WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Domain Admin Privacy Protection Service INC d/b/a PrivacyProtect.org / Bob Pham
Case No. D2014-0761
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Domain Admin Privacy Protection Service INC d/b/a PrivacyProtect.org of Nobby Beach, Queensland Australia / Bob Pham of Ha Noi, Vietnam.
2. The Domain Name and Registrar
The disputed domain name <legomixels.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 May 9, 2014. On May 9, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 20, 2014, 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 the same date 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 May 27, 2014.
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 May 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 18, 2014.
The Center appointed Emmanuelle Ragot as the sole panelist in this matter on July 3, 2014. 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 based in Denmark (Annex 7 of the Complaint) and is the owner of LEGO, and all other trademarks used in connection with the famous LEGO brands of construction toys and other LEGO branded products.
The Complainant’s licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights, in the Australia and Vietnam (the location of the underlying registrant).
The Complainant and its licensees, through their predecessors, commenced use of the LEGO mark in the U.S. during 1953, to identify construction toys made and sold by them.
The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in Australia and Vietnam.
The Complainant is also the owner of more than 2400 domain names containing the term “lego” (Annex 8 of the Complaint).
It is the strict policy of the Complainant that all domain names containing the word “lego”should be owned by the Complainant.
The LEGO trademark is registered in favor of the Complainant in numerous countries around the world and is still in use. The Complainant has submitted evidence that it holds the said trademark (Annex 6 of the Complaint) and domain names (Annex 8 of the Compliant).
The trademark LEGO is among the best-known trademarks in the world. The LEGO trademark and brand have been recognized as being famous. The Complainant provides with a list (Annex 9 of the Complaint) of the official top 500 Superbrands for 2014, provided by Superbrands UK, showing LEGO as number 8 of the most famous trademarks and brands in the world.
The Complainant has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets.
The Complainant also maintains an extensive web site under the domain name <lego.com> (see Annex 10 of the Complaint).
The Respondent was informed that the disputed domain name was, according to the Complainant, infringing the trademark rights of the Complainant and was requested to transfer the disputed domain name to the Complainant on April 1, 2014 and further reminded on April 8 and 23, 2014 in its cease and desease communications (Annex 12 of the Complaint).
The disputed domain name <legomixels.com> was created on March 12, 2014; prior to the filing of the Complaint, the disputed domain name redirected to a website which has sponsored links on it, of which several lead to the Complainant’s competitors (Annex 11 of the Complaint).
The “Mixels” are three different comical, mischievous creatures. The Complainant has the Mixels as figures, as “LEGO Mixels Game”, a “LEGO Mixels App” and “LEGO Mixels films” (see Annex 10.1 of the Complaint).
5. Parties’ Contentions
The Complainant has rights in its registered trademark LEGO.
The Complainant is using its trademarks and is entitled to prevent any third parties from infringing its trademark’s rights.
The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s famous mark LEGO because (1) the disputed domain name incorporates the trademark in its entirety and (2) the addition of the term “mixels.com” does not sufficiently distinguish the disputed domain name from that trademark. The Complainant points to the fact that its registration and use of LEGO trademarks predates the Respondent’s registration and use of the disputed domain name.
The Complainant asserts that the word “Lego”, is confusingly similar to the registered trademark LEGO, which has been registered by the Complainant as trademarks and domain names in numerous countries all over the world including in the Australia. (Annex 6 and 8 of the Complaint).
The addition of the Top-Level Domain (TLD) suffix “.com” does not have any impact on the overall impression of the dominant portion of the domain name and is therefore irrelevant to determine the confusing similarity between the trademark and the domain name.
The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name because (1) the Complainant has exclusive rights in the LEGO trademark and has granted the Respondent neither a license / permission / authorization nor any other consent to such use of the trademarks in the disputed domain name and (2) the Respondent obviously uses the disputed domain name for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s LEGO trademarks and (3) the disputed domain name clearly alludes to the Complainant.
Finally, the Complainant suggests that the disputed domain name was registered in bad faith since, at the time of registration on March 12, 2014, the Respondent had knowledge of the Complainant’s LEGO trademarks.
The Complainant argues that the disputed domain name is being used in bad faith since when viewing the Respondent’s website one realizes that the Respondent has intentionally attempted (for commercial gain) to attract Internet users by creating a likelihood of confusion with the Complainant’s well-known trademarks as to the source, affiliation and endorsement of the Respondent’s website or of the products and services posted thereon or linked thereto.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
The Respondent’s default in the case at hand does not automatically result in a decision in favor of the Complainant. However, paragraph 5(e) of the Rules provides that if a respondent does not submit a response, in the absence of special circumstances, the panel is to decide the dispute solely based upon the complaint.
A. Identical or Confusingly Similar
Numerous UDRP panels have established that the addition of words, letters or numbers to a mark used in a domain name does not alter the fact that the domain name is confusingly similar to the mark.
In the case at hand, the additional language added namely “mixels” and the TLD “.com” does not prevent a finding of confusing similarity.
The disputed domain name incorporates the whole of the LEGO mark of the Complainant and adds “mixels” and the TLD “.com”.
The Panel concludes that the disputed domain name is confusingly similar to the trademark LEGO in which the Complainant has shown to have rights.
Therefore, the first element under the Policy as set forth in paragraph 4(a)(i) in the case at hand is fulfilled.
B. Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the disputed domain name.
“Lego” is not a dictionary word and is used by the Complainant in connection with its brand.
The Complainant or its affiliate companies have not authorized the Respondent to use its marks LEGO into any domain name.
The Complainant or its affiliate companies have not granted the Respondent with a licence to use the marks LEGO in any manner.
The Panel is further convinced that on the basis of the Complainant’s undisputed contentions, the Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has the Respondent been commonly known by the disputed domain name.
Accordingly, the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to the Respondent to come forward with appropriate allegation or evidence demonstrating the contrary (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “WIPO Overview 2.0”, paragraph 2.1). In the case at hand, the Respondent did not reply to the Complainant’s allegations as they were included in the Complaint duly notified to the Respondent by the Center on May 28, 2014.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and thus the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by the Respondent in bad faith.
The Panels takes the view that the re-direction of the disputed domain name, which is confusingly similar to the Complainant’s trademark LEGO, to a par-per-click page is a clear indication that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website, by creating a likelihood of confusion with the Complainant’s LEGO trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or a product thereon. Such circumstances, are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Complainant first tried to contact the Respondent on April 1, 2014 through a cease
and desist letter (Annex 12 to the Complaint).
The Complainant advised the Respondent that the unauthorized use of the LEGO trademark within the disputed domain name violated the Complainant’s rights in said trademark.
The Complainant requested a voluntary transfer of the disputed domain name and offered compensation for the expenses of registration and transfer fees (not exceeding out of pocket expenses).
Two additional reminders were sent on April 8, 2014 and April 23, 2014.
In connection with this finding, the Respondent formally failed to respond to the Complaint.
Therefore, the Panel finds that also the third element under the Policy as set forth in paragraph 4(a)(iii) is fulfilled and that, accordingly the Complainant has satisfied all of the three requirements of paragraph 4(a) of the Policy.
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 <legomixels.com> be transferred to the Complainant.
Date: July 19, 2014