WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Gloria Wilson
Case No. D2012-2444
1. The Parties
Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is Gloria Wilson of Gainesville, Florida, United States of America (the “United States”).
2. The Domain Name and Registrar
The disputed domain name <legoreview.info> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2012. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 13, 2012, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on December 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 10, 2013.
The Center appointed Christian Gassauer-Fleissner as the sole panelist in this matter on January 22, 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
Complainant has registered the trademark LEGO (the “LEGO Trademark”) around the world in connection with a range of toy and related goods. Complainant has subsidiaries and branches around the world, and LEGO products are sold in more than 130 countries including the United States, where Respondent is located. The United States trademark registration number is 1018875 for LEGO.
Complainant owns the domain name <lego.com> (registered on August 22, 1995). Furthermore, Complainant is the owner of more than 1,000 domain names containing the term “lego”. Its vast portfolio of domain names is listed in Annex 8 of the Complaint. It is the strict policy of Complainant that all domain names containing the word “lego” should be owned by the Complainant.
The Domain Name <legoreview.info> was registered by Respondent on September 5, 2012.
5. Parties’ Contentions
Complainant contends in accordance with paragraph 4(a) of the Policy that the Domain Name is confusingly similar with the LEGO Trademark in which it has rights; that Respondent has no rights or legitimate interests in the Domain Name; and that Respondent registered and uses the Domain Name in bad faith.
Complainant states that the LEGO Trademark is among the best-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO Trademark on all products, packaging, displays, advertising, and promotional materials. For instance, in a list of the official Top 500 Consumer Super brands for 2012, provided by the British company, independent arbiter on branding, Superbrands (UK) Ltd, LEGO Trademark appears as number 31 of the most famous trademarks and brands in the world. The LEGO group has expanded use of the LEGO Trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. The LEGO group also maintains an extensive website under the domain name <lego.com>.
Complainant explains that the LEGO Trademark is in possession of substantial inherent and acquired distinctiveness. The awareness of the LEGO Trademark is considered to be significant. According to the provisions of Article 6bis of the Paris Convention for protection of Industrial Property (“PC”), confirmed and extended by Articles 16.2 and 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”), the status of a well-known trademark provides the owner of such a trademark with the right to prevent any use of the mark or a confusingly similar denomination in connection with any products or services, regardless of the list of the products and services for which the trademark is registered. Thus, the legal protection for the LEGO Trademark goes far beyond toys and goods similar to toys.
(i) Identical or confusingly similar to a trademark in which Complainant has rights
Complainant contends that the dominant part of the Domain Name <legoreview.info> comprises the word “lego”, which is identical to the registered LEGO Trademark, which has been registered by Complainant in many trademarks and domain names in numerous countries around the world (Annex 6 and 8 to the Complaint).
The fame of the trademark has been confirmed in numerous previous UDRP decisions (LEGO Juris A/S v. Level 5 Corp., WIPO Case No. 2008-1692; LEGO Juris A/S v. Michael Longo, WIPO Case No. 2008-1715; LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680).
The addition of the suffix “review” is not relevant and will not have any impact on the overall impression of the dominant part of the Domain Name, “lego”, instantly recognizable as a world famous trademark.
The addition of the Generic Top-Level Domain (“gTLD”) “.info” does not have any impact on the overall impression of the dominant portion of the Domain Name and is therefore irrelevant to determine the confusing similarity between the LEGO Trademark and the Domain Name.
Anyone who sees the Domain Name is bound to mistake it for a domain name related to Complainant. The likelihood of confusion includes an obvious association with the trademark of Complainant. With reference to the reputation of the LEGO Trademark there is a considerable risk that the trade public will perceive Domain Name either as a domain name owned by Complainant or that there is some kind of commercial relation with Complainant. The LEGO Trademark also risks being tarnished by being connected to a website. By using the LEGO Trademark as the dominant part of the Domain Name, Respondent exploits the goodwill and the image of the LEGO Trademark, which may result in dilution and other damage for Complainant’s trademark. Persons seeing the Domain Name, even without being aware of the content, are likely to think that the Domain Name is in some way connected to the Complainant (“initial interest confusion”).
Summarizing this, the Complainant says, that:
a) Complainant is the owner of the well-known trademark LEGO.
b) The Domain Name is clearly confusingly similar to the Complainant’s registered trademark LEGO.
c) The suffix “review” does not detract from the overall impression and the Domain Name must therefore be considered to be confusingly similar with the Complainant’s trademark.
(ii) No rights or legitimate interests in respect of the Domain Name
Complainant states it has not found that Respondent has any registered trademarks or trade names corresponding to the Domain Name. Complainant has also not found anything that would suggest that Respondent has been using the term “lego” in any way that would give Respondent rights or legitimate interests in the name. Consequently, Respondent may not claim any rights established by common usage.
It is also clear that no license or authorization of any kind has been given by Complainant to Respondent. Respondent is not an authorized dealer of Complainant’s products and has never had a business relationship with Complainant.
