WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Samuel Olsson

Case No. D2012-2390

1. The Parties

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

The Respondent is Samuel Olsson of London, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <legocloud.com> is registered with GoDaddy.com, LLC. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2012. On December 5, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 5, 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 December 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 27, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2013.

The Center appointed Assen Alexiev as the sole panelist in this matter on January 10, 2013. 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 part of the LEGO Group – the maker of construction toys, which has subsidiaries and branches throughout the world. LEGO products are sold in more than 130 countries, including in the United Kingdom. The LEGO Group started to use the name “lego” in 1953 to identify construction toys made and sold by it. The revenue of the LEGO Group in 2009 was more than USD 2.8 billion. The global market share of the LEGO Group in 2010 was 5.9%.

The Complainant is the owner of trademark registrations for LEGO, valid for the territories of numerous jurisdictions around the world (the “LEGO trademark”), including:

- the trademark LEGO with registration No.1292923, registered on March 16, 1990 in the United Kingdom of Great Britain and Northern Ireland for services in International Class 40; and

- the Community trademark LEGO with registration No.000039800, registered on October 5, 1998 for goods and services in International Classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41 and 42.

The disputed domain name was registered on August 31, 2012.

5. Parties’ Contentions

A. Complainant

According to the Complainant, the LEGO trademark is among the best known trademarks in the world, as a result of decades of extensive use and advertising. The LEGO trademark has a substantial inherent and acquired distinctiveness, and was listed as number 8 in the list of the most famous trademarks and brands in the world in the official Top 500 Superbrands for 2009/10, prepared by Superbrands UK. According to the provisions of Article 6bis of the Paris Convention for Protection of Industrial Property, confirmed and extended by Article 16.2 and Article 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights, the statute of a well-known trademark provides the owner of such a trademark with the right to prevent any use of the same trademark or a confusingly similar denomination in connection with any products or services (i.e. regardless of the list of the products and services for which the trademark is registered). Thus, the protection for LEGO goes beyond toys and goods similar to toys.

The Complainant contends that the disputed domain name is confusingly similar to the LEGO trademark of the Complainant. The dominant part of the disputed domain name comprises the word LEGO, which is identical to the LEGO trademark. The addition of the element “cloud” is not relevant and will have no impact on the overall impression of the dominant part of the name - “lego”, which is instantly recognizable as the Complainant’s LEGO trademark. The addition of the “com” top level domain does not have any impact on the overall impression of the dominant portion of the disputed domain name and does not eliminate the confusing similarity between the LEGO trademark and the disputed domain name.

The Complainant further submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has no registered trademarks or trade names corresponding to the disputed domain name, and is not using it in any other way that would give him any rights in it. The Respondent has not received any license or authorization by the Complainant to use the LEGO trademark, and the parties have never had a business relationship with each other. In his correspondence with the Complainant, the Respondent has not provided any evidence of rights or legitimate interests in the disputed domain name. The mere registration of the disputed domain name by the Respondent does not give him a right or a legitimate interest in respect of the disputed domain name.

The Complainant further submits that it is highly unlikely that the Respondent would not have known of the Complainant’s LEGO trademark at the time of the registration, and consequently it was the fame of this trademark that motivated the Respondent to register the disputed domain name. As stated in Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314, “… given the notoriety of the Complainant’s Deutsche Bank Mark, any use which the Respondent would make of any domain name, as here, that incorporated the Complainant’s Deutsche Bank Mark, or one confusingly similar thereto, would likely violate the exclusive trademark rights which the Complainant has long held in its mark”. The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. Instead the Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic to a website containing sponsored links. By doing this, the Respondent is misleading Internet users to third party commercial websites and tarnishing the LEGO trademark.

According to the Complainant, the disputed domain name was registered and is being used in bad faith. Given the status of the LEGO trademark as a well-known and reputed trademark with a substantial and widespread reputation throughout the world, it is highly unlikely that the Respondent was not aware of the rights of the Complainant in this trademark and of its value at the point of the registration of the disputed domain name. 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 for his own commercial gain. The website associated to the disputed domain name contains pay-per-click advertising links that are at least partially related to the LEGO trademark, which means that the Respondent has either turned a blind eye to this use of the disputed domain name or is unwilling to disable the advertising revenue generated thereby. The Respondent has also listed the Domain Name for sale on the auction site “www.sedo.co.uk” at the requested price GBP 10,000. Therefore, the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the websites, by creating a likelihood of confusion with the Complainant’s LEGO trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain name.

The Complainant first tried to contact the Respondent on October 26, 2012, through a cease and desist letter. The Complainant advised the Respondent that the unauthorized use of the LEGO trademark within the Domain Name violated the Complainant’s rights in said trademark. The Complainant requested a voluntary transfer of the Domain Name and offered compensation for the expenses of registration and transfer fees, not exceeding out of pocket expenses. The Respondent replied and asked for clarification on the compensation. The Complainant explained that they would be willing to reimburse the out of pocket expenses. The Respondent then stated the following: “LEGOCLOUD.com makes part of my top level domain portfolio. The abbreviation’s based on the letter combinations are many and as such has a broad use. This is a commercial transaction that should reflect a market driven valuation”. The efforts of trying to solve the matter amicably were unsuccessful, and the Complainant commenced the present administrative proceeding.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions. The only message from the Respondent in this proceeding was received by the Center on December 13, 2012, and it only contained the following statement: “There is no intent to infringe on any LEGO trademarks.”

