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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. PrivacyGuardian.org / Duy Nguyen

Case No. D2013-2186

1. The Parties

The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Stockholm, Sweden.

The Respondent is PrivacyGuardian.org of Phoenix, Arizona, United States of America / Duy Nguyen of Ha Noi, Viet Nam.

2. The Domain Names and Registrar

The disputed domain names <legominecraftcreeper.com>, <legominecraftnether.com>, <legominecraftsets.com> and <legominecraftvillage.com> are registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2013. On December 17, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 20, 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 December 20, 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 amendment to the Complaint, and the proceedings commenced on December 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2014.

The Center appointed Dr. Vinod K. Agarwal as the sole panelist in this matter on January 23, 2014. The Panel finds that it was properly appointed. 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 Denmark based company. The Complainant is the owner of the trademark LEGO. The said trademark was registered for the first time in the United States in 1953. The Complainant has subsidiaries and branches throughout the world. Further, the Complainant has granted licenses to a number of other bodies. Collectively they are known as “the LEGO Group of Companies” or “the LEGO Group”.

According to the Complaint, the Complainant’s licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights, in the United States and elsewhere. The Complainant and its licensees are engaged in the business of making and selling construction toys. The LEGO Group has expanded the use of the trademark LEGO to computer hardware and software, books, videos and computer controlled robotic construction sets. The Complainant’s products under the trademark LEGO are sold in more than 130 countries.

Respondent’s Identity and Activities

The Respondent did not reply to the Complainant’s contentions. Hence, the Respondent’s activities are not known.

The disputed domain names were registered on November 5, 2013.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to this dispute.

In relation to element (i), that is, that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights, the Complainant contends that LEGO is its trademark. According to Superbrands UK, LEGO is ranked number 8 out of the most famous trademarks and brands in the world. LEGO is registered in a large number of countries, such as Argentina, Australia, Austria, Bolivia, Brazil, Canada, Chile, China, Cuba, Denmark, Egypt, Ethiopia, Fiji, Finland, France, Germany, Ghana, Greece, Hong Kong, China, Hungary, India, Indonesia, Iran, Ireland, Italy, Japan, Kuwait, Liberia, Madagascar, Malawi, Mauritius, Mexico, New Zealand, Nigeria, Norway, Oman, Pakistan, Panama, Peru, Portugal, Philippines, Poland, Qatar, Romania, Russian Federation, Saudi Arabia, Sierra Leone, Singapore, South Africa, Spain, Sweden, Switzerland, Taiwan Province of China, United Republic of Tanzania, Turkey, Uganda, United Arab Emirates, United Kingdom of Great Britain and Northern Ireland, United States of America, Venezuela, Viet Nam, Zambia, etc. In most of the countries the said trademark is registered in Class 28. However, in certain countries it is also registered in some other Classes including Classes 3, 9, 14, 16, 20, 24, 25, 38, 41 and 42. A detailed list of the countries where the trademark LEGO is registered and the class in which it is registered is provided by the Complainant.

The Complainant has contended that all four of the disputed domain names, that is, <legominecraftcreeper.com>, <legominecraftnether.com>, <legominecraftsets.com> and <legominecraftvillage.com> include its trademark LEGO. Thus, the disputed domain names are identical or confusingly similar to the Complainant’s trademark LEGO.

The Complainant further contends that it is the owner of more than 2,400 domain names containing the word “Lego” and it is the strict policy of the Complainant that all domain names containing the word “Lego” should be owned by the Complainant.

Anyone who sees the disputed domain names may believe that they are the domain names of the Complainant or that they are associated with it or have some kind of commercial relationship with the Complainant. Therefore, the likelihood of confusion cannot be ruled out.

In relation to the second element, that is, that the Respondent has no rights or legitimate interests in respect of the disputed domain names, the Complainant contends that the Respondent has never registered the LEGO trademark or any similar trademark. The Respondent (as an individual, business, or other organization) has not been commonly known by the disputed domain names <legominecraftcreeper.com>, <legominecraftnether.com>, <legominecraftsets.com> and <legominecraftvillage.com>. According to the Registrar, the Respondent is Duy Nguyen.

The Complainant has not given any license or authorization to use the trademark LEGO to the Respondent. The Respondent is not an authorized dealer of the Complainant’s products and never had a business relationship with the Complainant. Further, the Respondent is neither making a legitimate or fair use of the disputed domain names, nor is it using the disputed domain names in connection with a bona fide offering of goods or services. The websites to which the disputed domain names resolve display sponsored links to “Amazon.com” online sale of toys. The websites are part of the Amazon associate programme and designed to earn advertising fees by linking to “Amazon.com”. Further, the Respondent links to the online shop “www.amazon.com” not only sell the trademark holders products but also sells products from other companies including competing products. It is contended that the Respondent has no rights or legitimate interests in the disputed domain names.

