WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Communikas LLC
Case No. D2010-2115
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Communikas LLC of Miami, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <legorumors.com> (“the Domain Name”) is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2010. On December 8, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed Domain Name. On December 9, 2010, 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 December 10, 2010 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 10, 2010.
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 December 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 4, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 5, 2011.
The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on January 11, 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 LEGO, and all 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 term LEGO (annex 8).
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 Domain Name on September 29, 2010.
The Respondent did not provide a Response.
5. Parties’ Contentions
The Complainant states that the dominant part of the Domain Name <legorumors.com> comprises the word LEGO, which 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 addition of the suffix “rumors” 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.
The Complaint claims that anyone who sees the 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 relation with the Complainant.
The Complainant states that it has not found that the Respondent has any registered trademarks or trade names corresponding to the Domain Name. The Complainant has also not 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 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 interest in respect of the Domain Name.
The Complainant claims that on October 13, 2010 he sent a cease and desist letter, by email, in which the Respondent was informed that the unauthorized use of the LEGO trademark within the Domain Name violated the Complainant’s rights in said trademark. No reply was received so a reminder was sent on October 27, 2010 and a final reminder on November 9, 2010.
The Complainant claims that the Domain Name is currently connected to a website with a sort of news forum for LEGO related news and is also containing sponsored links (Annex 11). Consequently, the Respondent is using the 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 Domain Name the Respondent is not making a legitimate non-commercial 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 Domain Name in bad faith.
The Respondent did not 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 names 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).
2. The disputed domain name consists of two different words, one consisting of the Complainants registered trademark and other of a generic term “rumors”. The Panel considers that the addition of the generic denomination, especially when added to a famous trademark is not sufficient to avoid confusion.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainants trademarks.
B. Rights or Legitimate Interests
The second element requires the Complainant to prove that Respondent has no rights or legitimate interests in respect of the domain name in question.
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 a Complaint. In appropriate cases, if the Respondent does not make use of these means and the Complainant has established a prima facie case under sub paragraph 4(a)(ii), the burden of production is shifted to the Respondent to prove the contrary.
The Complainant has stated that the website under the disputed Domain Name features the Complainant’s trademark, That the Domain Name is currently connected to a website with a sort of news forum for LEGO related matters and also contains sponsored links including adult content. 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 interest in the Domain Name. There is no connection between the Respondent and the Complainant.
Furthermore, 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 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 interest in the Domain Name.
In the absence of a Response this Administrative Panel is satisfied that the Complainant has satisfied the second element, paragraph 4(a) of the Policy and has established a prima facie case that the Respondent has no rights or legitimate interest in said domain name.
C. Registered and Used in Bad Faith
This third element requires that the Complainant demonstrate that (1) the domain name was 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 two words, “lego” and “rumors”. The first is a registered trademark owned by the Complainant; the second is a generic term.
The Complainant has stated that the website features the Complainants trademark and that the Domain Name is currently connected to a website which provides news regarding LEGO related matters and also contains sponsored links. The Panel, has viewed the evidence provided by Complainant (annex 11) and has also viewed the webpage itself and can confirm that the website refers to a news forum for LEGO related items, however as mentioned by Complainant, it also contains sponsored links to websites of potential competitors.
Since the website clearly refers to LEGO products 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 was, he likely had knowledge that he was incorporating to the Domain Name, without authorization, a third parties trademark, demonstrating bad faith registration.
Moreover any use that took advante of Complainant’s goodwill after notification by the Complainant further supports a finding 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 Respondent can not deny the fact that in accessing the Domain Name, the Complainant's mark is being used for a commercial purpose unconnected with the Complainant's activities
Consequently, the Panel considers that whatever the intention of the Respondent in creating this website, it undoubtedly has the ability to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant by registering a domain name corresponding to a 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’s attempting 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 (b)(iii) of the Policy, the above findings lead to the conclusion that the Domain Name has been registered and used in bad faith.
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, <legorumors.com> be transferred to the Complainant.
Rodrigo Velasco Santelices
Dated: January 25, 2011