WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Above.com Domain Privacy / Ni How

Case No. D2012-2446

1. The Parties

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

The Respondents are Above.com Domain Privacy of Victoria, Australia / Ni How of Nanjing, China.

2. The Domain Name and Registrar

The disputed domain name <piratesofthecaribbeanlego.com> is registered with Above.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2012. On December 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 14, 2012, 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 Above.com Domain Privacy and contact information in the Complaint. The Center sent an email communication to the Complainant on December 14, 2012 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 December 17, 2012.

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 Respondents of the Complaint, and the proceedings commenced on December 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2013. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on January 9, 2013.

The Center appointed Alessandra Ferreri 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

The Complianant is Lego Juris A/S, a company based in Denmark, one of the worldwide leader in the field of toys.

The Complainant is the owner of the trademark LEGO and other trademarks used in connection with the famous Lego brands of construction toys and other Lego branded products. Over the years, the business of making and selling Lego branded toys has remarkably grown.

The Complainant has subsidiaries and branches throughout the world, and Lego products are sold in more than 130 countries, including in Australia.

The Complainant owns a huge number of trademark registrations all over the word, including in Australia, where the privacy shield provider is located and in China where the Respondent, Ni How, resides.

The Complainant’s trademark LEGO is one of the best-known trademarks in the world: in the official top 500 Superbrands for 2012, provided by Superbrands UK, LEGO appears as number 31 in the list of the most famous trademarks and brands in the world.

The Complainant is also the owner of more than 1000 domain names containing the term LEGO.

The disputed domain name <piratesofthecaribbeanlego.com> was registered on September 28, 2012; the disputed domain name resolves to a parking page where several pay-per-click links exist.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s world famous trademark LEGO. The fame of the Complainant’s trademark LEGO was confirmed by numerous previous UDRP panel decisions; for example, see LEGO Juris A/S v. Rampe Purda, WIPO Case No. 2010-0840; LEGO Juris A/S v. Domain Administrator; WIPO Case No. 2010-1260; LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680; LEGO Juris A/S v. Level 5 Corp., WIPO Case No. D2008-1692 and LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715.

The addition of the prefix “piratesofthecaribbean” is not relevant and will not have any impact on the overall impression of the dominant part of the name, LEGO, instantly recognizable as a world famous trademark.

Rather, considering that the Complainant offers several of their products under the mark “LEGO Pirates of the Caribbean”, the addition of said term “piratesofthecaribbean” to the disputed domain name strengthens the impression of association with the Complainant.

Similarly the mere addition of the generic Top Level Domain (“gTLD”) “.com” is irrelevant because it is not a distinctive element and is typically not significant to determine the confusing similarity between the trademark and the disputed domain name.

The Complainant contends that the Respondents do not have any registered trademarks or trade names corresponding to the disputed domain name. The Complainant has also not found anything that would suggest that the Respondents have been using LEGO in any other way that would give them any rights or legitimate interests in the name. Consequently, the Respondents may not claim any rights established by common usage.

The Complainant contends that no license or authorization has been given by the Complainant to the Respondents to use the trademark LEGO and that the Respondents are not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.

Furthermore, the Respondents are not using the domain name in connection with a bona fide offering of goods or services. The disputed domain name directs Internet users to a parked pay-per-click site, and by doing so, the Respondents are trying to sponge off the Complainant’s world famous trademark and are tarnishing the trademark LEGO.

The Complainant contends that the Respondents have registered and are using the disputed domain name in bad faith.

The Respondents’ bad faith registration is established by the fact that the Respondents were aware of the existence of the Complainant’s trademark, given its status of a well-known and reputed trademark with a substantial and widespread value and goodwill all over the word.

Moreover, the Respondents never replied to the Complainant’s letters, and as stated in earlier decisions, the failure of a respondent to respond to a cease and desist letter, or a similar attempt at contact, has been considered relevant in a finding of bad faith.

The Respondents’ bad faith use of the disputed domain name is evidenced by the fact that the disputed domain name is currently connected to a parked pay-per-click web site; consequently, the Respondents are using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.

B. Respondent

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

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:

(i) the disputed domain name registered by the Respondents is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name registered by the Respondents have been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name <piratesofthecaribbeanlego.com> is confusingly similar to the Complainant’s LEGO trademark, a clearly well-known mark in which the Complainant has established rights through registration and extensive use.

