World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. chen wenjie c/o Dynadot Privacy

Case No. D2012-2439

1. The Parties

The Complainant is Lego Juris A/S of Billund, Denmark, represented by Melbourne IT Corporate Brand Services AB, Sweden.

The Respondent is chen wenjie c/o Dynadot Privacy of San Mateo, California, United States of America (“USA”).

2. The Domain Name and Registrar

The disputed domain name <legoarmy.com> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2012. On December 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 14, 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 December 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2013.

The Center appointed Alessandra Ferreri as the sole panelist in this matter on January 23, 2013. 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 Complianant is Lego Juris A/S, the company based in Denmark, one of the worldwide leader in the field of toys.

The Complainant is the owner of LEGO trademark and other trademarks used in connection with the famous LEGO brands of construction toys and other LEGO branded products. The Complainant and its licensees (collectively “the LEGO Group”), through their predecessors, commenced using the LEGO trademark in the USA during 1953, to identify construction toys made and sold by them. Over the years, the business of making and selling LEGO branded toys has remarkably grown.

The Complainant has subsidiaries and branches throughout the world, and Lego products are sold in more than 130 countries, including the USA.

The Complainant owns a huge number of trademark registrations all over the word, including the USA.

This Panel is satisfied that the Complainant’s trademark LEGO is one of the best-known trademarks in the world: the Complainant appears in the official top 500 Superbrands for 2012, provided by Superbrands UK, and appears as number 31 in the list of the most famous trademarks and brands in the world.

The Complainant is also the owner of more than 1000 domain names containing the term “Lego”.

The disputed domain name <legoarmy.com> was registered on July 10, 2012 and resolves to a parking page where several pay-per-click links exist.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark LEGO. The fame of the Complainant’s trademark LEGO was confirmed by numerous previous UDRP panel decisions (for example, see LEGO Juris A/S v. Reginald Hastings Jr., WIPO Case No. 2009-0680; LEGO Juris A/S v. Level 5 Corp., WIPO Case No. D2008-1692; and LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715).

The addition of the suffix “army” is not relevant and does not have any impact on the overall impression of the dominant part of the name “Lego”, instantly recognizable as a world famous trademark.

Rather, considering that the Complainant offers “lego armies”, the addition of the term “army” to the disputed domain name strengthens the impression of association with the Complainant.

Similarly, the mere addition of the gTLD “.com” is irrelevant because the generic top level domain may not be a distinctive element and it is unimportant to determine the confusing similarity between the trademark and the disputed domain name at issue.

The Complainant contends that it has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. The Complainant has also not found anything that would suggest that the Respondent has been using LEGO trademark in any other way that would give them any rights or legitimate interests in the name. Consequently, the Respondent may not claim any rights established by common usage.

The Complainant contends that no license or authorization has been given by the Complainant to the Respondent to use the trademark LEGO and that the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.

Furthermore, the Respondent is not using the domain name in connection with a bona fide offering of goods or services. The disputed domain name directs Internet users to a parked pay-per-click website, and by doing so, the Respondent is trying to sponge off the Complainant’s world famous trademark and is tarnishing the trademark LEGO.

The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith.

The Respondent’s bad faith registration is established by the fact that the Respondent was aware of the existence of the Complainant’s trademark, given its status of a well-known and reputed trademark with a substantial and widespread value and goodwill all over the word.

Moreover, the Respondent never replied to the Complainant’s cease and desist letter sent on August 29, 2012 and to the subsequent several reminders, and as stated in earlier decisions, the failure of the Respondent to respond to a cease and desist letter, or a similar attempt at contact, has been considered relevant in a finding of bad faith.

The Respondent’s bad faith use of the disputed domain name is evidenced by the fact that the disputed domain name is currently connected to a parked pay-per-click website; consequently, the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to websites, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship affiliation or endorsement of its websites.

