WIPO Arbitration and Mediatin Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Frank Park / Privacy Protection Service INC d/b/a PrivacyProtect.org
Case No. D2014-0725
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Frank Park of Seoul, Republic of Korea; Privacy Protection Service INC d/b/a PrivacyProtect.org of Nobby Beach, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <legoxmas.com> is registered with Media Elite Holdings Limited (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 5, 2014. On May 5, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 12, 2014, 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 May 12, 2014 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed another amendment to the Complaint on May 14, 2014.
The Center verified that the Complaint together with the amendments 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 May 16, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 5, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 6, 2014.
The Center appointed Gonçalo M. C. Da Cunha Ferreira as the sole panelist in this matter on June 16, 2014. 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 owner of the leading global manufacturer of toys under the trademark LEGO and also of all other trademarks used in connection with it.
Today, LEGO has been registered as trademarks in numerous countries all over the world, including in Australia and the Republic of Korea, where the Respondent is located. The Complainant's licensees are authorized to exploit the Complainant's intellectual property rights, including its trademark rights.
No license or authorization of any other kind has been given by the Complainant to the Respondent, to use the trademark LEGO.
The Complainant also owns more than 2,400 domain names containing the term "Lego", including the country code Top-Level Domain (ccTLD) ".au" for Australia and maintains an extensive website under the domain name <lego.com>, its official website. It is the strict policy of the Complainant that all domain names containing the mark LEGO should be owned by the Complainant.
The trademark LEGO is globally recognized and considered in the whole community to be significant. In 2000, the Fortune magazine and the British Association of Toy Retailers named Lego the Toy of the Century (matter of fact found by the Panel1), and recently in 2014, the list of the official top 500 Superbrands for 2014, provided by Superbrands UK, shows LEGO as winner in the category "Child Products - Toys and Education".
The disputed domain name <legoxmas.com> comprises the mark LEGO and adds the generic term "xmas" - a common abbreviation of the word "Christmas" - and the generic Top-Level Domain (gTLD) ".com".
The Complainant develops plenty activities during Christmas time.
The disputed domain name <legoxmas.com> was registered on November 27, 2013, a month before Christmas.
The disputed domain name website "www.legoxmas.com" directs the user to a "parked" website with sponsored links of which several lead to some of the Complainant's competitors.
5. Parties' Contentions
A. Complainant
The Complainant owns the manufacturer of toys under the trademark LEGO and also of all other trademarks used in connection with it, which have been registered as trademarks in numerous countries all over the world, including where the Respondent is located.
The Complainant declares that licensees are authorized to exploit the Complainant's intellectual property rights, including its trademark rights, and argues that no license or authorization of any other kind has been given by the Complainant to the Respondent, to use the trademark LEGO.
The Complainant also owns more than 2,400 domain names containing the term "Lego" and maintains an extensive website under the domain name <lego.com>, its official website. The Complainant submits it is its strict policy that all domain names containing the mark LEGO should be owned by the Complainant.
The Complainant claims that the trademark LEGO is globally recognized and considered in the whole community to be significant.
The Complainant claims that the dominant part of the disputed domain name <legoxmas.com> comprises the word "lego", which is confusingly similar to the registered trademark LEGO.
The Complainant also argues that the disputed domain name <legoxmas.com> was registered in November, 2013 a month before Christmas, and that specially on that time of year the Complainant develops plenty activities, being highly unlikely that the Respondent would not have known of the Complainant's legal rights in the mark LEGO at the time of the registration.
Finally, the Complainant submits that the disputed domain name website "www.legoxmas.com" directs the user to a "parked" website with sponsored links of which several lead to some of the Complainant's competitors clearly suggesting that the Respondent is using the disputed domain name to intentionally attempt to attract Internet users to websites for commercial gain.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In order to obtain the transfer of a domain name, a complainant must prove the three Policy elements, regardless of whether the respondent files a response to the complaint. The first element is that the "domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights". Policy, paragraph 4(a)(i). The second element a complainant must prove is that the respondent has "no rights or legitimate interests in respect of the domain name". Policy, paragraph 4(a)(ii). The third element a complainant must establish is that the "domain name has been registered and is being used in bad faith". Policy, paragraph 4(a)(iii).
