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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. PrivacyProtect.org / Kim Bum

Case No. D2013-0402

1. The Parties

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

The Respondent is PrivacyProtect.org of Nobby Beach, Queensland, Australia; Kim Bum of Seoul, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <legoherofaktory.com> is registered with RegisterMatrix.com Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2013. On February 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 4, 2013, 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 March 5, 2013 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 amendment to the Complaint on the same day.

The Center verified that the Complaint together with the amendment to 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 March 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 27, 2013.

The Center appointed Angela Fox as the sole panelist in this matter on April 11, 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 Complainant, LEGO Juris A/S, is the proprietor of the trademark LEGO and marks incorporating LEGO, used throughout the world in connection with the well-known LEGO-branded construction toys and other LEGO-branded products since at least as early as 1953. The Complainant operates a website promoting the LEGO brand and the products made and sold under it at ‘’www.lego.com’’. One of the Complainant’s LEGO-branded product lines is marketed under the name LEGO HERO FACTORY, and a screenshot relating to this line was annexed to the Complaint.

The business of the Complainant and its licensees under the LEGO brand is very substantial, with annual revenue in 2009 alone totaling more than USD 2.8 billion. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries. In the Republic of Korea, where the Respondent, Kim Bum, is based, LEGO-branded products have been sold for at least 15 years.

The Complainant owns trademark registrations for LEGO and marks incorporating LEGO in countries around the world and attached to the Complaint were details of numerous such registrations, including Rebublic of Korea Registration No. 66677 for the word LEGO with a registration date of January 21, 1980, and official database print-outs including for US Registration No. 1018875 with a registration date of September 17, 1974.

The Complainant also owns more than 2,400 domain names incorporating the word LEGO, including for example <lego.com> and <lego.pl>; details of the Complainant’s LEGO-composite domain names were also annexed to the Complaint.

The trademark LEGO is among the best-known trademarks in the world, due in part to decades of extensive advertising and prominent depiction of the LEGO mark on products, packaging, displays, advertising and promotional materials. The fame of the LEGO brand has been independently recognized; annexed to the Complaint was a copy of Superbrands UK’s annual brand rankings for 2009 – 2010 in which LEGO ranked as the 8th most famous trademark in the world.

The disputed domain name <legoherofaktory.com> was registered on September 12, 2012 in the name of a privacy shield. Screenshots from the website linked to the disputed domain name were annexed to the Complaint, showing that it has been used to host a pay-per-click landing page featuring sponsored links to third-party commercial websites, including to third-party retailers of LEGO-branded products and websites relating to activities such as hotel accommodation, car rental and email marketing.

The Complainant sent a cease and desist letter to PrivacyProtect.org requesting transfer of the disputed domain name on October 26, 2012 and reminders on November 5 and 20, 2012, but no response was ever received.

After the Complaint was filed, the Registrar disclosed the domain name registrant’s identity as Kim Bum of Seoul, Republic of Korea. The Complainant filed an amended Complaint naming Kim Bum as the Respondent and a supplemental submission, which the Panel accepts, stating that Kim Bum was also the registrant in respect of two other LEGO-composite domain names against which the Complainant has brought successful proceedings under the UDRP, namely, LEGO Juris A/S v. PrivacyProtect.org / Kim Bum - Kim Bum LLC, WIPO Case No. D2012-2025 and LEGO Juris A/S v. PrivacyProtect.org / Kim Bum LLC, WIPO Case No. D2012-2462.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to the famous LEGO trademark, which the Complainant claims is entitled to well-known status under the TRIPS Agreement, and that the words “hero factory” merely reinforce the impression that the disputed domain name is related to the Complainant because the Complainant has a product line called LEGO HERO FACTORY.

The Complainant also submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not authorized the Respondent to use the LEGO trademark or any mark incorporating it, and the Respondent does not appear to own, to be known by or to be using any trademark or trading name corresponding to the disputed domain name. The Complainant submits that the Respondent’s use of the disputed domain name to host a pay-per-click site featuring links to third-party websites is inherently misleading and is not use in connection with a bona fide offering of goods or services. In this regard, the Complainant notes that the Respondent cannot have failed to have been aware of the Complainant’s rights in the LEGO brand at the time the disputed domain name was registered and that its misleading use is therefore intentional and is not bona fide use within the meaning of the Policy.

Finally, the Complainant submits that the disputed domain name was registered and is being used in bad faith. LEGO is a famous trademark worldwide and the Complainant notes that the LEGO mark is registered inter alia in the Republic of South Korea and has been used for at least 15 years in that country, where the Respondent, Kim Bum, is based. The Complaint contends that there is no doubt that the Respondent was aware of the Complainant’s rights at the time the disputed domain name was registered and that its use of the disputed domain name to host a pay-per-click landing site from which it is believed to derive click-through revenue demonstrates that the Respondent has used the disputed domain name intentionally for commercial gain to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s famous mark.

The Complainant also submits that the Respondent’s registration of two other LEGO-composite domain names against which the Complainant has brought successful proceedings under the UDRP, namely LEGO Juris A/S v. PrivacyProtect.org / Kim Bum - Kim Bum LLC, WIPO Case No. D2012-2025 and LEGO Juris A/S v. PrivacyProtect.org / Kim Bum LLC, WIPO Case No. D2012-2462, demonstrates that the Respondent appears to have engaged in a pattern of registration of LEGO-composite domain names in order to prevent the Complainant from reflecting its LEGO trademark in corresponding domain names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:

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

(ii) a respondent has no rights or legitimate interests in the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.

