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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Nameinvest Inc. / E.B

Case No. D2014-0803

1. The Parties

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

Respondent is Nameinvest Inc. / E.B, of Belize City, Belize.

2. The Domain Name and Registrar

The disputed domain name <lego-wear.com> is registered with eNom (the "Registrar").

3. Procedural History

The Complaint was filed on May 15, 2014, -=with the WIPO Arbitration and Mediation Center (the "Center"). On May 15, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the disputed domain name.

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 Respondent of the Complaint, and the proceedings commenced on May 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 11, 2014. Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 12, 2014.

The Center appointed Steven L. Snyder as the sole panelist in this matter on June 18, 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 LEGO mark is an abbreviation of two Danish words, "Leg" and "Godt," which mean "play well." Since 1932, when the company was founded, it has been playing to win in the toy industry and doing quite well. In 1939, the company's factory employed 10 workers. In 2014, the company was selling products in more than 130 countries, operating a headquarters in Denmark and opening offices in the United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), the United States of America, Singapore and China. That same year, the "LEGO Movie" premiered in numerous venues and the company announced its revenue had quadrupled over the last decade.

Although the popular LEGO bricks remain an important part of the company's product line, Complainant has diversified its offerings. It also operates LEGOLAND amusement parks and offers LEGO-brand computer hardware and software, books, videos, home accessories, glasses, watches and apparel.

Throughout Europe, Complainant offers a line of children's clothing under LEGO Wear. The clothing is available in 1,000 European stores and is marketed through Complainant's website at "www.legowear.com".

The <legowear.com> domain name is a small part of the Complainant's vast inventory. It currently has registered 2,400 domain names, including many variations of <legowear.com> such as <legowear.eu>, <lego-wear.eu>, <lego-wear.fr>, <lego-wear.fr>, <legowear.net> and <lego-wear.net>. Complainant's ambitious strategy is to obtain ownership of any domain name containing the LEGO mark.

In addition to collecting domain names with the same fervor as children collect LEGO bricks, Complainant has acquired numerous trademark registrations around the world. The company even registered its LEGO mark in the small Central American country of Belize, population 340,844 (July 2014 est.). The mark was first registered there in October 1990 in International Class 28 (games). SeeBelize reg. no.6332. This registration was renewed in July 2005 and is valid until 2015.

Belizeans have long had the opportunity to purchase LEGO products. They recently had the chance to view the "LEGO Movie". The film opened in Belize in February 2014. The significance of Complainant's activities in Belize is that Respondent claims to be located in that country.

On April 2, 2014, Respondent registered the disputed domain name <lego-wear.com> and linked it to a website that is a parking lot for other links. Many of those links take visitors to clothing vendors who operate in competition with Complainant's LEGO Wear products.

Complainant quickly reacted. On April 10, 2014, Complainant sent a cease-and-desist letter to Respondent and outlined its arguments why <lego-wear.com> infringed Complainant's LEGO mark. To amicably resolve the dispute, Complainant offered to reimburse Respondent for the disputed domain name's registration fee as well as any "out of pocket expenses the registrar may charge for the transfer" of the disputed domain name to Complainant.

That letter initiated an exchange of correspondence between the two parties. Respondent questioned Complainant's rights in LEGO Wear, admitted it had cost less than USD 9 to register the disputed domain name, and proclaimed its intention "to put great effort into making a case against your claim of LEGO being confusing similar to the disputed domain name <lego-wear.com>". Respondent then made a counterproposal: It would transfer the disputed domain name to Complainant for one-half the amount Complainant would spend on filing a UDRP proceeding: "Since I do not have a financial risk with the UDRP case … I would suggest we just share the 'opportunity profit' of not having to file a UDRP case … of 1,500 USD/2 = 750 USD as a remuneration of my registration and DNS service costs."

The demand for USD 750 led to a breakdown in the negotiations and the filing of this UDRP proceeding.

5. Parties' Contentions

A. Complainant

Complainant argues that it has long-standing rights in the LEGO mark in Belize and many other countries, that the "dominant part of the domain name LEGO-wear.com … comprises the term LEGO," and that the disputed domain name <lego-wear.com> is confusingly similar to its famous mark. The confusion is not abated by the addition of the word "wear" to LEGO, it is only heightened because Complainant sells LEGO Wear products in more than 1,000 European stores and operates the website located at "www.legowear.com".