Furthermore, Complainant states that it is highly unlikely that Respondent would not have known of Complainant’s legal rights in the LEGO Trademark at the time of the registration. It is rather obvious that the fame of the trademark has motivated Respondent to register the Domain Name. That is, the Respondent cannot claim to have been using LEGO Trademark, without being aware of the Complainant’s rights to it. This, among other facts, proves that Respondent’s interests cannot have been legitimate. In Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314, it was established, that any use of such trademark in a domain name would violate the rights of the trademark owner.
Complainant asserts that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. Instead, the Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic and income through a blog containing sponsored links. By this, Respondent is using the LEGO Trademark and misleading Internet users to commercial Web sites and consequently, the Respondent is tarnishing the LEGO Trademark.
No evidence has been found that Respondent uses the name as a company name or has any other legal right in the name “lego”. The Respondent is trying to sponge off the Complainant’s world famous trademark. In Drexel University v. David Brouda, WIPO Case No. D2001-0067, the panel stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant.” Referring to the above mentioned, Respondent has no rights or legitimate interests in respect of the Domain Name.
(iii) The Domain Name was registered and used in bad faith
As noted above, Complainant states that in respect of toys the LEGO Trademark has the status of a well-known and reputed mark with a substantial and widespread reputation throughout the world. The number of third party domain name registrations comprising the trade mark LEGO in combination with other words has skyrocketed the last years (as an indication, please see e.g., Lego Juris A/S v. Hu Liang/Dolego, WIPO Case No. D2009-0848; LEGO Juris A/S v. Whois Privacy Protection Service, Inc./ Stop2Shop, G V, WIPO Case No. D2009-0784; LEGO Juris A/S v. Private, Registration / Dohe Dot, WIPO Case No. D2009-0753; LEGO Juris A/S v. EcomMutual, WIPO Case No. D2009-0685; LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680; LEGO Juris A/S v. Deng Yi Xia, WIPO Case No. D2009-0644; LEGO Juris A/S v. Mohamed Ouattara / Integral Assets Ltd, WIPO Case No. D2009-0564; Lego Juris A/S v. Gioacchino Zerbo, WIPO Case No. D2009-0500; LEGO Juris A/S v. Mike Morgan, WIPO Case No. D2009-0438; LEGO Juris A/S v. Bladimir Boyiko, WIPO Case No. D2009-0437; LEGO Juris A/S v. Domainproxyagent.com and Compsys Domain Solutions Private Limited, WIPO Case No. D2009-0381; LEGO Juris A/S v. Zhijun Guo, WIPO Case No. D2009-0184; LEGO Juris A/S v. P N S Enterprises, WIPO Case No. D2009-0170; LEGO Juris A/S v. David Palmer, WIPO Case D2008-1826; LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715; LEGO Juris A/S v. Level 5 Corp., WIPO Case No. D2008-1692). The considerable value and goodwill of the LEGO Trademark is most likely a large contribution to this and also what made the Respondent’s register the Domain Name.
Complainant first tried to contact Respondent on October 31, 2012, through a cease and desist letter sent by e-mail and advised Respondent that the unauthorized use of the LEGO Trademark within the Domain Name violated the Complainant’s rights in said trademark. The Complainant requested a voluntary transfer of the Domain Name and offered compensation for the expenses of registration and transfer fees (not exceeding out of pocket expenses).
Despite several reminders sent, no reply was ever received.
Since the efforts of trying to solve the matter amicably were unsuccessful, Complainant chose to file a complaint according to the UDRP process. It has been mentioned in earlier UDRP decisions that the failure of a respondent to respond to a cease and desist letter, or a similar attempt of contact, has been considered relevant in a finding of bad faith, see News Group Newspapers Limited and News Network Limited v. Momma med Ia, WIPO Case No. D2000-1623; Nike Inc. v. Azumano Travel, WIPO Case No. D2000-1598 and America Online Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460.
The Domain Name is currently connected to a blog about weight loss and has nothing to do with Complainant. The blog contains sponsored links leading to “www.amazon.com”, where third party products are offered for sale. Consequently, Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with Complainant’s marks. Whether or not Respondent influenced what links should be included in the website is irrelevant for the finding of bad faith in this case. It is also without relevance whether or not Respondent is actually getting revenue from the webpage itself.
In Inter Ikea Systems B.V. v. Daniel Woodson, WIPO Case No. D2011-1933, also concerning a blog containing sponsored links, the panel stated that “The only rational reason for using such a domain name would be to attract some of the Complainant’s customers to Respondent’s site. Once there, at least some of them will click on the sponsored links for which the Respondent will be paid. This falls full square within the ambit of paragraph 4(b)(iv) of the Policy. ” Complainant states, that the same reasoning should apply here.
To summarize, Complainant states that LEGO is a famous trademark worldwide. There is no doubt that the Respondent was aware of the rights Complainant has in the trademark and the value of said trademark at the time of the registration. There is no connection between Respondent and Complainant. By using the Domain Name, Respondent is not making a legitimate noncommercial or fair use but is misleadingly diverting consumers for its own commercial gain. Consequently, Respondent should be considered to have registered and to be using the Domain Name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the present dispute based upon the Complaint, notwithstanding the failure of any person to lodge a Response.