A. Identical or Confusingly Similar
The disputed domain name <legoxmas.com> comprises the Complainant's trademark LEGO and adds the generic term "xmas" - a common abbreviation of the word "Christmas" - and the gTLD ".com".
It has been clearly held by previous UDRP panels that the addition of a generic term does not limit the risk of confusion between a complainant's trademark and a disputed domain name for purposes of the Policy.
As well noted by the Complainant, in Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488, it was stated that it is a long-established precedent that confusing similarity is generally recognized when well-known trademarks are paired up with different kinds of generic prefixes and suffixes.
The addition of the generic term "xmas" strongly reinforces the association with the trademark LEGO, given its specific activities during that period of the year.
As previously mentioned in the Sonae SGPS, S.A. v. Luso Digital - Web Hosting Services, WIPO Case No. D2008-1907, the addition of the suffix ".com" is for registration purposes only, being a requirement of the Internet domain name system, and may be disregarded for purposes of assessing confusing similarity.
Accordingly, the requirement of paragraph 4(a)(i) of the Policy is fulfilled.
B. Rights or Legitimate Interests
Following Terroni Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-0666 "in order for a complainant to prove that a respondent has no rights or legitimate interests in the Disputed Domain Name, UDRP case law has consistently held that it is sufficient for a complainant to prove a prima facie case (see amongst others, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). Once a prima facie case is shown the burden of production then shifts to the Respondent who must demonstrate its rights or legitimate interests in the disputed domain name to the panel.
The Panel finds that the Complainant has made its prima facie case in this case, and the Respondent did not reply to the Complainant's contentions to demonstrate its rights or legitimate interests.
The Panel further finds that considering the global awareness and significance of the trademark LEGO, it is difficult to conceive any legitimate reasons for anyone to use this mark in a domain name, unless the person has acquired that right through an authorization or license from the Complainant, which is not the case in the present case.
The Panel finds that the second element of the Policy is satisfied.
C. Registered and Used in Bad Faith
The trademark LEGO is globally recognized and famous worldwide. The Panel agrees with the Complainant stating that is highly unlikely that the Respondent was not aware of the rights the Complainant has in the trademark and the value of said trademark, at the point of the registration (Heineken Brouwerijen B.V. v. Mark Lott, WIPO Case No. D2000-1487).
In addition, following other previous UDRP panel decisions, it is found bad faith exists where a domain name "is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith" (Comerica Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0615; Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).
Moreover, the Respondent's use of the disputed domain name to deceptively draw traffic to its parked website, which contains links to the Complainant's competitors and others, to earn pay-per-click revenue constitutes bad faith use of the disputed domain name, opportunistically taking advantage of the Complainant's fame and goodwill. This falls within the example of paragraph 4(b)(iv) of the Policy and constitutes bad faith registration and use of a domain name (Scania CV AB (Publ) v. Unaci, Inc., WIPO Case No. D2005-0585; ACCOR v. Steve Kerry / North West Enterprise, Inc., WIPO Case No. D2006-0649; Etro S.p.A. v. Domain Registrations, WIPO Case No. D2006-0207).
In conclusion, in this Panel's view, the Respondent "intentionally attempted to attract, for commercial gain, internet users to [the] website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of [the] website or location or of a product or service on [the] website or location". Policy, paragraph 4(b)(iv).
Therefore, the Panel finds that the third element of the Policy has been satisfied.
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 <legoxmas.com> be transferred to the Complainant.
Gonçalo M. C. Da Cunha Ferreira
Sole Panelist
Date: June 25, 2014
1 See paragraph 4.5 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").