The disputed domain name incorporates the Complainant’s LEGO trademark in its entirety; the only difference is the mere adjunction of the prefix “piratesofthecaribbean”.

The addition of the above term is not enough to the Panel to prevent confusing similarity between the disputed domain name and the Complainant’s famous trademark (see America Online Inc. v. Yetech Communication Inc., WIPO Case No. D2001-0055; GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195; Volkswagen AG v. Emir Ulu, WIPO Case No. D2005-0987)

On the contrary, considering that the Complainant offers several products under the mark “LEGO Pirates of the Caribbean”, the addition of the term “piratesofthecaribbean” is likely to enhance the confusion and to lead customers to believe that the disputed domain name is effectively linked to, affiliated with or connected to the Complainant.

The Panel believes that people considering the disputed domain name without awareness of its content may think that it is in some way connected and associated with the Complainant: this situation is known as “initial interest confusion” (see Covance, Inc. and Covance Laboratories Ltd v. The Covance Campaign, WIPO Case No. D2004-0206; CBS Broadcasting Inc., f/k/a CBS Inc. v. Nabil Z. aghloul, WIPO Case No. D2004-0988).

Finally, with regards to the suffix “.com”, as it was established in many previous UDRP decisions (see A.P. Møller v. Web Society, WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / 07@usa.net, WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; and Crédit Industrile et Commercial SA v. Name Privacy, WIPO Case No. D2005-0457), it does not generally affect the analysis under the first element of the Policy for the purpose of determining whether a disputed domain name is identical or confusingly similar to the Complainant’s mark; indeed the suffix is a necessary component of the domain name and typically does not give any distinctiveness.

There is no doubt to the Panel that the disputed domain name <piratesofthecaribbeanlego.com> is confusingly similar to the Complainant’s trademark. Therefore, the Panel finds that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

The Respondents did not reply to the Complainant’s contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by the Complainant.

In particular, the Respondents have failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondents have rights or legitimate interests in the disputed domain name, such as:

(i) use or preparation to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) being commonly known by the disputed domain name (as an individual, business or other organization) even if the Respondents have not acquired any trademark or service mark rights; or

(iii) making legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence in the record that the Respondents have any rights or legitimate interests in the disputed domain name.

The Complainant states that it has not found that the Respondents have any registered trademarks or trade names corresponding to the disputed domain name or anything that would suggest that the Respondents have been using LEGO in any other way that would give them any rights or legitimate interests in the name. Moreover, no license or authorization has been given by the Complainant to the Respondents to use the trademark LEGO and the Respondents are not an authorized dealer of the Complainant’s products and have never had a business relationship with the Complainant.

Furthermore, the use of the disputed domain name cannot be considered a bona fide offering of goods or services. The website to which the disputed domain name <piratesofthecaribbeanlego.com> resolves is a parking home page, where several pay-per-click links exist. Also in this regard, the Panel shares the Complainant’s view and believes that by registering the disputed domain name, the Respondents clearly intended to profit from the use of the disputed domain name which is confusingly similar to Complainant’s trademark LEGO, diverting Internet users to websites where pay-per-click links exist and generating gains for the Respondents. This type of website, in such circumstances as in this case, does not constitute a bona fide offering of goods or services under the Policy paragraph 4(c)(i) (see, besides UDRP decisions cited by the Complainant, in particular: The American Automobile Association, Inc. v. Jack Holder, NAF Claim No. FA1227171; Florida Department of Management Services v. Anthony Gorss (or AGCS), WIPO Case No. D2009-1194).

Since the Respondents have registered and are using the disputed domain name with the clear intention to use the Complainant’s marks and name for its own profit, it can be stated that such use does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.

Finally, no response was filed in the case and the Panel, in accordance with paragraph 14(b) of the Rules, draws the inference that: “non-response is indicative of a lack of interest inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493, and Giorgio Armani v. Yoon-Min Yang, WIPO Case No. D2005-0090).

Therefore, based on the evidence, the Panel is satisfied that the second element under paragraph 4(a) of the Policy is met.

C. Registered and Used in Bad Faith

The Panel finds that the disputed domain name was registered and is being used in bad faith.

