WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lego Juris A/S v. DomainsByProxy.com/ Nicolas Zanoni

Case No. D2011-1175

1. The Parties

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

The Respondent is DomainsByProxy.com, of Scottsdale, United States of America; Nicolas Zanoni, of Montevideo, Uruguay.

2. The Domain Name and Registrar

The disputed domain name <lego-games.net> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2011. On July 11, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On July 14, 2011, GoDaddy.com, Inc. 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 July 15, 2011 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 July 18, 2011.

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 July 19, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 8, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2011.

The Center appointed James Bridgeman as the sole panelist in this matter on August 17, 2011. 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 Respondent has not filed a Response and the Complaint proceeds unchallenged. The Complainant has furnished convincing evidence that it is the owner of the LEGO trademark and carries on a substantial world-wide business in toys and in particular building bricks.

The Complainant has furnished details of its trademark registrations for the word LEGO, and incorporating the word LEGO, in numerous jurisdictions throughout the world. In this Complaint, the Complainant in particular relies on its claimed rights in the LEGO mark through the following trademark registrations:

Community Trade Mark LEGO, number CTM 000039800 registered on October 5, 1998 in respect of goods and services in international classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41, 42.

United States of America registered trademark LEGO filed on September 17, 1974 and registered in respect of goods in international class 28;

Peru registered trademark LEGO, registration number 11,990 due for renewal on August 6, 2012, registered in the name of the Complainant in respect of goods in international class 28.

There is no information available about the Respondent except for the details provided in the Complaint and in the Registrar’s WhoIs database. The Complainant initially brought the Complaint against DomainsByProxy.com, but the identity of the registrant was disclosed by the Registrar in response to the Center’s verification request following the filing of the Complaint. The Complainant subsequently amended the Complaint.

According to the information on the Registrar’s WhoIs database, the disputed domain name was registered on November 7, 2010.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it is the owner of the LEGO trademark, and all other trademarks used in connection with the LEGO brands of construction toys and other LEGO branded products. The Complainant relies on its rights in the LEGO trademark acquired through its above-mentioned large portfolio of trademark registrations for the LEGO trademark and the common law rights in the LEGO trademark established through goodwill acquired by its use of the LEGO mark in its global business as a manufacturer of toys and in particular building blocks.

The Complainant submits that in addition to its portfolio of registered trademarks, it is also the owner of more than 1,000 Internet domain names containing the term “lego”.

The Complainant argues that the LEGO trademark is a famous mark and is 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.

The Complainant and its licensees through their predecessors, commenced use of the LEGO mark in the United States of America in 1953, to identify construction toys made and sold by them. Over the years, the business of making and selling LEGO branded toys has grown remarkably. By way of example, the revenue for the Complainant’s group of companies in 2009, was more than $2,8 billion. 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 states that its licensees are authorized to exploit the Complainant's intellectual property rights, including its trademark rights, in the United States and elsewhere.

The Complainant’s group of companies has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets and the Complainant claims that the LEGO trademark and brand have achieved famous status and in support of this claim has submitted a list of the official top 500 Superbrands for 2009/10, provided by Superbrands UK, showing LEGO as number 8 of the most famous trademarks and brands in the world.

The Complainant argues that, therefore, according to the provisions of Article 6bis of the Paris Convention for protection of Industrial Property (“PC”), confirmed and extended by Article 16.2 and Article 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”), the statute of a well-known trademark provides the owner of such a trademark with the right to prevent any use of the well-known trademark or a confusingly similar denomination in connection with any products or services (i.e. regardless of the list of the products and services for which the trademark is registered). Thus, the protection for LEGO goes far beyond toys and goods similar to toys.

The Complainant’s group of companies also maintains a web site to which the <lego.com> domain name resolves.

The Complainant argues that its LEGO trademark has a substantial inherent and acquired distinctiveness.

The Complainant argues that the fame of the trademark has been confirmed in numerous previous UDRP decisions; LEGO Juris A/S v. Rampe Purda, 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.”

The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s LEGO trademark. The Complainant submits that the dominant element of the disputed domain name is the word “lego”, which is identical to the Complainant’s registered trademark.