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, each of the following three elements must be satisfied:

(i) the disputed domain name 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 disputed domain name; and

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

Paragraph 4(a) of the Policy further states that the burden of proving that all three elements are present lies with the Complainant.

A. Identical or Confusingly Similar

The Panel has reviewed the evidence submitted by the Complainant and is satisfied that it has rights in the LEGO trademark.

The disputed domain name contains two elements – “lego” and “cloud”. The first of them coincides entirely with the Complainant’s LEGO trademark, which was found to be distinctive and well-known globally in a number of decisions under the Policy (see, e.g., LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840; LEGO Juris A/S v. Domain Administrator, WIPO Case No. D2010-1260; LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680). The second element - “cloud” - is generic and non-distinctive, so the attention of the Internet users will be drawn mainly to the “lego” element of the disputed domain name. The argument of the Respondent that the disputed domain name was an abbreviation, which argument was put forward in the correspondence between the parties, is not convincing because no explanation of the meaning of the abbreviation is given, and because of the strong impression that the “lego” element of the disputed domain name is likely to have on Internet users. As to the gTLD top level domain suffix, it is widely acknowledged that in appropriate circumstances it can be ignored for the purpose of assessing identity or confusing similarity under the Policy, paragraph 4(a)(i).

On the basis of the above, the Panel is of the opinion that the impression of the Internet users will be that the disputed domain name is associated to the Complainant (and its trademark) and the goods it produces and sells. Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s LEGO trademark.

B. Rights or Legitimate Interests

The Policy requires the Complainant to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the Respondent has to provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish by a preponderance of the evidence that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). Under Paragraph 14(b) of the Rules, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.

The Complainant has asserted that no permission to use LEGO trademark in the disputed domain name has been granted to the Respondent. The Complainant has also pointed out that the Respondent is not commonly known by the disputed domain name and that the Respondent has intentionally chosen the disputed domain name in order to generate traffic to his website containing sponsored links and is thus misleading Internet users to third party commercial websites. Thus, the Complainant has made a prima facie showing the Respondent has no rights or legitimate interests in the disputed domain name.

In this proceeding, as well as in the previous correspondence between the parties, the Respondent has failed to put forward any reason why he should be regarded as having rights or legitimate interests in the disputed domain name. The allegation that the disputed domain name is an abbreviation or one of many possible letter combinations which are in wide use is not substantiated by any specific arguments or evidence. The case file contains no evidence that the Respondent is commonly known by the disputed domain name, and the undisputed wide popularity of the LEGO trademark makes it highly likely that the Respondent was aware of it and of its goodwill when he registered the disputed domain name. In these circumstances, the Panel is prepared to accept that the use of the disputed domain name for a website containing pay-per-click links that mention LEGO and forward Internet users to third party websites is likely to have been made with an intention to derive certain commercial advantage by the exploitation of the goodwill of the LEGO trademark without the consent of the Complainant. Such use by the Respondent is not a legitimate noncommercial or fair use and does not confer any rights in favor of the Respondent.

In the light of what is stated above, the Panel finds that the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name has not been rebutted by the Respondent. Therefore, the Panel finds that the Complainant has established the second element of Paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

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 holder 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 complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder 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 holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online 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 the holder’s website or location.

In the present case, the disputed domain name is confusingly similar to the Complainant’s well-known LEGO trademark, and the Respondent has not been found to have any rights or legitimate interests in it or to have permission from the Complainant to register and use it. The website associated to the disputed domain name contains pay-per-click links that mention LEGO and switch Internet users to third party websites. This is sufficient for the Panel to decide that at the time of the registration of the disputed domain name the Respondent had likely been aware of the Complainant and of its goodwill, and that the registration and use of the disputed domain name are likely to have been made in an attempt to achieve a commercial gain through the exploitation of the fame of the LEGO trademark. The Respondent’s simple denial of the above, without submission of any contrary evidence or even allegation of any actual or contemplated good faith use of the disputed domain name, is insufficient for the reaching of a different conclusion. As to the Respondent’s allegation that the disputed domain name does not concern the market segment of the Complainant and consequently does not infringe the LEGO trademark is not convincing and cannot be regarded as an argument in favor of the Respondent either, because this allegation is contradicted by the content of the website associated to the disputed domain name, which appears to contain pay-per-click links to third parties some of which offer LEGO products, and which content is not disputed by the Respondent.

Taking all the above into account, the Panel is prepared to accept that Respondent has registered and used the disputed domain name in bad faith by intentionally attempting to attract, for commercial gain, Internet users to the website linked to the disputed domain name by creating a likelihood of confusion with Complainant’s LEGO trademark as to the source, sponsorship, affiliation, or endorsement of this website.

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 <legocloud.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: January 24, 2013