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WIPO Arbitration and Mediation Center


LEGO Juris A/S v. 4ex-invest/Umbo

Case No. D2012-2059

1. The Parties

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

The Respondent is 4ex-invest/Umbo of Mesto, Czech Republic.

2. The Domain Names and Registrars

The disputed domain names <lego-city-sets.com>, <lego-fire.com>, <lego-helicopter.com>, <lego-star-wars.biz>, <lego-star-wars-sets.org> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2012. On October 18, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 18, 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 November 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 5, 2012.

The Center appointed Edoardo Fano as the sole panelist in this matter on December 14, 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.

The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.

Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of the Respondent’s response.

The language of the proceeding is English, being the language of the Registration Agreement as per paragraph 11(a) of the Rules.

4. Factual Background

The Complainant is Lego Juris A/S, based in Denmark and owner of the worldwide famous trademark LEGO for construction toys and other LEGO branded products. The Complainant and its subsidiaries and branches are selling LEGO products in more than 130 countries, including the Czech Republic, where the Respondent is located:

The Complainant is the owner of several trademark registrations for LEGO, among which:

- Community Trademark Registration LEGO, No. 000039800 of 1996;

- Czech Republic Trademark LEGO, No.157.549 of 1967;

- Australian Trademark Registration LEGO, No. B129.258 of 1960;

- Canadian Trademark Registration LEGO, No. 106.457 of 1957;

- Danish Trademark Registration LEGO, No. 604-1954 of 1954;

- Chinese Trademark Registration LEGO, No. 75.682 of 1976;

- Japanese Trademark Registration LEGO, No. 520.470 of 1958;

- United States Trademark Registration LEGO, No. 1,018,875 of 1975.

The Complainant is also the owner of more than 2,400 domain names including the trademark LEGO.

The Complainant provided evidence in support of the above.

The Complainant entered into a license agreement with Lucasfilm Ltd in 1999 concerning the use of the trademark STAR WARS which was incorporated into the LEGO product line.

The disputed domain names <lego-city-sets.com>, <lego-fire.com>, <lego-helicopter.com>, <lego-star-wars.biz>, <lego-star-wars-sets.org> were registered on May 29, 2012. At the time of filing the Complaint, the disputed domain names pointed to a webpage with sponsored links redirected to the website “www.Amazon.com”, with the exception of the disputed domain name <lego-star-wars.biz>, which pointed to an indexed website.

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain names <lego-city-sets.com>, <lego-fire.com>, <lego-helicopter.com>, <lego-star-wars.biz>, <lego-star-wars-sets.org> are confusingly similar to its trademark LEGO, since they all comprise the trademark LEGO as dominant part and the addition of suffixes will not have any impact on the overall impression of the dominant part of the disputed domain names.

Moreover, the Complainant affirms that the Respondent has no rights or legitimate interests in respect of the disputed domain names since it has not been authorized by the Complainant to register and/or use the disputed domain names and it is not making a non-commercial or fair use of the disputed domain names. The Respondent cannot be considered as a reseller since the reseller is “Amazon.com” and the Respondent is not only getting revenue when a visitor clicks through on the links provided, but it is also not disclosing its relationship with the trademark’s owner.

The Complainant submits that the Respondent has registered and is using the disputed domain names in bad faith.

The Complainant asserts that its trademark LEGO is very well-known and the Respondent could not have registered the disputed domain names without knowledge of the Complainant’s trademark rights.

The Complainant argues that the Respondent is using the disputed domain names to intentionally attempt to attract, for commercial gain through sponsored links, Internet users to all its relevant websites with the exception of the disputed domain name <lego-star-wars.biz>, which redirects to an indexed website consisting of an act of bad faith as passive holding.

Finally, the Complainant states that a further evidence of the Respondent’s bad faith is represented by the failure to respond to the cease and desist letter first sent by the Complainant on August 9, 2012 and then uploaded via registrar’s website on August 22, 2012.

B. Respondent

The Respondent has made no formal substantive reply to the Complainant’s contentions and is in default; in reference to paragraphs 5(e) and 14 of the Rules no exceptional circumstances explaining the default have been put forward.

A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences by the panel, in accordance with paragraph 14(b) of the Rules, may be drawn (see also Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSl International PLC v. Mark Freeman, WIPO Case No. D2000-1080; Altavista Company v. Grandtotal Finances Limited et. al., WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007-0288).

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:

(i) the disputed domain names are 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 disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant is the owner of the trademark LEGO both by registration and acquired reputation and that the disputed domain names <lego-city-sets.com>, <lego-fire.com>, <lego-helicopter.com>, <lego-star-wars.biz>, <lego-star-wars-sets.org> are confusingly similar to the trademark LEGO.

Regarding the addition of either the generic words “city-sets”, “fire” and “helicopter” or another licensed trademark (such as Lucasfilm Ltd’s STAR WARS) as “star-wars” and “star-wars-sets”, the Panel notes that it is now well established that the addition of generic terms to a domain name does not necessarily distinguish the domain name from a trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713). The addition of the above suffixes does not therefore prevent the disputed domain names from being confusingly similar to the Complainant’s trademark.

It is also well accepted that a generic top-level domain suffix, in this case “.com”, “.biz” and “.org”, may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607).

The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain names are confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Respondent has failed to file a formal substantive Response in accordance with the Rules, paragraph 5.

The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. It asserts that the Respondent is not using the disputed domain names for a legitimate non-commercial or fair use or in connection with a bona fide offering of goods or services.

The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has a right or legitimate interest in the disputed domain names. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain names.

The Panel therefore finds that the Policy, paragraph 4(a)(ii), has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that [the respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) that [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site 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 [the respondent’s] website or location or of a product or service on [the respondent’s] web site or location.”

As regards to the registration in bad faith of the disputed domain names, the reputation of the Complainant’s trademark LEGO is clearly established and the Panel finds that the Respondent knew or must have known that the disputed domain names were confusingly similar to the Complainant’s trademark, and that therefore the disputed domain names were registered in bad faith.

As regards the use in bad faith, the disputed domain names <lego-city-sets.com>, <lego-fire.com>, <lego-helicopter.com>, <lego-star-wars-sets.org> all point to webpages with sponsored links redirecting the reseller “Amazon.com”.

In the present case, the criteria developed in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 for a reseller or distributor to have a legitimate interest in the domain name are clearly not met. It shall suffice to mention that on the websites to which the disputed domain names resolve there is not a direct offerings of the goods at issue, and that the websites do not in any way disclose the Respondent’s relationship with the Complainant. Moreover, pay-per-click websites like the ones of the current case do not normally fall within such criteria. See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.3.

All of the above suggests to the Panel that the Respondent intentionally registered and is using the above disputed domain names in order to attract, for commercial gain, Internet users to its website in accordance with paragraph 4(b)(iv) of the Policy.

As regards the use in bad faith of the disputed domain name <lego-star-wars.biz>, which resolves to an inactive website, the Panel considers that bad faith may exist even if the Respondent has done nothing but register the disputed domain name (so-called “passive holding”, as set forth in the landmark decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain names in bad faith.

The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.

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 names <lego-city-sets.com>, <lego-fire.com>, <lego-helicopter.com>, <lego-star-wars.biz>, <lego-star-wars-sets.org> be transferred to the Complainant.

Edoardo Fano
Sole Panelist
Date: December 20, 2012