WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Helmut Eder / Modern Tech Limited

Case No. D2014-1829

1. The Parties

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

The Respondent is Helmut Eder, Modern Tech Limited of London, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Names and Registrar

The disputed domain names <legoonlineshop.net> and <legowearonlineshop.com> (the "Domain Names") are registered with GoDaddy.com, LLC

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 20, 2014. On October 20, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 22, 2014, 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 October 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 11, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 14, 2014.

The Center appointed Prof. François Dessemontet as the sole panelist in this matter on November 24, 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 (hereinafter referred to as the Complainant), is based in Denmark and is the owner of the LEGO brand, and all other trademarks used in connection with the LEGO brands of construction toys and other LEGO branded products. The Complainant's licensees are authorized to exploit the Complainant's intellectual property rights, including its trademark rights, in the United States and elsewhere. The Respondent is not such a licensee.

The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in the United States. The Complainant is also the owner of numerous domain names containing the term "lego".

The Domain Names are used by Respondent to host websites on which Lego products, as well as products from various other brands, are offered for sale. Potential Consumers are redirected to Amazon.de when they click on the products to finalize their purchase.

The Domain Names were registered on May 24, 2014.

5. Parties' Contentions

A. Complainant

According to Complainant, its trademark is a well known trademark as it is among the best-known trademarks in the world and the LEGO trademark and brand have been recognized as being famous. The Complainant quotes a list of the official top 500 Superbrands for 2014, provided by Superbrands UK, which shows LEGO as winner in the category "Child Products - Toys and Education". Moreover, the Reputation Institute nominated the LEGO Group as number 10 on their list of "the World's Most Reputable Companies",

The Complainant further argues that the dominant part of the Domain Names comprises the term "lego", identical to the registered trademark LEGO and that said Domain Names are thus confusingly similar to the Complainant's trademark. The Complainant notes that the Domain Names also comprise the suffixes "wear" and "onlineshop", used in combination and alone, but that neither of the suffixes detracts from the overall impression. The Complainant pleads that they are instead contributing to create a link to the Complainant, which could mislead a visitor to believe that the website and the Domain Names are owned by the Complainant. By using the trademark as a dominant part of the Domain Names, the Respondent exploits the goodwill and the image of the trademark, which may result in dilution and other damage for the Complainant's trademark.

The Complainant has not found anything that would suggest that the Respondent can claim any rights established by common usage and no license or authorization of any other kind, has been given by the Complainant to the Respondent, to use the trademark LEGO.

For the Complainant, it is clear that the Respondent has intentionally chosen domain names based on a registered trademark in order to generate traffic and income through websites offering LEGO products and displaying sponsored links. As such the Respondent is using the LEGO trademark in order to mislead Internet users to commercial websites and consequently, the Respondent is tarnishing the trademark LEGO.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The fame of the trademark has been confirmed in numerous previous UDRP decisions; In LEGO Juris A/S v. Level 5 Corp., WIPO Case No. D2008-1692 the panel found that "The Complainant has established that LEGO and LEGOLAND are well-recognized and world famous trademarks and that the trademarks are distinctive". In LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715 the panel found that "as numerous panels have found before, the Complainant has established that LEGO is a well-known trademark" and that "the trademark is distinctive and famous". Finally, in LEGO Juris A/S v. Reginald Hastings Jr , WIPO Case No. D2009-0680, the panel found that "LEGO is a mark enjoying high reputation as construction toys popular with children".

Even without such prior decisions confirming that the LEGO Trademark is well-known throughout the world, the present Panel would have found that such is the case. Indeed, the Complainant's trademark has been used to identify its toys products for three generations at least. They can be found in most toys shops. They are present in many children's rooms, and in grown up's reminiscence of childhood. The recent Hollywood blockbuster movies starring animated LEGO characters as well as various videogames have contributed to make the LEGO brand well-known to all consumers.

Finally, the rating of the Complainant's trademark in the trademarks ranking provided by specialized reputation researchers is another sign of the world-wide fame of the trademark.