The Complainant argues that the addition of a hyphen and the suffix “games” are not relevant and will not have any impact on the overall impression of the dominant part of the name. The “lego” element is instantly recognizable as the Complainant’s world famous trademark. In the case 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 Complainant further argues that the addition of the gTLD extension “.net” does not have any impact on the overall impression of the dominant portion of the disputed domain name either and is therefore irrelevant in determining the confusing similarity between the trademark and the disputed domain name. The Complainant submits that anyone who sees the disputed domain name is bound to mistake it for a name related to the Complainant. The likelihood of confusion includes an obvious association with the trademark of the Complainant.

There is a considerable risk that the public will perceive the disputed domain name either as a domain name owned by the Complainant or that there is some kind of commercial relation with the Complainant.

The Complainant argues that by using the trademark as a dominant part of the disputed domain name, the Respondent is exploiting the goodwill and the image of the Complainant’s LEGO trademark, which may result in dilution and other damage for the Complainant’s trademark. Persons seeing the disputed domain name, even without being aware of the content, are likely to think that the disputed domain name is in some way connected to the Complainant, (“initial interest confusion”) and there is a risk of its trademark being tarnished by being connected to a third party website.

The Complainant argues that the Respondent has no rights or legitimate interest in the disputed domain name. The Complainant asserts that no license or authorization of any other kind has been given by the Complainant to the Respondent, to use the LEGO trademark. In Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055, the panel stated that, “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent.” The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. This was stated by the panel as a factor in the finding of non legitimate interest with the Respondent in Dr. Ing. h.c. F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312.

The Complainant submits that the mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the domain name.

The Respondent registered the disputed domain name on November 7, 2010. The Complainant argues that it is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in the name LEGO at the time of the registration. It is obvious that it is the fame of the trademark that has motivated the Respondent to register the disputed domain name. The Respondent cannot claim to have been using LEGO, without being aware of the Complainant’s rights to the mark. This, among other facts, proves that the Respondent’s interests cannot have been legitimate. LEGO is a famous trademark worldwide and in Deutsche Bank Aktiengesellschaft v New York TV Tickets Inc., WIPO Case No. D2001-1314, it was established that any use of such a trademark in a domain name would violate the rights of the trademark owner. The panel stated that "given the notoriety of the Complainant's Deutsche Bank Mark, any use which the Respondent would make of any domain name, as here, that incorporated the Complainant's Deutsche Bank Mark, or one confusingly similar thereto, would likely violate the exclusive trademark rights which the Complainant has long held in its mark".

The Complainant submits that there is no evidence that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name, nor has the Complainant found anything that would suggest that the Respondent has been using LEGO in any other way that would give them any legitimate rights in the name. Consequently, the Respondent may not claim any rights established by common usage.

The Complainant argues that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services but instead the Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic to a website displaying sponsored links to various online shops where the Complainants products, as well as its competitors’ products, are offered. The Complainant submits that the use of the disputed domain name to resolve to a website with sponsored links is not a bona fide use of the disputed domain name, as has been held in earlier WIPO cases including the LEGO trademark, LEGO Juris A/S v. J.h.Ryu , WIPO CaseNo. D2010-1156: “Further, Respondent’s use of the Disputed Domain Name to sponsor links to paid advertising is not use of the Disputed Domain Name in connection with a bona fide offering of goods or services”.,This was also discussed in LEGO Juris A/S v. Jan Cerny, WIPO Case No. D2010-0707.

The Complainant submits that no evidence has been found that the Respondent uses the disputed domain name as a company name or has any other legal right in the trademark 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.”

The general awareness of the LEGO trademark is significant and substantial and has grown in recent years and there has been a growing number of unauthorized Internet domain name registrations comprising the trademark LEGO in combination with other words in recent years. In this regard, the Complainant refers to a number of cases that it has brought against third parties under the Policy.

The Complainant submits that Respondent registered the disputed domain name to take advantage of the considerable value and goodwill of the LEGO mark.