Thus, the Respondent registered the disputed domain names for the sole purpose of creating confusion and misleading the general public and the customers of the Complainant.

Regarding the third element, that is, that the disputed domain names have been registered and are being used in bad faith, the Complainant contends that the main reason of registering the disputed domain names <legominecraftcreeper.com>, <legominecraftnether.com>, <legominecraftsets.com> and <legominecraftvillage.com> by the Respondent was to earn profit and to mislead the general public and the customers of the Complainant. The Respondent is not an authorized reseller and the websites connect to the online store associated with “Amazon.com”. It does not make a bona fide commercial offering of good or services. The Complainant has contended that the use of a domain name that incorporates a well-known trademark to promote competing or infringing products cannot be considered a “bona fide offering of goods and services”.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel as to the principles the Panel is to use in rendering its decision. It says that, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable” including the Supplemental Rules.

According to paragraph 4(a) of the Policy, the complainant must prove that:

(a) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(b) The respondent has no rights or legitimate interests in respect of the domain name; and

(c) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Respondent registered the disputed domain names on November 5, 2013. The expiry date is November 5, 2014.

The present dispute pertains to the following domain names:

1. <legominecraftcreeper.com>,

2. <legominecraftnether.com>,

3. <legominecraftsets.com> and

4. <legominecraftvillage.com>.

A glance at these disputed domain names will indicate that the word “lego” is common in all four of the disputed domain names. All the disputed domain names also contain a word “minecraft”. In addition, the disputed domain names also contain the words “creeper”, “nether”, “sets” and “village” respectively. According to the Complainant, the addition of these words does not have any impact on the overall impression as the dominant part of the disputed domain names, “lego”, is instantly recognizable as a world famous trademark.

The addition of the generic Top-Level Domain “.com”, which is necessary for a domain name to be operational, is typically disregarded for the purposes of determining confusing similarity. See Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493 and Société Générale and Fimat International Banque v. Lebanon Index/La France DN and Elie Khouri, WIPO Case No. D2002-0760.

As it has been mentioned above, the LEGO trademark of the Complainant is registered in many countries. The Complainant also owns 2,400 domain names with the trademark LEGO. As has been mentioned above, all four of the disputed domain names contain the word “lego”. Thus, the Panel finds that the disputed domain names are confusingly similar to the registered trademark of the Complainant.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, the respondent may demonstrate its rights to or legitimate interests in the domain name by proving any of the following circumstances:

(i) before any notice to the respondent of the dispute, the respondent’s 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) The respondent is 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.

The Respondent has not filed any response in this case. The Complainant has not given any license or authorization to use the trademark LEGO to the Respondent. There is no evidence to suggest that the Respondent has become known by the disputed domain names anywhere in the world. Based on the default and the available record, the Respondent has no rights or legitimate interests in the disputed domain names.

In Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055, it has been held that, “in the absence of any license or permission from the complainant to use any of its trademarks or to apply for or to use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by the Respondent.” See also Pavillion Agency Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221.

“LEGO” is the name and mark of the Complainant. It is evident to the Panel that the Respondent can have no rights or legitimate interests in the disputed domain names. Further, in view of the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its name or trademark or to apply for or use any domain name incorporating said name and that nobody could use the word “lego” unless seeking to create an impression of an association with the Complainant, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of the domain name in bad faith:

(i) Circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or

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

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

(iv) By using the domain name, the respondent has intentionally attempted to attract, for commercial gain, internet users to its 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 the respondent’s website or location or of a product or service on its website or location.

The contention of the Complainant is that the present case is covered by the second, third and fourth circumstances. The disputed domain names were registered and are being used in bad faith. The Complainant has furnished evidence of the fact that the disputed domain names are being used by the Respondent for exploiting the consumer’s trust in the Complainant’s reputation and goodwill. The Respondent is not offering goods or services on the websites at the disputed domain names where sponsored links are offered. The Respondent is misleading Internet users and confusing them so as to lure them to other websites making them believe that the websites behind those links are associated with the Complainant.

In the Panel’s assessment the available record leads to the conclusion that the disputed domain names were registered and are being used by the Respondent in bad faith.

7. Decision

In light of the foregoing findings, namely, that the disputed domain names are confusingly similar to a mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names were registered and are being used in bad faith, in accordance with paragraphs 4(i) of the Policy and Rule 15 of the Rules, the Panel orders that the disputed domain names <legominecraftcreeper.com>, <legominecraftnether.com>, <legominecraftsets.com> and <legominecraftvillage.com> be transferred to the Complainant.

Vinod K. Agarwal
Sole Panelist
Date: February 3, 2014