The suffixes "wear" and "onlineshop", used in combination and alone are not distinctive elements and do not have sufficient impact on the Domain Names to avoid a confusing similarity with the Complainant's trademark.

With regards to "onlineshop" websites, it is doubtful that such an addition as "onlineshop" would have any distinctive effect. When such a word is used in conjunction with a well-known trademark, its addition would rather contribute to the association of the domain names with the trademark of the Complainant in the mind of the Internet user.

The same can be said of the addition in a domain name of the word "wear" after a well-known trademark. For a website offering clothing apparel, such a suffix is merely descriptive. In conjunction with a well-known trademark, it has no apparent distinctive function.

The Panel notes that the Complainant has a website offering LEGO wear products, namely "www.legowear.com"; further, numerous other online shops offer various LEGO products, under domain names using the trademark in association with many other general suffixes. Therefore, the use by Respondent of a generic word such as "wear" creates an impression that the Domain Name is really associated with the Complainant. Thus, it is at the very least insufficient to avoid a confusing similarity with the Claimant's trademark.

As for the Top-Level Domain suffixes ".com" or ".net", they typically do not have any impact on the overall impression of the dominant portion of the Domain Names and are indeed irrelevant in this case when examining whether there is a confusing similarity between the Domain Names and the Complainant's trademark.

Therefore, the Panel finds that the Domain Names are confusingly similar to the Complainant's Trademark.

B. Rights or Legitimate Interests

The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interest in the domain Names.

In the absence of any response from the Respondent, it is difficult for the Panel to find any right or legitimate interest of the Respondent with regards to the Domain Names.

When contacted by the Complainant prior to the filing of the Complaint, the Respondent replied by emailthat "We run these domains for a short time, about 1-2 months as pure affiliate page for Lego products in the German-speaking market, which is forwarded to Amazon. We ourselves as Modern Tech Limited sell itself no Lego goods or lead customers astray, as the Rules of Lego are".

By confirming that the website of the Domain Names did not sell LEGO products but only redirected to a third party site, and that he registered the Domain Names for a company named Modern Tech Limited, the Respondent admitted that it is not commonly known by the Domain Names nor has any other rights or legitimate interests in the Domain Names. In fact, this behavior cannot be considered as a bona fide offering of merchandise or services, nor a legitimate noncommercial or fair use of the Domain Names.

Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Names.

C. Registered and Used in Bad Faith

Because of the well-known nature of the Complainant's trademark rights in the name LEGO at the time of the registrations of the Domain Names on May 24, 2014 and because the Respondent uses the Domain Names to redirect consumers to a third party website, the Panel has no doubt that the Domain Names were registered and are being used in bad faith.

The Respondent's admission that he does not offer LEGO products for sale, neither personally nor through its company Modern Tech Limited, offers clear evidence that the Repondent's business model is to make use of the confusing similarity with the LEGO trademark of the Complainant to attract consumers to his websites and then redirect them to another third party website in order to derive profit from it. As such, the Respondent's conduct falls squarely within the example of paragraph 4(b)(iv) of the Policy..

The Panel also considers as a sign of bad faith the fact that the Respondent continues to use the Domain Names to redirect consumers to a third party website offering LEGO products as well as products from various other brands for sale, even after he received the Complainant's Cease and Desist email and being given the opportunity to continue its business in a way that would not create a confusion with the Complainant's trademark. The correspondence between the Complainant and the Respondent shows clearly that the latter was offered the possibility to transfer the Domain Names to the Complainant against reimbursement of his out of-pocket-costs. Further, the Complainant drew the attention of the Respondent to the possibility for him to set up a LEGO related website, provided that he chose other domain names which would not incorporate the Complainant's trademark. As the Respondent did not avail himself of that possibility, the Panel considers it as a further element of bad faith.

Therefore, the Panel finds that the third element of the Policy has been established.

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 names, <legoonlineshop.net> and <legowearonlineshop.com> be transferred to the Complainant.

Prof. François Dessemontet
Sole Panelist
Date: December 9, 2014