WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lego Juris A/S v. Mustafa Kara
Case No. D2012-1333
1. The Parties
The Complainant is Lego Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Mustafa Kara of Edirne, Turkey.
2. The Domain Name and Registrar
The disputed domain name <legoligi.com> is registered with 1&1 Internet AG (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2012. On June 29, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 3, 2012, the Registrar 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 July 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 24, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 2012.
The Center appointed Simon Minahan as the sole panelist in this matter on August 1, 2012. 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 panel finds the following matters as fact for the purpose of this decision.
The Complainant, as part of the LEGO Group of Companies which manufacture and sell LEGO plastic construction toys, is the owner of the LEGO trade mark which is widely in use around the world and has been since 1954. The LEGO mark is the subject of many trade mark registrations internationally, including in the USA and throughout Europe and, in particular, in Turkey.
In connection with the LEGO trade mark, the LEGO Group has, since 2009, enjoyed a trade in excess of USD 2.5 billion annually.
The LEGO trade mark is, and has previously been held to be, a famous or well-known trade mark (e.g.: LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840).
The disputed domain name is presently and has been associated with a Turkish language website which carries various news articles and photographs apparently concerning LEGO product as well as carrying a variety of apparently unassociated banner advertisements and hyperlink connections to other commercial websites.
5. Parties’ Contentions
The Complainant, as owner of the LEGO trade mark, contends (among other things) that:
a) the LEGO trade mark is an internationally famous trade mark;
b) the Respondent has no licence or authority from the LEGO Group to apply or make any use of the LEGO trade mark;
c) the Respondent is to be taken to have known of the LEGO mark when it registered the disputed domain name and has taken a famous trade mark in order to “sponge” off it;
d) the Respondent has no legitimate interest in the LEGO mark and can acquire none arising from use in association with the disputed domain name in the circumstances (citing Drexel University v. David Brouda, WIPO Case No. D2001-0067);
e) the disputed domain name is confusingly similar to its LEGO trade mark, the “ligi” and the generic top-level domain (gTLD) “.com” suffixes, being generic and properly regarded as non-distinguishing;
f) there is no evidence of the Respondent being associated with or making any historical use of any LEGO trade mark or a LEGOLIGI trade mark prior to registering the disputed domain name and associating it with the said website;
g) the use of the disputed domain name in connection with a website carrying banner advertisements which are not associated with the Complainant is a bad faith diversion of goodwill and commercial traffic (citing Lego Juris A/S v. Adry Asry, WIPO Case No. D2011-1224; LEGO Juris A/S v. Andrew Vierling, WIPO Case No. D2010-1913; LEGO Juris A/S v. James Mills, WIPO Case No. D2011-1000);
h) the commercial gain contemplated by paragraph 4(b)(iv) of the UDRP need not be gain to the Respondent to qualify as a bad faith use (citing Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel finds the Complaint to be properly constituted and further finds it has jurisdiction under the UDRP.
Notwithstanding that the Respondent has not replied to the claims of the Complainant, the Complainant nonetheless has the onus of making out the grounds for transfer or cancellation under the UDRP.
A. Identical or Confusingly Similar
The disputed domain name, is confusingly similar to the Complainant’s LEGO trade mark for the following reasons.
The disputed domain name comprises the Complainant’s famous LEGO trade mark and the suffix “ligi” - which is a generic term meaning “league” in Italian. The suffix is essentially descriptive and generic . Moreover in combination with LEGO, it is suggestive of a variant or associated offering by the Complainant. As such the “ligi” suffix it does nothing to distinguish the disputed domain name or rescue it from confusing similarity to the Complainant’s trade mark. Rather it leverages off it.
The Panel notes and accepts the Complainant’s submission that it is a long-established precedent that confusing similarity is generally recognized when well-known trade marks are paired up with different kinds of generic prefixes and suffixes. See, e.g., Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488.
Numerous other UDRP decisions have confirmed that general contention, too e.g.: Sanofi-Aventis v. Direct Response Marketing aka DRM, WIPO Case No. D2005-0661; Sanofi-aventis v. Elizabeth Riegel and Andrew Riegel, WIPO Case No. D2005-1045; Telstra Corporation Limited v. Peter Lombardo, Marino Sussich and Ray Landers, WIPO Case No. D2000-1511; PepsiCo Inc v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696; PepsiCo, Inc v. Diabetes Home care and DHC Services, WIPO Case No. D2001-0174; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409; America Online, Inc v. Chris Hoffman, WIPO Case No. D2001-1184; Pfizer Inc. v. United Pharmacy Ltd, WIPO Case No. D2001-0446; Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; Wal-Mart Stores, Inc. v. Yongsoo Hwang, NO-WALMART and NO-WALMART.COM, WIPO Case No. D2000-0838; AltaVista Company v. S.M.A., Inc., WIPO Case No. D2000-0927.
Further, the presence of the gTLD identifier “.com” is to be disregarded as neutral and does not operate to distinguish the disputed domain name or to diminish or reduce confusion around it. See e.g.: Telecom Personal, S.A. v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; Nokia Corporation v. Private, WIPO Case No. D2000-1271.
The Panel finds that the Complainant met the requirement of paragraph 4(a)(i) of the UDRP.
B. Rights or Legitimate Interests
The panel notes the evidence of the Complainant that it knows of no history of use by the Respondent or interest or right in the Respondent to use the LEGO or LEGOLIGI trade mark. It further notes and accepts that under paragraph 4(a)(ii) of the UDRP this set of circumstances shifts the burden to establish those rights to the Respondent (see e.g.: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Time Out Group Ltd. v. Marc Jacobson, WIPO Case No. D2001-0317).
The Respondent has not discharged this burden and so the Panel finds it has no right or legitimate interest in the disputed domain name.
Further the Panel accepts the Complainant’s contention that the Respondent knew of the LEGO trade mark when it registered the disputed domain name and that the Respondent can acquire no legitimate interest arising from use of the disputed domain name in such circumstances (citing Drexel University v. David Brouda, WIPO Case No. D2001-0067).
The Panel finds that the Complainant met the requirement of paragraph 4(a)(ii) of the UDRP.
C. Registered and Used in Bad Faith
The Panel, as noted above, finds the LEGO trade mark is internationally famous or well-known. It further considers that commercial use of a trade mark in a domain name would, unless some justification were established, violate the rights of the trade mark owner: Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314.
The panel finds that the Respondent registered the disputed domain name knowing of the Complainant’s trade mark and seeking to leverage off it by 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 the websites.
The Panel finds that the Complainant met the requirement of paragraph 4(a)(iii) of the UDRP.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <legoligi.com> be transferred to the Complainant.
Date: August 6, 2012