A. Identical or Confusingly Similar

The Complainant has shown that it owns registered trademark rights in LEGO and marks incorporating LEGO around the world. LEGO is, moreover, an internationally well-known trademark, as evidenced by the materials annexed to the Complaint.

The disputed domain name incorporates the Complainant’s distinctive LEGO mark in its entirety, differing only in the additional element “herofaktory”. This is likely to be understood as corresponding to the English words “hero factory”, which the Complainant has shown it uses as part of its LEGO HERO FACTORY product line.

The additional elements in the disputed domain name are likely therefore to reinforce the impression created by the presence of the famous LEGO mark, namely that the disputed domain name is that of or in some way related to the Complainant and its LEGO-branded toys and products.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s LEGO trademark.

B. Rights or Legitimate Interests

The Complainant has made out a prima facie case that the Respondent does not enjoy a right or legitimate interest in the disputed domain name. The Complainant has not authorized the Respondent to use the LEGO trademark or any mark incorporating it, and the Respondent does not appear to own, to be known by or to be using any trademark or trading name corresponding to the disputed domain name. The Respondent has made no attempt to demonstrate that it does enjoy a right or legitimate interest in the disputed domain name.

Under paragraph 4(c)(i) of the Policy, a panel may find that a respondent has a right or legitimate interest in a disputed domain name if the circumstances suggest that before any notice to it of the dispute, the respondent used, or made demonstrable preparations to use, the disputed domain name or a name corresponding to it in connection with a bona fide offering of goods or services. In this case, it is clear from the Complaint that the Respondent has been using the disputed domain name to link to a landing site page hosting links to third-party commercial websites in various fields, including websites offering LEGO-branded toys for sale as well as websites relating to activities in fields as diverse as hotel accommodation, car rental and email marketing. It is likely that the Respondent profits from click-through income as the Complainant contends, and the Respondent does not deny this.

The provision of pay-per-click links through a landing site may amount to a bona fide offering of services capable of conferring a right or legitimate interest under paragraph 4(c)(i) of the Policy where the domain names consist of dictionary words and their value as links to pay-per-click sites is linked to the dictionary meanings rather than to any trademark significance (see inter alia mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc, WIPO Case No. D2007-0141). In this case, however, the value of the disputed domain name as a means of attracting Internet users is bound up in the trademark significance of “lego”, which is both an invented word and an internationally famous brand. The Respondent’s use of the Complainant’s famous trademark to attract Internet users to a website offering links to unrelated third-party websites is a form of bait-and-switch selling, and the Respondent’s activities are not in the Panel’s view a bona fide offering of goods or services capable of conferring a right or legitimate interest in the disputed domain name (see similarly mVisible Technologies, Inc. supra; Robert Bosch GmbH v. Asia Ventures, Inc. WIPO Case No. D2005-0946; and LEGO Juris A/S v. J.h.Ryu, WIPO Case No. D2010-1156).

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

As noted above, the disputed domain name is confusingly similar to the Complainant's internationally well-known LEGO trademark, and the Respondent has used it to host pay-per-click links to unrelated third-party commercial websites.

Given the fame of the LEGO brand and its use in the Republic of Korea, the Respondent cannot plausibly deny, nor has it attempted to deny, that it was aware of the Complainant’s LEGO brand at the time the disputed domain name was registered. The fact that the disputed domain name as a whole is virtually identical to the name of the Complainant’s LEGO HERO FACTORY product line further supports the Complainant’s contention that the disputed domain name was registered with the Complainant’s brand in mind.

The Respondent’s use of the disputed domain appears to have been calculated to attract Internet users by creating a likelihood of confusion with the Complainant's LEGO mark and then to profit from resulting click-through income arising from visits to its website.

As noted in The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC, WIPO Case No. D2009-0057, “The overriding objective of the Policy is ‘to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another’. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.”

In the Panel’s view, the Respondent’s deliberate use of a domain name that is confusingly similar to the Complainant’s internationally well-known trademark in order to lure Internet users to a site hosting pay-per-click links to third-party websites is evidence that the Respondent registered the disputed domain name and has used it in order to profit from and exploit the Complainant’s famous trademark. The Panel concludes that the disputed domain name was registered and has been used in bad faith.

The Panel also notes that the Respondent has been found to have registered and used two other domain names incorporating the LEGO trademark in bad faith in LEGO Juris A/S v. PrivacyProtect.org / Kim Bum - Kim Bum LLC, supra and LEGO Juris A/S v. PrivacyProtect.org / Kim Bum LLC, supra. Three separate registrations of domain names incorporating the LEGO trademark by the same Respondent is in the Panel’s view sufficient to constitute a pattern of registration targeting the Complainant in order to prevent the Complainant from reflecting its LEGO trademark in corresponding domain names under paragraph 4(b)(ii) of the Policy (see inter alia Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty, WIPO Case No. D2009-0798; Playboy International Enterprises Inc. v. Tom Baert, WIPO Case No. 2007-0968; and Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046; although all these cases involved more than three domain names, a pattern of targeting applies to these and to the present case equally).

The Panel finds that the Respondent both registered and has used the disputed domain name in bad faith under paragraph 4(b)(ii) and 4(b)(iv) of the Policy.

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 <legoherofaktory.com> be transferred to the Complainant.

Angela Fox
Sole Panelist
Date: April 28, 2013

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