the registrant’s website 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 the registrant’s website or location or a product or service on the registrant’s website or location.

At the time of filing the Complaint, the disputed domain name <legomeme.com> was redirecting to advertising at the website “www.groupon.se”. Currently, all the disputed domain names contain pay per click advertising. In the present case, after examining the printouts of the websites to which the disputed domain names relate, the Panel considers that the Respondent was using the disputed domain names to intentionally attempt to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship or endorsement of the website (see Annex 11 of the Complaint).

Moreover, the use of a well-known trademark for a web portal providing sponsored links is a classic method to generate financial gain via the pay-per-click or click-through device, whereby the operators of other websites pay a commission to the owner of the domain name for traffic redirected to them.

Thus, the Panel finds that the disputed domain names were registered and used in bad faith. The third element of paragraph 4(a) of the Policy is met.

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 <legomeme.com>, <legomeme.net>, <ohmylego.com> and <ohmylego.net> be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Date: December 27, 2012

 

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