B. Respondent

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

6. Discussion and Findings

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

(i) the disputed domain name registered by the Respondent 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 disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name <legoarmy.com> is confusingly similar to the Complainant’s LEGO trademark, a clearly well-known mark in which the Complainant has established rights through registration and extensive use.

The disputed domain name incorporates the Complainant’s LEGO trademark in its entirety; the only difference is the mere adjunction of the suffix “army”.

The addition of the above term is not enough to the Panel to prevent confusing similarity between the disputed domain name and the Complainant’s famous trademark (see America Online Inc. v. Yetech Communication Inc., WIPO Case No. D2001-0055; GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195; and Volkswagen AG v. Emir Ulu, WIPO Case No. D2005-0987).

On the contrary, considering that the Complainant, under the trademark LEGO, offers “armies” for sale, the addition of the term “army” is likely to enhance the confusion and to lead customers to believe that the disputed domain name is effectively linked to, affiliated with or connected to the Complainant.

The Panel believes that people considering the disputed domain name without awareness of its content may think that it is in some way connected and associated with the Complainant: this situation is known as “initial interest confusion” (see Covance, Inc. and Covance Laboratories Ltd v. The Covance Campaign, WIPO Case No. D2004-0206; CBS Broadcasting Inc., f/k/a CBS Inc. v. Nabil Z. aghloul, WIPO Case No. D2004-0988).

Finally, with regards to the suffix “.com”, as it was established in many previous UDRP decisions (see A.P. Møller v. Web Society, WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / 07@usa.net, WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; and Crédit Industrile et Commercial SA v. Name Privacy, WIPO Case No. D2005-0457), it does not generally affect the analysis under the first element of the Policy for the purpose of determining whether it is identical or confusingly similar to the Complainant’s trademark; indeed the suffix is a necessary component of the domain name and it generally does not give any distinctiveness.

There is no doubt to the Panel that the disputed domain name <legoarmy.com> is confusingly similar to the Complainant’s trademark. Therefore, the Panel finds that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

The Respondent did not reply to the Complainant’s contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence provided by the Complainant.

In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the disputed domain name, such as:

(i) use or preparation to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) being commonly known by the disputed domain name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or

(iii) making legitimate noncommercial 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.

There is no evidence in the record that the Respondent has any rights or legitimate interests in the disputed domain name.

The Complainant states that it has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name or anything that would suggest that the Respondent has been using LEGO trademark in any other way that would give them any rights or legitimate interests in the disputed domain name. Moreover, no license or authorization has been given by the Complainant to the Respondent to use the trademark LEGO and the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.

Furthermore, the use of the disputed domain name cannot be considered a bona fide offering of goods or services. The website to which the disputed domain name <legoarmy.com> resolves is a parking home page, where several pay-per-click links exist. Also in this regard, the Panel shares Complainant’s view and believes that by registering the disputed domain name the Respondent clearly intended to profit from the use of the term “Lego” which is confusingly similar to Complainant’s trademark LEGO, diverting Internet users to websites where pay-per-click links exist and generate gains for Respondent. This type of websites, in such circumstances as in this case, do not constitute a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy (see, besides UDRP WIPO decisions cited by Complainant, in particular, The American Automobile Association, Inc. v. Jack Holder, NAF Claim No. FA1227171; and Florida Department of Management Services v. Anthony Gorss (or AGCS), WIPO Case No. D2009-1194).

Since the Respondent has registered and is using the disputed domain name with the clear intention to use the Complainant’s mark and name for its own profit, it can be stated that such use does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.

Finally, no response was filed in the case and the Panel, in accordance with paragraph 14(b) of the Rules, draws the inference that: “non-response is indicative of a lack of interest inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493; and Giorgio Armani v. Yoon-Min Yang, WIPO Case No. D2005-0090).

Therefore, based on the evidence, the Panel is satisfied that the second element under paragraph 4(a) of the Policy is met.

C. Registered and Used in Bad Faith

The Panel finds that the disputed domain name was registered and is being used in bad faith.

