World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Miguel Garcia

Case No. D2012-2445

1. The Parties

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

Respondent is Miguel Garcia of Escondido, California, United States of America (the “United States”).

2. The Domain Names and Registrar

The Domain Names <legotie.com> and <legobowtie.com> (the “Domain Names”) are 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 Names. On December 13, 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 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.

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 46 pages of Annex 8 of the Complaint.

The Domain Names <legotie.org> and <legobowtie.org> were registered by Respondent on July 8, 2012.

5. Parties’ Contentions

A. Complainant

Complainant contends (in accordance with paragraph 4(a) of the Policy) that the Domain Names are confusingly similar with the LEGO Trademark in which it has rights; that Respondent has no rights or legitimate interests in the Domain Names; and that Respondent registered and uses the Domain Names 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, Super brands (UK) Ltd (“Superbrands UK”), LEGO Trademark appears as number 31 among 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.

Complainant’s licensees are authorized to exploit Complainant’s intellectual property rights, including its trademark rights, in the United States and elsewhere. It is the strict policy of Complainant that all domain names containing the word LEGO must be owned by Complainant.

(i) Identical or confusingly similar to a trademark in which Complainant has rights

Complainant contends that the dominant part of the Domain Names <legotie.com> and <legobowtie.com> 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.

Complainant urges that the Domain Names are confusingly similar to Complainant’s world famous LEGO Trademark. The addition of the terms “tie” and “bowtie” is not relevant and will not have any impact on the overall impression of the dominant part of the Domain Names, “lego”, instantly recognizable as a world famous trademark. Given that Complainant offers a product by the name of “Tie Fighter”, the addition of the suffix “tie” is rather fitted to strengthen the impression of association with Complainant.

The addition of the Generic Top-Level Domain (“gTLD”) “.com” does not have any impact on the overall impression of the dominant portion of the Domain Names and is therefore irrelevant to determine the confusing similarity between the LEGO Trademark and the Domain Names.

Complainant states that anyone who sees the Domain Names is bound to mistake them for domain names 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 the Domain Names 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 third party’s website. By using the LEGO Trademark as a dominant part of the Domain Names, Respondent exploits the goodwill and the image of the LEGO Trademark, which may result in dilution and other damage for Complainant’s trademark. People seeing the Domain Names, even without being aware of the content, are likely to think that the Domain Names are in some way connected to Complainant (“initial interest confusion”).

(ii) No rights or legitimate interests in respect of the Domain Names

Complainant states it has not found that Respondent has any registered trademarks or trade names corresponding to the Domain Names. 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 Domain Names. 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.

Complainant contends that it is highly unlikely that Respondent would not have known of Complainant’s rights in the LEGO Trademark at the time of the registration of the Domain Names. It is rather obvious that it is the fame of the LEGO Trademark that has motivated Respondent to register the Domain Names. This, among other facts, proves that Respondent’s interests cannot have been legitimate.

Complainant asserts that Respondent is not using the Domain Names in connection with a bona fide offering of goods or services. Instead, Respondent has intentionally chosen the Domain Names based on a registered trademark in order to generate traffic to a parked pay–per-click website. By this, Respondent is using the LEGO Trademark to mislead Internet users to commercial websites and consequently, it is tarnishing the LEGO Trademark. No evidence has been found proving that Respondent uses the Domain Names as a company name or has any other right or legitimate interest in the name “lego”. Respondent is trying to sponge off 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, Complainant states that Respondent has no rights or legitimate interest in respect of the Domain Names.

(iii) The domain name was registered and used in bad faith

As noted above, Complainant states that the LEGO Trademark has the status of a well-known mark with a substantial and widespread reputation throughout the world. The number of third party domain name registrations comprising the trademark 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 No. 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 the key factor that influenced Respondent’s decision to register the Domain Names.

Complainant first tried to contact Respondent on August 29, 2012, through a cease and desist letter sent by normal mail. In the letter, Complainant advised Respondent that the unauthorized use of the LEGO Trademark in the Domain Names violated Complainant’s rights. Complainant requested a voluntary transfer of the Domain Names and offered compensation for the expenses of registration and transfer fees, not exceeding out of pocket expenses. No reply was received. Since the efforts of trying to solve the matter amicably were unsuccessful, Complainant chose to file a complaint according to the UDRP process.

The Domain Names are currently connected to a parked pay-per-click website. Whether or not Respondent has influenced which links should be included on the websites 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 web pages itself. According to Complainant’s statements, the circumstances of Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912, apply in this case as well. Consequently, Respondent is using the Domain Names to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with Complainant’s trademark.

To summarize Complainant’s arguments, LEGO is a famous trademark worldwide. It is highly unlikely that Respondent was unaware of the rights Complainant has in LEGO the trademark and the value of said trademark at the time of the registration of the Domain Names. There is no connection between Respondent and Complainant. By using the Domain Names, Respondent is not making a legitimate noncommercial or fair use but it is misleadingly diverting consumers for its own commercial gain. Consequently, Respondent should be considered to have registered and to be using the Domain Names in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is in default.

6. Discussion and Findings

One fundamental requirement of due process is that a respondent has notice of proceedings that may substantially affect its rights. The Policy, Rules, and Supplemental Rules establish procedures intended to assure that a respondent is given adequate notice of proceedings commenced against it and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify Respondent of the Complaint and initiation of these proceedings and that the failure of Respondent to furnish a Response to the Complaint is not due to any omission by the Center. There is sufficient evidence in the case file for the Panel to conclude that the Center discharged its obligations under Rules, paragraph 2(a).

