WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. nichetrend products

Case No. D2010-1955

1. The Parties

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

The Respondent is nichetrend products of Oregon, United States of America.

2. The Domain Name and Registrar

The disputed domain name <lego4709.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2010. On November 17, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On November 17, 2010, GoDaddy.com, Inc. 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 November 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 12, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 16, 2010. In reply to the notice of default an email was received from the Respondent which stated; ” Hello, This site is no longer live. I'm not sure what else it is you want from me? Thanks”. No further communication was received from the Respondent.

The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on January 18, 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

LEGO Juris A/S, based in Denmark, is the owner of the LEGO trademark, and many other trademarks used in connection with the famous LEGO brands of construction toys and other LEGO branded products.

The Complainant and its licensees (collectively the “LEGO Group of Companies” or the “LEGO Group”), through their predecessors, commenced use of the LEGO mark in the United States during 1953, to identify construction toys made and sold by them. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries. The Complainant is also the owner of more than 1000 domain names containing the mark LEGO (Annex 8 of the Complaint).

The trademark LEGO 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 LEGO Group has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. The LEGO Group also maintains an extensive website under the domain name <lego.com>.

The Respondent registered the disputed domain name in August 2010.

The Respondent did not provide a formal Response to the Complainant’s contentions. In reply to the notice of default an email was received from the Respondent which stated: ” Hello, This site is no longer live. I'm not sure what else it is you want from me? Thanks.” No further communication was received from the Respondent.

The Panel has viewed the website to which the disputed domain name resolves and can confirm that the website is no longer active, it merely resolves to a blank white page.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the dominant part of the domain name <lego4709.com> comprises the word “lego”, that is identical to the registered trademark LEGO, which has been registered by the Complainant as a trademark and domain name in numerous countries all over the world.

The Complainant states that it has a product named LEGO 4709, which is a brick set of a LEGO Hogwarts Castle (a Harry Potter product that Warner Bros Consumer Products has licensed to Complainant). The specific castle is a well-known LEGO product. When searching for the term LEGO 4709 on “www.google.com” it indicates more than 111 000 results all related to the same item. Therefore, said suffix is rather fitted to strengthen the impression that the disputed domain name belongs to, or is affiliated with Complainant.

The Complainant claims 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. With reference to the reputation of the trademark LEGO there is a considerable risk that the trade public will perceive the Respondent's Domain Name either as a domain name owned by the Complainant or that there is some kind of commercial relationship with the Complainant.

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

The Complainant asserts that no license or authorization of any other kind, has been given by the Complainant to the Respondent, to use the trademark LEGO. The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. Consequently the Complainant claims that Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant states that it first tried to contact the Respondent on September 22, 2010 through a cease and desist letter sent by email, in which the Respondent was informed that the unauthorized use of the LEGO trademark within the disputed domain name violated the Complainant’s rights in its trademark. The Complainant requested a voluntary transfer of the Domain Name and offered compensation for the expenses of registration and transfer fee (not exceeding out of pocket expenses)(Annex 13 of the Complaint). No reply was received and a reminder was sent on October 5, 2010. The Complainant sent a final reminder on October 14, 2010.

The Complainant claims that the disputed domain name was connected to a website containing, among other things, links to “www.amazon.com” (Annex 12 of the Complaint). Consequently, the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.

The Complainant finally states that 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 noncommercial or fair use without intent for commercial gain but is misleadingly diverting consumers. Consequently, by referring to the above-mentioned, the Respondent should be considered to have registered and to be using the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three elements is present:

(i) 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

(ii) the Respondent has no rights or legitimate interests in respect of the domain name in question; and

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

A. Identical or Confusingly Similar

This first element requires that the Complainant demonstrate that (1) it has trademark rights and (2) the disputed domain name is identical or similar to a trademark in which the Complainant has rights.

1. The Panel finds that the Complainant has established that it is the owner of the registered trademark LEGO based on the evidence provided by the Complainant (Annex 6 of the Complaint).