According to Complainant, Respondent was well aware of the famous LEGO mark when it registered the disputed domain name. Despite not having any "license or authorization of any other kind" from Complainant, Respondent incorporated the mark into a confusingly similar disputed domain name. Respondent then used disputed domain name to lure Internet visitors to its website, where she can earn money when they click on the featured links. This use of Complainant's LEGO mark does not vest any legitimate rights in Complainant: "Respondent is today not using the Domain Name in connection with a bona fide offering of goods or services. Instead, Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic and income through a website with sponsored links."

Using similar facts and logic, Complainant argues that Respondent has registered and used the disputed domain name in bad faith. An additional fact in support of this argument is Respondent's offer to sell the disputed domain name <lego-wear.com> to Complainant for USD 750 when it only cost Respondent USD 8.98 to register the disputed domain name.

For these reasons, Complainant argues it is entitled to an order transferring the disputed domain name to its ownership.

B. Respondent

In a correspondence with Complainant, Respondent stated that it would "put great effort into making a case against your claim of LEGO being confusing similar to the disputed domain name <lego-wear.com>". In fact, Respondent did not bother to expend any effort and failed to reply to the Complaint.

6. Discussion and Findings

The UDRP provides a method for a trademark or service mark owner to obtain the transfer or cancellation of a domain name. To achieve this result, the complainant must prove three facts. First, that the "domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights." UDRP paragraph 4(a)(i). Second, that the registrant has "no rights or legitimate interests in respect of the domain name." Id. paragraph 4(a)(ii). Third, that the disputed "domain name has been registered and is being used in bad faith." Id. paragraph 4(a)(iii).

Complainant has proven the three elements.

A. Identical or Confusingly Similar

Through many trademark registrations and extensive use, Complainant has obtained rights in the LEGO mark. The disputed domain name <lego-wear.com> is confusingly similar to Complainant's LEGO mark. The word "wear" is a generic or descriptive term and its addition to the distinctive LEGO trademark does not prevent a finding of confusing similarity. See, e.g., LEGO Juris A/S v. PrivacyProtect.org / Kim Bum LLC, WIPO Case No. D2012-2462 ("the addition of descriptive terms to a trademark is generally not a distinguishing feature").

In this case, the addition of "wear" to LEGO only causes further confusion as to the source, sponsorship, affiliation, or endorsement of Respondent's disputed domain name and website. This is the case because Complainant markets its LEGO Wear children's clothing, sells that clothing in more than 1,000 European stores, and promotes the LEGO Wear products on a website accessible via the disputed domain name <legowear.com>.

B. Rights or Legitimate Interests

Complainant may never achieve its ambitious goal of owning every single domain name that incorporates the LEGO mark. This is because the UDRP recognizes that there are occasions when a respondent has a legitimate interest in the unauthorized use of a complainant's trademark in a domain name. SeeUDRP paragraph 4(c). But this is not one of those occasions.

Long after the LEGO mark had become famous in Belize and much of the remaining world, long after Complainant began marketing its LEGO Wear clothing on the Internet and in brick-and-mortar venues, and long after Complainant registered the disputed domain name <legowear.com> and many variations thereof, Respondent decided to register the disputed domain name <lego-wear.com> and to guide Internet visitors to a website chock full of links to Complainant's competitors. This was not an innocent mistake but rather a calculated move to profit off Complainant's hard work in creating attractive LEGO products, in marketing those products, and in protecting the famous mark.

In light of the above, the Panel finds that Respondent's use of the disputed domain name does not create any rights or legitimate interests. See Compagnie Générale des Etablissements Michelin v. PrivacyProtect.org and Kim Bum LLC, WIPO Case No. D2013-0181 ("Neither of the Respondents has a right or legitimate interest in luring consumers to a website under false pretenses and then profiting from their presence at the website.").

C. Registered and Used in Bad Faith

The words "lego" and "wear" do not tend to naturally combine, at least not in the minds of old-time LEGO consumers who picture LEGOs as plastic bricks which would be rather uncomfortable when worn as pants and other garments. In the Panel's assessment, Respondent undoubtedly thought of combining LEGO and Wear for one reason: It wished to divert consumers who were looking for Complainant's LEGO Wear children's clothing.

Based on the available record, and on the balance of probabilities, the Panel finds that Respondent's registration and use of the disputed domain name has been in bad faith. See Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 ("Respondent's use of the domain names to promote the sales of products in competition with PFIZER's products constitutes bad faith.") UDRPparagraph 4(b)(iv) (stating that bad faith can be shown by using a confusingly similar domain name to attract Internet users to a commercial 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 <lego-wear.com> be transferred to Complainant.

Steven L. Snyder
Sole Panelist
Date: July 7, 2014

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