In case of default, under paragraph 14(a) of the Rules, “the Panel shall proceed to a decision on the complaint”, and under paragraph 14(b) of the Rules, “the Panel shall draw such inferences [from the default] as it considers appropriate”. Furthermore, paragraph 15(a) of the Rules provides that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Since Respondent has not submitted any evidence, the Panel will render its Decision on the basis of the uncontroverted evidence supplied by Complainant.

As it has been recited in many UDRP decisions, in order to succeed in its Complaint, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These are that:

(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights to or legitimate interests in respect of the Domain Names; and

(iii) Respondent has registered and is using the Domain Names in bad faith.

A. Identical or Confusingly Similar

Complainant contends that it has rights in the LEGO Trademark and that the Disputed Domain Names are confusingly similar thereto.

In particular, Complainant contends that the LEGO Trademark is famous, being “…among the best-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials”. Indeed, the LEGO Trademark and brand have been recognized as being famous. For instance, a list of the official top 500 Superbrands for 2012, provided by Superbrands UK, showing LEGO Trademark as number 31 of the most famous trademarks and brands in the world.

The Panel finds that Complainant has established rights in the LEGO Trademark, just as previous UDRP panels 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”).

Moreover, the Panel finds that the Domain Names are confusingly similar to Complainant’s trademark, since they incorporate Complainant’s Trademark in its entirety with the addition of the words “tie” and “bowtie”, respectively. The Panel considers the suffixes “tie” and “bowtie”, respectively, do not have impact enough on the overall impression of the dominant part of the Domain Names as to lead away from infringement. Due to the reputation of the LEGO Trademark there is a considerable risk that the trade public will perceive the Domain Names either as domain names owned by Complainant or that there is some kind of commercial relationship with Complainant. Complainant indeed offers a product by the name TIE FIGHTER. For this reason, the Panel finds addition of the suffix “tie” is rather fitted to strengthen the impression of association with the Complainant.

The addition of a gTLD is technically required and therefore generally irrelevant to determine the confusing similarity between the LEGO Trademark and the Domain Names, even more so as Complainant’s extensive website <lego.com> contains the very same gTLD “.com” as the Domain Names.

Because the Domain Names are confusingly similar to the LEGO Trademark of Complainant, the Panel considers that Respondent exploits the goodwill and the image of Complainant’s trademark (as discussed below) and that Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that Complainant made a prima facie showing that Respondent has no rights or legitimate interests in the Domain Names. Complainant alleged that Respondent is not commonly known by the Domain Names, nor made legitimate noncommercial or fair use of them. The Panel observes that Respondent is not affiliated or related to Complainant in any way, nor from the available record is Respondent generally known by the Domain Names or authorized by Complainant to use Complainant’s trademarks. Moreover, the evidence shows that the Domain Names are linked to parked pay-per-click websites (Annex 11 to the Complaint). Those websites generally are used to mislead Internet users to commercial websites in order to generate traffic and income.

Respondent has not made any effort in the proceedings to demonstrate rights or legitimate interests in the Domain Names. In the absence of any plausible explanation, the addition of the LEGO Trademarks to the words “tie” and “bowtie” appears to play deliberately on the Complainant’s Trademark and the use of the Domain Names, which are confusingly similar to Complainant’s well-known trademark, does not provide rights or legitimate interests in the Domain Names under the Policy.

For these reasons, the Panel finds that Respondent has no rights or legitimate interests with respect to the Domain Names under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Regarding the registration and the use of the Domain Names 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 registered the LEGO Trademark in the United States in 1953. In 2012, when Respondent registered the Domain Names, 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, where Respondent is located. Therefore, it is highly unlikely that Respondent did not know of the Complainant's trademark LEGO at the time of the registration of the Domain Names. After the registration of the Domain Names, Complainant informed Respondent through a cease and desist letter sent by normal mail, that the registration and use of the Domain Names violated Complainant's trademark rights. Complainant requested a voluntary transfer and offered compensation for the expenses of registration and transfer fees. Respondent never replied.

Under paragraph 4(b)(iv) of the Policy a domain name is considered to be registered in bad faith, when by using the domain name the Respondent intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark.

In the present case, the websites are connected to parked pay-per-click websites with links to the Complainant’s and Complainant’s competitors.

In the context of parked pay-per-click websites, numerous UDRP panels have found that similar attempts to attract Internet users for commercial gain infringes complainant’s rights, whether or not this gain was actually derived by respondent (see e.g. Villeroy&Boch AG v. Mario Pingerna, supra).

The Panel therefore is confident, that Respondent’s intention was to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with Complainant’s LEGO Trademark. Respondent is not making a legitimate noncommercial or fair use but is misleadingly diverting Internet users for his own commercial gain.

As a result, the Panel finds that the Domain Names <legotie.com> and <legobowtie.com> were registered and are being used by Respondent in bad faith and considers the requirements of paragraph 4(a)(iii) of the Policy to be fulfilled.

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 Domain Names, <legotie.com> and <legobowtie.com> be transferred to the Complainant.

Christian Gassauer-Fleissner
Sole Panelist
Date: February 6, 2013

 

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