2. The disputed domain name consists of two different words, one consisting of the Complainant’s registered trademark and other of the numbers “4709”. The Panel considers that the addition of such numbers, especially given that they appear to refer to one of the Complainant’s products, is not sufficient to avoid confusion.

The Panel therefore finds that the disputed domain name is identical and confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

The second element requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the domain name.

By the terms used in paragraph 4(a) of the Policy it is clear that the overall burden of proof is on the Complainant, however the Policy provides the Respondent means to demonstrate its rights to and legitimate interests in the domain name in responding to the Complaint. In cases where the Respondent does not make use of these or any other available means to demonstrate its rights or legitimate interests, and provided that the Complainant has established a prima facie case under paragraph 4(a)(ii) of the Policy, the Complainant will be deemed to have met its burden of proof in this regard.

The Complainant has stated that the disputed domain name website features the Complainant’s trademark, That the domain name was connected to a website with a sort of news forum for LEGO related matters and also contained sponsored links. The Complainant asserts that the Respondent has never been commonly known by the domain name. The Complainant finally claims that the Respondent has no legitimate interests in the disputed domain name. There is no connection between the Respondent and the Complainant.

The Complainant asserts that no license or authorization of any kind has been given to the Respondent to use the trademark LEGO. The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.

The Respondent has not provided a response to the allegations set forth by the Complainant, though given the opportunity.

There is no evidence in the case file demonstrating that the Respondent might have rights or legitimate interests in the disputed domain name.

Furthermore, when the Center notified the Respondent of its default on December 16, 2010, in reply to the notice of default an email was received from the Respondent from the same email address stating the following: “Hello, This site is no longer live. I'm not sure what else it is you want from me? Thanks”. No further communication was received from the Respondent. In the Panel’s view, providing such a reply suggests that the Respondent has no rights or legitimate interests in the domain name.

In the absence of a formal Response, and in view of the above statement, this Panel is satisfied that the Complainant has satisfied the second element of paragraph 4(a) of the Policy and has established that the Respondent has no rights or legitimate interest in the disputed domain name.

C. Registered and Used in Bad Faith

This third element requires that the Complainant demonstrate that (1) the domain name has been registered in bad faith and (2) is being used in bad faith.

Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

The disputed domain name is composed of the word “lego” and the numbers “4709”. The first is a registered trademark owned by the Complainant; the second may be regarded as simple numbers. However, as evidenced by the Complainant the numbers “4709” are not random numbers, for those lego fans and connoisseur “LEGO 4709” refers to a specific lego product – the Hogwarts Castle.

Since the disputed domain name clearly refers to a LEGO product and the website also clearly referred to LEGO products at the time the Complaint was filed one can reasonably conclude that the Respondent had knowledge of the existence of the LEGO trademark. Whatever the intention of the Respondent in creating this website, it undoubtedly had knowledge that it was incorporating to it’s domain name, without authorization, a third party’s trademark, which in the view of the panel is further evidence of bad faith registration.

Moreover, if the Respondent did not have knowledge of such registered trademarks, though one can reasonably infer the contrary, it was known to it since the day the Complainants representative contacted the Respondent and informed it of the Complainants prior rights. Therefore all use after such notification suggests use of the domain name in bad faith. This is sufficient evidence to conclude that the Respondent was in all likelihood well aware of the Complainant’s marks and wanted to refer to the Complainant.

The Panel also notes that the Complainant's mark was used for a commercial purpose on the website associated with the disputed domain name.

Consequently, the Panel considers to the website associated to the disputes domain name attracted, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s well-known trademark. This behavior constitutes bad faith use and may tarnish the Complainant’s reputation by, among other things, attracting Internet users to a webpage that does not correspond to what they are looking for.

The above can only lead the Panel to conclude that the Respondent has attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the services provided on the website.

Therefore, in accordance with paragraph 4(a)(iii) of the Policy, the above findings lead to the conclusion that the domain name in dispute was registered and used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <lego4709.com> be transferred to the Complainant.

Rodrigo Velasco Santelices
Sole Panelist
Dated: January 26, 2011