Notwithstanding the failure to lodge a Response, it remains incumbent on Complainant to make out its case in all respects under the Rules as set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights (paragraph 4(a)(i)); and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
A. Identical or Confusingly Similar
Complainant contends that it has rights in the LEGO Trademark and that the Domain Name is confusingly similar thereto.
The Panel finds that Complainant has established rights in the LEGO Trademark, just as previous UDRP panels have found that Complainant has established rights in this mark and that it is distinctive and well-known. The fame of the trademark has been confirmed in numerous previous UDRP decisions: LEGO Juris A/S v. RampePurda, WIPO Case No. 2010-0840 (“LEGO is clearly a well-known mark”); LEGO Juris A/S v. Domain Administrator, WIPO Case No. 2010-1260 (“In the present case, the disputed domain names incorporate the Complainant’s well-known registered trademark LEGO”); and LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680 (“LEGO is a mark enjoying high reputation as construction toys popular with children”).
This Panel finds that neither the suffix “review” nor the addition of the gTLD “.info” avoid confusing similarity (see also F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The word “review” does not have enough impact on the overall impression of the dominant part of the Domain Name, “lego”, to lead away from infringement. Due to the reputation of Complainant’s trademark, there is a considerable risk that the trade public will perceive the Domain Name either as a domain name owned by Complainant or that there is some kind of commercial relation with Complainant. The gTLD “.info” furthermore is without legal significance since the use of a gTLD is technically required to operate the domain name.
Consequently, the Panel finds that Complainant has shown that the Domain Name is confusingly similar to trademarks in which Complainant has rights and that Complainant satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Once Complainant establishes a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name, the burden shifts to Respondent to show that it has rights or legitimate interests in respect to the Domain Name (Policy, paragraph 4(a)(ii)).
In the present case, Complainant alleged that Respondent has no rights or legitimate interests in respect of the Domain Name and Respondent failed to assert any such rights or legitimate interests.
The Panel finds that by providing the relevant evidence, Complainant convincingly established such a prima facie case inter alia due to the fact that Complainant has not licensed or otherwise permitted Respondent to use its LEGO Trademark or a variation of it. Respondent did not provide any evidence to show any rights or legitimate interests in the Domain Name. Furthermore, Respondent is neither commonly known by the Domain Name nor adduces itself arguments why it shall have the right or a legitimate interest in the Domain Name. Moreover, the evidence shows that the Domain Name is displaying links to websites where third party products are offered for sale. In the absence of any plausible explanation, the addition of the mark LEGO to the word “review” appears to play deliberately on Complainant’s trademark.
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Name, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Regarding the registration and the use of the Domain Name in bad faith according to paragraph 4(a)(iii) of the Policy, the Panel considers the following:
As convincingly established by Complainant, the predecessor of LEGO has registered the LEGO Trademark in the United States in 1953. In 2012, when Respondent registered the Domain Name, the LEGO Trademark has been registered in more than 100 countries and the LEGO products are sold in more than 130 countries, including in the United States. Therefore, it is highly unlikely that Respondent did not know of the Complainant's LEGO Trademark at the time of the registration of the Domain Name. After the registration, Complainant informed Respondent that the registration and use of the Domain Name violated Complainant's trademark rights. Despite several reminders sent, Respondent never replied back.
Consequently, the Panel draws the conclusion that Respondent knew of Complainant, its products and its trademarks prior to and after the registration of the Domain Name and has been using the Domain Name in bad faith.
Furthermore, previous UDRP panels have determined that incorporating a widely-known trademark, such as the Complainant’s LEGO Trademark as a domain name is a clear indication of bad faith (CaixaD´Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464; Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441).
It results from the Panel’s factual findings that Respondent primarily registered and is using the Domain Name inter alia to redirect Internet users to other websites, in particular “www.amazon.com”, where third party products can be purchased, and that Respondent thereby intends to generate commercial revenue. The Panel therefore finds that by using Complainant’s trademark as the distinctive element of the Domain Name, Respondent creates a risk of confusion, at least in the sense that the visitors to the website will, at least initially, expect a website operated by Complainant or by one of its retailers. In any case, the visitor will have the impression that the websites to which the Domain Name resolves is associated with, or endorsed by, the owner of the LEGO Trademark, i.e. Complainant. The fact the website to which the Domain Name resolves comprises sponsored links redirecting the user to third party websites, such as “www.amazon.com”, where third party products are offered for sale, shows bad faith conduct on Respondent’s part (e.g. Deceuninck NV v. William Vaughan, smtm investments ltd, WIPO Case No. D2007-1911).
In the absence of evidence to the contrary, the Panel is persuaded that Respondent knew of, or should have known of Complainant’s trademark at the time Respondent registered the Domain Name.
In view of the above and in light of Complainant’s highly distinctive and famous registered trademark, the Respondent’s use of a confusingly similar Domain Name and Respondent’s lack of further Response, the Panel finds that Respondent registered and is using the Domain Name in bad faith.
Accordingly, the Panel finds that Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <legoreview.info> be transferred to the Complainant.
Date: February 6, 2013