WIPO Arbitration and Mediation Center


LEGO Juris A/S v. Kim S J

Case No. D2014-0884

1. The Parties

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

The Respondent is Kim S J of Seoul, Republic of Korea.

2. The Domain Names and Registrar

The disputed domain names <lego-good.com> and <lego-joy.com> (the “Domain Names”) are registered with Gabia, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On May 28, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing contact details.

On June 4, 2014, the Center notified the Parties in both English and Korean that the language of the Registration Agreement in this case was Korean. On June 5, 2014, the Complainant requested for English to be the language of the proceeding, to which the Respondent has not replied.

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 June 12, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 3, 2014.

The Center appointed Thomas P. Pinansky as the sole panelist in this matter on July 10, 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, based in Denmark, 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 has subsidiaries and branches throughout the world, and its licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights, in Korea, where the Respondent is domiciled, and elsewhere.

LEGO Korea was established as early as 1984.

The Complainant is also the owner of more than 1,000 domain names containing the term “lego”.

The trademark LEGO is among the best-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials.

5. Parties’ Contentions

A. Complainant

The dominant part of the Domain Names comprise the word “lego”, which is identical to the Complainant’s registered trademark LEGO.

The fame of the LEGO trademark has been confirmed in numerous UDRP decisions.

The addition of the generic Top-Level Domain (gTLD) “.com” does not have any impact on the overall impression of the dominant portion of the Domain Names and is therefore irrelevant to determine the confusing similarity or identity between the trademark and the Domain Names. Furthermore, the suffixes “-joy” and “-good” do not detract from overall impression created.

By using the LEGO trademark as a dominant part of the Domain Names, the Respondent exploits the goodwill and the image of the trademark, which may result in dilution and other damage for the Complainant’s trademark.

According to the Complainant, no license or authorization of any other kind has been given by the Complainant to the Respondent. The Complainant has also not found anything that would suggest that the Respondent has been using the name “Lego” in any other way that would give it any legitimate rights in the name. Consequently, the Respondent may not claim any rights established by common usage.

It is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in the name “Lego” at the time of the registration.

The Respondent is today not using the Domain Names in connection with a bona fide offering of goods or services, but rather to generate traffic and income through an online shop of products produced by the Complainant and other unrelated products and to misleadingly divert consumers for its own commercial gain.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove each and all of the following three elements in order to prevail in these proceedings:

(i) the Domain Names are identical or confusingly similar to the Complainant’s trademark or service mark;

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and

(iii) the Domain Names have been registered and are being used in bad faith.

The fact that the Respondent has not formally provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint.” Under paragraph 14(a) of the Rules, in the event of such a “default” the Panel is still required “to proceed to a decision on the complaint,” and under paragraph 14(b), the Panel shall “draw such inferences therefrom as it considers appropriate.” Consequently, the Panel must proceed with an assessment of the Complaint on its merits.

For the reasons stated below, the Domain Names <lego-good.com> and <lego-joy.com> should be transferred to the Complainant.

A. Identical or Confusingly Similar

The Complainant has registered the LEGO mark in various countries (see Annex 8 of the Complaint) in connection with numerous classes of goods and services. The Domain Names wholly incorporate the Complainant’s distinctive trademark and a descriptive term that does not in this case sufficiently differentiate the trademark from the Domain Names and as such are confusingly similar (see paragraph 4(a) of the Policy).

The Panel finds that the suffixes “-joy” and “-good” do not sufficiently distinguish the Domain Names from the Complainant’s LEGO trademark. Addition of a generic term to the Domain Names has little, if any, effect on a determination of confusing similarity or identity between the Domain Names and the mark. See Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; mere addition of a generic or descriptive term does not exclude the likelihood of confusion. See PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189. Numerous UDRP decisions have recognized that adding a generic word is insufficient to give any distinctiveness to the domain name in dispute. See PepsiCo, Inc. v. Kieran McGarry, WIPO Case No. D2005-0629. Additionally, in LEGO Juris A/S v. Matthew Griffith, Merlix LLC, Domain Administrator, WIPO Case No. D2012-0443 involving the domain name <legobuilder.com>, the panel found that the term “builder” should be disregarded for the purpose of this analysis.

Therefore, the Panel finds that the Domain Names are confusingly similar to the Complainant’s trademark pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the Domain Names. In connection with the burden of proof, several UDRP decisions have held that “once a complainant establishes a prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production of this factor shifts to the Respondent to rebut the showing” (see, among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management - IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).

The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its marks; the Panel notes that there is nothing in the record to suggest that the Respondent has been commonly known by the Domain Names; the Panel further notes that the Respondent has not, and has never been, commonly known by the Domain Names. The Panel’s view is that these facts must be taken as proven provided that they have not been denied by the Respondent.

The Respondent has not submitted a proper response. Therefore, he has failed to invoke any circumstance that could have demonstrated any rights or legitimate interests in respect of the Domain Names under paragraph 4(c) of the Policy.

Accordingly the Panel holds that the Respondent has no rights or legitimate interests in respect of the Domain Names pursuant to the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Both under past UDRP decisions (see, for instance, Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397; and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806) and under the Policy, a well-established principle is that when someone registers a domain name, he or she represents and warrants to the registrar that, to his or her knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Complainant’s trademarks are famous worldwide, it is very likely that the Respondent, at the time of registration of the Domain Names or thereafter, was aware of the Complainant and its trademarks.

Under the UDRP, bad faith can be presumed based on the fame of the Complainant’s marks, such that the Respondent was aware or should have been aware of the Complainant’s well-known marks and claims of rights thereto. Furthermore, any trademark check of the records of the patent and trademark offices in various jurisdictions would have made the Complainant’s registration known to the Respondent.

In addition, according to paragraph 4(b)(iv) of the Policy, the following circumstance shall be evidence of bad faith registration and use: using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the registrant’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 the registrant’s website or location or a product or service on the registrant’s website or location.

The Complainant provided evidence showing that the Respondent’s website merely contained a visual interface apparently copied from the Complainant’s main website, and items that resemble products sold by the Complainant. In the Panel’s opinion, this constitutes an improper use of the Complainant’s mark by the Respondent who appears to have registered the confusingly similar Domain Names with the intention of taking advantage of the well-known status of the goodwill and fame established by the Complainant in the trademark for commercial gain. See Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774. The Panel finds that such use of the Domain Names constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

The conduct described above falls squarely within paragraph 4(b)(iv) of the Policy and accordingly, the Panel concludes on the record before it that the Respondent registered and is using the Domain Names in bad faith pursuant to the Policy, paragraph 4(a)(iii).

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 Domain Names, <lego-good.com> and <lego-joy.com>, be transferred to the Complainant.

Thomas P. Pinansky
Sole Panelist
Date: July 14, 2014