The Complainant first tried to contact the Respondent by email on November 25, 2010. The Complainant notified the Respondent that the unauthorized use of the LEGO trademark within the disputed domain name violated the Complainant’s rights in said trademark. The Complainant requested a voluntary transfer of the disputed domain name and offered compensation for the expenses of registration and transfer fees not exceeding out of pocket expenses. No response was received so a reminder was sent on December 17, 2010. The Respondent subsequently replied and asked for money to transfer the disputed domain name, it also held that it was not aware of the LEGO trademark. The Complainant replied that it would reimburse the registration fee, and however the Respondent neither replied, nor took any action to transfer the disputed domain name. The Complainant contacted the Respondent twice more, but it did not reply. As the Complainant’s efforts to solve the matter amicably were unsuccessful, the Complainant chose to file this Complaint under the Policy.

The Complainant submits that the disputed domain name is being used in bad faith. There are sponsored links displayed on the website at the disputed domain name from which the Respondent most likely derives income once a visitor click on the links and is redirected to different online shops.

The use of sponsored links is a factor indicating bad faith because the Respondent is using the Complainant’s trademark to attract visitor to its website. In The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC, WIPO Case No. D 2009-0057, the panel stated: “The record further reflects the Respondent's use of the disputed Domain Names to attract Internet users to the Respondent's website in order to generate pay-per-click advertising revenues. The Panel concludes for the foregoing reasons that the Respondent registered and is using the disputed Domain Names in bad faith.” This discussion applies for this case as well.

In case Philip Morris Inc. v. Alex Tsypkin, WIPO Case No. D 2002-0946, the panel stated: “It follows from what has been said about legitimacy that the Panel is satisfied that Respondent is using the disputed domain name intentionally to attempt to attract, for commercial gain, Internauts to his web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his web site. Pursuant to Policy paragraph 4(b)(iv), this constitutes evidence of both bad faith registration and bad faith use, for the purposes of paragraph 4(a)(iii).”.

The Complainant submits that it follows in the present case that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.

In WIPO Case No. D2010-0839, the panel stated: “The bad faith of the Respondent may also be inferred through a simple logical process as well, in the sense that it would, indeed, be highly unlikely that the Respondent would come up randomly and unintentionally with a famous word, such as “lego”, and register it as it's own domain name, in combination with the term “playsets.com” which directly relates to the products offered under the third party trademark.” The same argumentation could be applied for this case as well.

To summarize, LEGO is a famous trademark worldwide. There is no doubt that the Respondent was aware of the rights the Complainant has in the trademark and the value of said trademark, at the point of the registration. There is no connection between the Respondent and the Complainant. By using the disputed domain name the Respondent is not making a legitimate non-commercial or fair use without intent for commercial gain but is misleadingly diverting consumers for his own commercial gain.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in respect of the disputed domain name to obtain an order that a domain name should be cancelled or transferred:

(1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(2) that the respondent has no rights or legitimate interests in respect of the domain name; and

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

A. Identical or Confusingly Similar

The Complainant is the owner of the LEGO trademark and has provided this Panel with evidence of its substantial portfolio of trademark registrations for in numerous jurisdictions across the world and the extensive reputation established by itself, its licensees and their predecessors in title by the use of the LEGO trademark in association with construction toys and other products and in particular with its well known building blocks products. This Panel therefore finds that the Complainant has rights in the LEGO trademark.

The disputed domain name consists of two elements separated by a hyphen viz the word “lego” and the word “games” followed by the “.net” gTLD extension.

This Panel finds that the disputed domain name is confusingly similar to the Complainant’s LEGO trademark. It is well established under the Policy that in general the .net gTLD extension may be ignored when making a comparison between the Complainant’s mark and the disputed domain name. The dominant element of the disputed domain name is the Complainant’s LEGO trademark. The LEGO trademark is a distinctive coined word with no apparent ordinary meaning other than the Complainant’s trademark.

This Panel finds that on the balance of probabilities persons coming across the disputed domain name on the Internet would most probably be confused and associate the disputed domain name with the Complainant’s business and its well known LEGO trademark. Furthermore, the combination of the trademark and the descriptive element “games” merely adds to the likelihood of confusion because the Complainant has a world-wide reputation as a manufacturer and merchant of toys.

The Complainant has therefore succeeded in proving the first element of the test in paragraph 4 of the Policy.

