WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. PrivacyProtect.org Domain Admin / Kim Bum LLC
Case No. D2013-0982
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is PrivacyProtect.org Domain Admin of Nobby Beach, Queensland, Australia / Kim Bum LLC of Seoul, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <legocima.com> is registered with Media Elite Holdings Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2013. On June 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 7, 2013, the Registrar 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 June 12, 2013, 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 June 12, 2013.
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 June 13, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 3, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 8, 2013.
The Center appointed John Katz QC as the sole panelist in this matter on July 22, 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 a Danish company which owns the intellectual property rights, including a number of registered trademarks, in relation to the well-known children’s toys and building systems known as LEGO. The registered trademarks subsist in most countries of the world.
The Complainant is also the owner of a very large number of country specific domain names throughout the world as well as domain names under various generic Top-Level Domains.
The trademarks and domain names are all used in association with and for the purposes of protecting the mark LEGO. That mark, it is contended, is a world famous mark used to connote construction toys branded LEGO or branded LEGO together with a further descriptor identifying the particular nature of the toy itself (e.g. LEGOLAND, LegoHelicopter, LegoCityAirport).
The LEGO group of companies traces its manufacturing and retail origins back to 1953. Since then the combined revenue for the group has grown to billions of dollars. The LEGO products are sold in over 130 countries around the world. The LEGO brand is identified as among the top 10 brands by the United Kingdom company Superbrands.
The LEGO trademarks have been extended to include their application to computer hardware and software, books, videos and computer controlled robotic construction sets. The range of products can be seen on the Complainant’s website “www.lego.com”.
The Respondents are PrivacyProtect.org Domain Admin of Queensland, Australia, and Kim Bum LLC. The Registrar is Media Elite Holdings Limited of Shanghai, China. The Respondent Kim Bum LLC appears to operate from Seoul, Republic of Korea (South Korea). The Complainant has trademarks registered in China, the Republic of Korea and Australia.
The Respondent Kim Bum LLC is not known to the Complainant beyond being a Respondent in two other UDRP proceedings relating to the disputed domain names <legonasa.com> and <legoherofaktory.com>. The Respondent, PrivacyProtect.org is a Queensland, Australia, based privacy / proxy service.
The disputed domain name was registered on February 21, 2013 and is current until February 21, 2014. It is currently in locked status pending the resolution of the present Complaint.
A letter before action was sent to the Respondent PrivacyProtect.org on March 21, 2013, with two subsequent follow-ups. None have drawn a response from the Respondents.
The historical screens from the website associated with the disputed domain name suggest that the Respondent Kim Bum LLC has been using the website on a pay per click basis, presumably deriving revenue on the usual basis that pay per click or pay per view sites operate, revenue being derived by relying on advertising displayed or streamed on the associated website, some of which may have the word LEGO included in them whereas others may not.
5. Parties’ Contentions
The Complainant relies upon its registered trademarks, domain names and the goodwill generated over the years resulting in the mark LEGO becoming recognized as a famous mark throughout the world.
The Complainant contends that the Respondent Kim Bum LLC is or has been using the disputed domain name and any associated website for the purposes of deriving revenue on a pay per click/view basis by wrongfully attracting visitors to the website by incorporation of the mark LEGO on and as an integral part of the disputed domain name.
The Complainant says it has not granted any licence or permission to the Respondent Kim Bum LLC and that the Respondent is not authorized to use the mark LEGO nor is the Respondent carrying on any business associated with the legitimate use of the mark LEGO. Accordingly, contends the Complainant, visitors to the website will be confused or misled by assuming an association with the Complainant, contrary to the fact. Such will damage the reputation and goodwill of the Complainant’s rights in its various marks.
The Respondent PrivacyProtect.org is an Australian based privacy / proxy service.
As the Respondent Kim Bum LLC has defaulted there is no evidence or submission from it. The Complainant sent a letter before action to the Respondent PrivacyProtect.org on March 21, 2013. At that stage it appears the name and address of the Respondent Kim Bum LLC was not known. It does not appear from the case file if a subsequent letter before action was also sent to Kim Bum LLC.
By email dated June 12, 2013, the Complainant requested that the Complaint be amended to record the name and address of Kim Bum LLC as a Respondent together with PrivacyProtect.org.
Nothing turns on whether or not a letter before action was also sent to Kim Bum LLC.
The Complaint and amendment to the Complaint were sent to both Respondents by the Center. They have been given every opportunity to respond whether jointly or individually. Neither has done so directly and nor has the Respondent Kim Bum LLC responded through the Respondent PrivacyProtect.org. Despite the apparent absence of a letter before action to Kim Bum LLC in South Korea, it is clear that that Respondent has received the Complaint and amendment to the Complaint so is without doubt on notice of the Complaint.
6. Discussion and Findings
The Policy is directed towards resolving disputes concerning allegations of abuse of domain name registrations.
As part of the process, a complainant must provide evidence and submissions in support of its complaint. The expectation is that the complainant will provide such supporting evidence as is necessary to make out its case under all three heads in paragraph 4(a) of the Policy. The respondent is given full opportunity to respond. In this instance, the Respondents have defaulted.
Paragraph 4(a) of the Policy sets out three elements that must be established by a complainant to merit a finding that a respondent has engaged in abuse of domain name registration and to obtain relief. These elements are that:
(i) The respondent’s 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 domain name; and
(iii) The respondent’s domain name has been registered and is being used in bad faith.