The Complainant’s name, trademark and activity are well-known throughout the world and considering the widespread use and fame of the Complainant’s trademark, in this Panel’s view the Respondents must have been aware of them when they registered the disputed domain name. And indeed, the Respondents’ awareness of the Complainant’s activity and rights may be inferred by the fact that the Respondents registered the disputed domain name incorporating the LEGO trademark in its entirety, with the addition of the term “piratesofthecaribbean” which clearly relates to Complainant’s products.

As the Panel has found that the Respondents have no rights or legitimate interests in the disputed domain name, in line with other prior UDRP decisions (Banca Sella s.p.a. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin v. The Polygenix Group Co., WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226; Ferrero S.p.A. v. Mario Pisano, WIPO Case No. D2000-1794; Ferrero S.p.A. v. Publinord S.r.l., WIPO Case No. D2002-0395), the Panel believes that the circumstance of this case, namely the absence of any rights or legitimate interests in the disputed domain name, the Respondents’ lacking evidence to the contrary and the Respondents’ registration of a domain name confusingly similar to the Complainant’s worldwide well-known trademark, suggest opportunistic bad faith (see also MasterCard International Incorporated v. North Tustin Dental Associates, WIPO Case No. D2007-1412, and Mastercard International Incorporated v. Total Card Inc., WIPO Case No. D2007-1411).

Moreover, as referred by the Complainant, the Respondents did not reply to Complainant’s cease and desist letter (sent on October 17, 2012) and to the subsequent reminder. According to previous UDPR decisions, this Panel finds that also “the failure of the Respondent to respond to the letter of demand from the Complainant further supports an inference of bad faith” (see Bayerische Motoren Werke AG v. This Domain is For Sale/Joshuathan Investments Inc, WIPO Case No. D2002-0787; News Group Newspapers Ltd and News Network Ltd v. Momm Amed Ia, WIPO Case No. D2000-1623 cited by Complainant).

Indeed, the Respondents have maintained the website at the disputed domain name despite the Complainant’s objections.

Such silence, ongoing cybersquatting, and dilution are further evidence of the Respondents’ bad faith (see Compiere Inc. v. James Zhong, WIPO Case No. D2007-0130; Compagnie Generale Des Etablissements Michelin v. Vaclav Novotny, WIPO Case No. D2009-1022; and RRI Financial, Inc. v. Ray Chen, WIPO Case No. D2001-1242).

Furthermore, in the Panel’s view, the use of a proxy registration service to avoid disclosing the name and contact details of the real party owner of the disputed domain name, is also consistent with an inference of bad faith in registering and using the disputed domain name (see Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696 cited by Complainant, and Dr. Ing. h.c. F. Porsche AG v. Domains by Proxy, Inc. and Vladimir Putinov, WIPO Case No. D2004-0311).

Concerning the use of the disputed domain name, Complainant has proven that it resolves to a landing page that hosts pay-per-click sponsored links to websites at which also competitive products are offered. This activity constitutes evidence of bad faith registration and use of the disputed domain name. See McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353 (“the use of another’s trademark to generate revenue from Internet advertising can constitute registration and use in bad faith as a classic illustration of the conduct condemned by paragraph 4(b)(iv) of the Policy [...]”).

Indeed, by exploiting the renown of the LEGO trademark, the Respondents divert Internet users looking for the Complainant’s marks and website and seek to gain profit out of the disputed domain name by providing sponsored links to several other websites and obtaining revenues from the diverted traffic (besides the decisions mentioned by the Complainant, see also MasterCard International Incorporated v. Abadaba S.A., Administrador de dominiosCase, WIPO Case No. D2008-0325 and Credit Industriel et Commercial S.A v. Maison Tropicale SA, WIPO Case No. D2007-0955).

This Panel follows the same reasoning as accorded in the previous UDRP decision, “a potential consumer accessing the disputed domain name would have the legitimate expectation that he was communicating with the Complainant, and would, consequently be misled, to the possible detriment of the Complainant because of the existence of sponsored links. This, in the Panel’s view, justifies a finding that the disputed domain name has been used in bad faith” (see Aktiebolaget Electrolux v. DomainsByProxy.com / Plessers Appliances, WIPO Case No. D2011-0317).

In light of all the above circumstances, the Panel is satisfied that the third element is met and that the disputed domain name <piratesofthecaribbeanlego.com> was registered and is being used in bad faith.

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 <piratesofthecaribbeanlego.com> be transferred to the Complainant.

Alessandra Ferreri
Sole Panelist
Date: February 5, 2013