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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. abi wada / WhoisGuard

Case No. D2011-1693

1. The Parties

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

The Respondent is abi wada of Jakarta, Indonesia / WhoisGuard of Los Angeles, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <legocitycorner.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2011. On October 6, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On October 7, 2011, eNom 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 October 11, 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 October 11, 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 October 12, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 1, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 2, 2011.

The Center appointed Fabrizio La Spada as the sole panelist in this matter on November 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

The Complainant is the owner of Community trademark LEGO, nr. 000039800, filed on April 1, 1996, and registered on October 5, 1998, for goods and services in classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41 and 42. The registration was renewed in 2006. The expiry date of the trademark is April 1, 2016.

The Complainant is also the owner of United States trademark LEGO, nr. 1018875, filed on September 17, 1974, and registered on August 26, 1975. The trademark has been renewed on May 31, 2005.

In addition to these trademarks, the Complainant has produced evidence showing that it is the owner of numerous LEGO trademarks throughout the world.

The Complainant also holds hundreds of domain names consisting of or containing the name “lego”, including <lego.com>.

In a survey of the world’s most powerful brands done in 2009 by the brand analysis company Superbrand UK, the LEGO brand ranked eighth and was the top toy brand in the world.

The main activity of the Complainant, through its licensees, is to manufacture and sell construction toys. One model of toy sold by the Complainant’s licensees is called “LEGO City Corner”.

The disputed domain name was registered on May 7, 2011.

The disputed domain name resolves to a webpage where the Respondent advertises the LEGO City Corner toy of the Complainant. The website includes a link to Amazon’s “www.amazon.com” website, where the toy can be purchased.

On June 20, 2011, the Complainant’s counsel sent a cease and desist letter to the Respondent, requesting transfer of the disputed domain name. The Respondent replied on June 21, 2011, stating that he was promoting an original LEGO product on his website and therefore did not harm the Complainant. Following an exchange of emails between the parties, the Respondent agreed to transfer a number of domain names containing the work “lego” that he had registered. However, concerning the disputed domain name (as well as four other domain names containing the word “lego”), the Respondent stated that he would transfer these domain names on January 31, 2012, as he was “expecting to have huge sales on Christmas and New Year”. No domain names were transferred following this correspondence.

5. Parties’ Contentions

A. Complainant

Concerning the first test under the Policy, the Complainant claims that the disputed domain name is confusingly similar to its LEGO trademark. It submits that the dominant part of the disputed domain name comprises the word “lego”, which is identical to its registered trademark. It also points out that the LEGO trademark is a famous mark, well known throughout the world. According to the Complainant, it is a long-established precedent that confusing similarity is generally recognized when well-known trademarks are paired up with generic prefixes and suffixes. In addition, the Complainant states that it sells a product named “LEGO City Corner” and, therefore, the suffix added to the LEGO trademark in the disputed domain name strengthens the impression that the disputed domain name belongs to, or is affiliated with the Complainant.

Concerning the second test under the Policy, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, the Respondent has no registered trademark or trade name corresponding to the disputed domain name and has not been licensed or authorized by the Complainant to use the LEGO trademark. In addition, the Complainant states that the Respondent is not one of its authorized resellers and that the parties never had any contractual relationship. The Complainant further submits that it is highly unlikely that the Respondent would not have known of the Complainant’s trademark; on the contrary, the Complainant contends that it is the fame of the LEGO trademark that motivated the Respondent to register the disputed domain name. Finally, the Complainant states that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, as he has intentionally chosen a domain name based on a registered trademark in order to generate traffic to a website where visitors are redirected to “www.amazon.com” to purchase LEGO branded products.

Concerning the third test under the Policy, the Complainant submits that the Respondent registered and used the disputed domain name in bad faith. According to the Complainant, the fame of the LEGO trademark is what made the Respondent register the disputed domain name. In addition, the Complainant points out that the fact that the Respondent displays sponsored links on his website and derives income from such links is a further indication of bad faith.

Based on these considerations, the Complainant requests that the disputed domain name be transferred to it.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in these proceedings and obtain the transfer of the disputed domain name, the Complainant must prove that each of the three following elements is satisfied:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section A); and

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name (see below, section B); and

(iii) The disputed domain name has been registered and is being used in bad faith (see below, section C).

Paragraph 4(a) in fine of the Policy states that the burden of proof with regard to these elements lies with the Complainant.

A. Identical or Confusingly Similar

This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the disputed domain name identical or confusingly similar to such trademark or service mark.

As regards the first issue, the Complainant has provided documentary evidence that it is the owner of several trademarks consisting of the word “lego”.

Concerning the second issue, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s LEGO trademarks. First, the disputed domain name incorporates the Complainant’s well-known trademark in its entirety, with the addition of two generic words, “city” and “corner”. It has been established that the mere addition of an additional generic term to a registered mark is insufficient to distinguish a domain name from a distinctive mark, such as LEGO (see, e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.SI.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696; Dr. Ing. H.c.F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488). In addition, the Panel considers that in this particular case, the addition of the generic terms “city” and “corner” effectively increase likelihood of confusion, as “LEGO City Corner” exactly corresponds to a product that is part of the Complainant’s product lineup.

The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

In the present case, the Respondent has not filed a response to the Complaint. However, based on the evidence on record, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, for the following reasons.

First, the Panel considers that the Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services. The Respondent’s website features a picture and a description of the Complainant’s LEGO City Corner product and provides a hyperlink linking to the “www.amazon.com” website, where such product can be purchased. However, the Respondent is neither an authorized reseller of the Complainant’s products, nor a licensee, nor has it been otherwise authorized to sell LEGO products. Therefore, in the Panel’s opinion, the Respondent’s use of the disputed domain name does not meet the criteria set out by UDRP precedents to qualify as bona fide use (see, e.g., Starwood Hotels & Resorts Worldwide Inc., The Sheraton LLC, Sheraton International Inc., Societe des Hotels Meridien, Westin Hotel Management L.P. v. Media Insight a/k/a Media Insights, WIPO Case No. D2010-0211 and cases cited; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).

Second, there is no evidence that the Respondent has been commonly known by the disputed domain name.

Third, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. On the contrary, as he mentioned in correspondence with the Complainant before the filing of these proceedings, he uses the disputed domain name for commercial gain, “expecting to have huge sales on Christmas and New Year”.

Finally, there are no other elements on record, nor explanations by the Respondent (who did not file a response in the course of these proceedings), indicating that the Respondent would have rights or legitimate interests in respect of the disputed domain name.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith. In particular, Paragraph 4(b)(iv) provides as an instance of registration and use in bad faith, circumstances indicating that:

“(iv) by using the domain name, you [respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Panel is satisfied that these circumstances are fulfilled in this case. First, there is no doubt that the Respondent knew of the Complainant’s trademark when it registered the disputed domain name, as is evidenced by the fact that it set up a website to which the disputed domain name resolves, specifically advertising the Complainant’s LEGO City Corner product. In addition, as the Respondent stated, it intended to use the disputed domain name for commercial gain. Moreover, taking into account the fame of the LEGO trademark and the fact that the Respondent registered a domain name that not only incorporates the Complainant’s trademark, but is identical to the name of one of the products in the Complainant’s product lineup, the Panel finds that the Respondent intentionally attempted to attract Internet users by creating a likelihood of confusion with the Complainant’s trademark.

For these reasons, the Panel finds that the disputed domain name 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 <legocitycorner.com> be transferred to the Complainant.

Fabrizio La Spada
Sole Panelist
Dated: December 2, 2011

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