Each of three elements must be established by a complainant to warrant relief.
A. Identical or Confusingly Similar
As to the first ground, the disputed domain name must be shown to be identical or confusingly similar to trademarks in which the Complainant has rights.
The Complainant must establish that it has such rights either to common law or registered trademarks or service marks.
The Complainant has an enormous number of trademarks registered around the world in its name. These include registration for LEGO alone in China, South Korea and Australia. The Complainant also has over 2,400 domain names registered in its favour which include the mark LEGO.
One of the products manufactured and sold by the LEGO group is known as LEGO Chima, which can be seen on the “www.lego.com” website. The characters appear to display animal warrior tribes in animated postures and settings.
The disputed domain name is <legocima.com>. The domain name incorporates in full and in capital letters the Complainant’s registered trademark LEGO which appears only ever to be used in the upper case. The addition of the word Cima is virtually identical to the LEGO product and word Chima, denoting that product sold by the Complainant. The suffix “.com” is no more than the descriptor denoting a Top-Level Domain. It relevantly adds nothing to the domain name.
In the Panel’s view, there could be no argument whatever but that LEGO of itself is a famous mark throughout the world, including in China and South Korea and Australia. No person seeing or hearing of the disputed domain name would assume other than that it was a domain name which, together with any associated website, was in some way linked to or connected with the Complainant. So well-known is the mark LEGO that the disputed domain name clearly is confusingly similar to a trademark in which the Complainant has undeniable rights.
The Panel accordingly finds that paragraph 4(a)(i) of the Policy is made out.
B. Rights or Legitimate Interests
As to the second ground, that there are no rights or legitimate interests possessed by the Respondent, the Respondents do not put forward in evidence any business or trading operation known as or by reference to the trademark in suit thereby justifying a proprietory right to the mark.
Under paragraph 4(a)(ii) a respondent can justify its registration of a domain name on certain grounds some of which are set out in paragraph 4(c) of the Policy. Such grounds resolve broadly to own name use, bona fide use, or legitimate noncommercial or fair use.
Even though the Respondents have defaulted, it is not sufficient simply to assume from that that the Respondents have no rights or legitimate interests or can claim none.
The use of which complaint is made is the word or mark LEGO in the disputed domain name. There is also the addition of the word “cima” virtually identical to the LEGO product Chima relating to the particular product and describing a subset of the Complainant’s products manufactured and sold throughout the world.
Given the findings in Section 6.A above, the Respondents would need to demonstrate that they have some rights or legitimate interests in the mark LEGO and the additional word “Cima”.
The Complainant has granted no licence or authority to the Respondents to use its LEGO trademark. The disputed domain name is also only one letter different from a combination of the Complainant’s famous mark LEGO and its own product Chima. It can only be assumed that the Respondents’ use is deliberate and as a tool or device to attract visitors to the associated website, thereby granting revenue for the Respondents and to the detriment of the Complainant.
There being no response from the Respondents, the Complainant more than satisfies its obligations of proof under this head.
The Panel accordingly finds that paragraph 4(a)(ii) of the Policy is made out.
C. Registered and Used in Bad Faith
As to the third ground, this requires that the disputed domain name be registered and used in bad faith. As has previously been said in other UDRP panels’ decisions together with earlier decisions of this Panel, both elements must be made out. Accordingly, both registration and use in bad faith have to be established by the Complainant.
The Complainant refers to the two other UDRP complaints involving the Respondent Kim Bum LLC in connection with the disputed domain names <legonasa.com> and <legoherofaktory.com>. As these appear to be pending complaints the Panel has not taken them into account. The issues that require to be determined can more than adequately be determined on the basis of the other available evidence in any event, and without recourse to or any reliance upon the other two pending complaints.
The disputed domain name was registered on February 21, 2013. By that time the international reputation and associated goodwill of the Complainant in its name and mark LEGO was well and truly established. It also had its product LEGO Chima. Screens from the Complainant’s website “www.lego.com” showing the LEGO Chima product contain a copyright proclamation and also notification of trademark rights. That is notice to the world.
The Respondents have not put forward individually or jointly any right to the use of the mark LEGO or CHIMA or CIMA. The Complainant has contended it has granted none. It can therefore safely be accepted that as at the date of registration on February 21, 2013, the Respondents registered the disputed domain name in bad faith.
But the Complainant must also establish use in bad faith. The historical screens from the website at the disputed domain name are in evidence. Use in the context of paragraph 4(a)(iii) of the Policy does not require active use. Nevertheless, it appears as if there has been for a time active use.
However, “passive holding” of a domain name for blocking or cybersquatting can constitute bad faith use by virtue of the blocking activity.
Here, there are the historical screens in evidence showing a pay per click/view website. The site is now blocked following this Complaint. Given the historical screens and the full incorporation of the mark LEGO and the Complainant’s product Chima (but spelled Cima by the Respondents) it can also safely be accepted that the Respondents are or were, at least, until the Complaint was filed using the disputed domain name in bad faith and continue to do so by reason of the registration alone which operates as a bar to the Complainant registering the same domain name.
The Panel accordingly finds that paragraph 4(a)(iii) of the Policy is made out.
For all 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 <legocima.com> be transferred to the Complainant.
John Katz QC
Date: August 5, 2013