The Complainant’s name, trademark and activity are well-known throughout the world and considering the widespread use and fame of the Complainant’s trademark, in this Panel’s view, the Respondent must have been aware of them when it registered the disputed domain name. And indeed, the Respondent’s awareness of the Complainant’s activity and rights may be inferred by the fact that the Respondent registered the disputed domain name incorporating the LEGO trademark in its entirety, with the mere addition of the suffix “army”.

As the Panel has found that the Respondent has no rights or legitimate interests in the disputed domain name, in line with other prior UDRP decisions (see Banca Sella s.p.a. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226; Ferrero S.p.A. v. Mario Pisano, WIPO Case No. D2000-1794; and Ferrero S.p.A. v. Publinord S.r.l., WIPO Case No. D2002-0395), the Panel believes that, given the circumstances of this case and in the absence of any rights or legitimate interests of the Respondent, and lacking any contrary evidence by the Respondent, the Respondent’s registration of disputed domain name confusingly similar to the Complainant’s worldwide well-known trademark suggests an opportunistic bad faith (see also MasterCard International Incorporated v. North Tustin Dental Associates, WIPO Case No. D2007-1412; and Mastercard International Incorporated v. Total Card Inc., WIPO Case No. D2007-1411).

Moreover, as referred by the Complainant, the Respondent did not reply to Complainant’s cease and desist letter sent on August 29, 2012 and to the subsequent several reminders. According to previous UDPR decisions, this Panel also finds that “the failure of the Respondent to respond to the letter of demand from the Complainant further supports an inference of bad faith” (see Bayerische Motoren Werke AG v. This Domain is For Sale/Joshuathan Investments Inc, WIPO Case No. D2002-0787; News Group Newspapers Ltd and News Network Ltd v. Momm Amed Ia, WIPO Case No. D2000-1623; and Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598, cited by Complainant).

Indeed, the Respondent has maintained the website at the disputed domain name despite the Complainant’s objections.

Such silence, ongoing cybersquatting and dilution are further evidence of Respondent’s bad faith (see Compiere Inc. v. James Zhong, WIPO Case No. D2007-0130; Compagnie Generale Des Etablissements Michelin v. Vaclav Novotny, WIPO Case No. D2009-1022; and RRI Financial, Inc. v. Ray Chen, WIPO Case No. D2001-1242).

Concerning the use of the disputed domain name, Complainant has proven that it resolves to a landing page that hosts pay-per-click sponsored links to websites at which also competitive products are offered. This activity constitutes evidence of bad faith use of the disputed domain name (see McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353 where the Panel found that “the use of another’s trademark to generate revenue from Internet advertising can constitute registration and use in bad faith as a classic illustration of the conduct condemned by paragraph 4(b)(iv) of the Policy [...]”).

Indeed, by exploiting the renown of the LEGO trademark, Respondent diverts Internet users looking for Complainant’s trademark and website and seeks to gain profit out of the disputed domain name by providing sponsored links to several other websites and obtaining revenues from the diverted traffic (besides the decisions mentioned by the Complainant, see also MasterCard International Incorporated v. Abadaba S.A., Administrador de dominiosCase, WIPO Case No. D2008-0325; and Credit Industriel et Commercial S.A v. Maison Tropicale SA, WIPO Case No. D2007-0955).

In this Panel’s view, according to previous UDRP decisions, “a potential consumer accessing the disputed domain name would have the legitimate expectation that he was communicating with the Complainant, and would, consequently be misled, to the possible detriment of the Complainant because of the existence of sponsored links. This, in the Panel’s view, justifies a finding that the disputed domain name has been used in bad faith” (see Aktiebolaget Electrolux v. DomainsByProxy.com / Plessers Appliances, WIPO Case No. D2011-0317).

In light of all the above circumstances, the Panel is satisfied that the third element is met and that the disputed domain name <legoarmy.com> was registered and is being used in bad faith.

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 name <legoarmy.com> be transferred to the Complainant.

Alessandra Ferreri
Sole Panelist
Date: February 6, 2013

 

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