B. Rights or Legitimate Interests

There was no Response filed but the Complainant has furnished an exchange of email correspondence from which it can be inferred that the Respondent has no rights or legitimate interest in the disputed domain name.

On December 22, 2010 the Respondent replied to the Complainant’s email stating: “We didn't know Lego was a registered trademark. We used the word Lego in the domain because it was just a word that had lots of searches at the internet. We dont (sic) have any inconvenient (sic) in closing the domain or transfering (sic) it to whom you indicate us. Thing is this will insume (sic) us money as there are program system issues to take care of and it's something we dont (sic) directly do, we have to pay someone to do it and it's money we dont (sic) have now. Any suggestions on how to move forward, are very much welcome.”

While in the view of this Panel the Respondent’s statement that it was not aware of the Complainant’s rights was disingenuous, it can nonetheless be inferred from the statement that the Respondent is making no claim to any rights or legitimate interest for itself in the disputed domain name beyond the fact that it is the owner of the registration. It is well established in decisions under the Policy that mere registration of a domain name does not by itself establish rights for the purposes of paragraph 4(a)(ii).

The Complainant has asserted that it has not granted the Respondent the right to use the LEGO trademark. Neither is there any evidence that the Respondent is using the disputed domain name for legitimate non-commercial purposes in fact for reasons given below, and on the balance of probabilities, it is likely that the domain name was registered and is being used in bad faith to take predatory advantage of the Complainant’s goodwill in order to earn pay-per-click revenue. By definition, a registrant cannot acquire a legitimate interest by such use.

This Panel finds therefore that the Respondent has no rights or legitimate interest in the disputed domain name and the Complainant has therefore succeeded in the second element of the test in paragraph 4(a) of the Policy also.

C. Registered and Used in Bad Faith

The Complainant, its licensees and predecessors in title have been using the LEGO trademark since 1953 and have since built an extensive worldwide reputation in the use of the mark on its construction toys. The Complainant has had an established Internet presence using its <lego.com> domain name since before the disputed domain name was registered and the Complainant has a large portfolio of Internet domain name registrations incorporating the word “lego”. Despite its denial that it was aware that LEGO is a “registered trademark” it is improbable that the Respondent was not aware of the Complainant’s rights in the LEGO mark when he registered the disputed domain name

The LEGO trademark is a coined word with no other meaning. The disputed domain name clearly consists of the combination of the Complainant’s distinctive LEGO trademark together with the word “games” which is a reference to a type of goods that would be associated with the Complainant and the LEGO mark. On the balance of probabilities therefore, notwithstanding the Respondent’s denial, this Panel finds that the disputed domain name was likely chosen and registered specifically because of its similarity to the Complainant’s trademark and so as to have an inherent reference to the Complainant’s goodwill and reputation.

The subsequent behaviour of the Respondent in causing or permitting the disputed domain name to resolve to a website that appears to generate pay-per-click revenue taking predatory advantage of the association with the Complainant’s goodwill in the LEGO mark demonstrates that on the balance of probabilities the Respondent registered and is using the disputed domain name in an intentional attempt to attract, for commercial gain, visitors to his web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his web site.

Furthermore, as can be seen from the email sent to the Complainant by the Respondent on December 22, 2010, the Respondent initially gave the impression that it was willing to transfer the disputed domain name for payment. On January 24, 2010 the Complainant’s agent replied expressing the Complainant’s preference to have the disputed domain name transferred to the Complainant, setting out the procedure to be followed and stating “the LEGO Group will reimburse you the registration fee and possible transfer cost as soon as the domain name has been transferred, we do not compensate any cost exceeding that amount. I kindly ask you to send me a copy of the registration cost, or a print screen where the cost is displayed.”

Following this offer to reimburse only the registration fee and possible transfer costs, there was no further communication from the Respondent. In the view of this Panel, the Respondent’s refusal to transfer the disputed domain name in the circumstances without seeking to profit from the transfer is further evidence that the Respondent registered and is using the disputed domain name in bad faith.

This Panel finds therefore that the Complainant has also succeeded in the third and final element of the test in paragraph 4(a) of the Policy and is entitled to succeed in this Complaint.

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 <lego-games.net> be transferred to the Complainant.

James Bridgeman
Sole Panelist
Dated: August 31, 2011