WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Domain Admin, Whois Privacy Corp. / Maddisyn Fernandes, Fernandes Privacy Holdings
Case No. D2017-0053
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, Whois Privacy Corp. of Nassau, New Providence, the Bahamas / Maddisyn Fernandes, Fernandes Privacy Holdings of La Paz, the Plurinational State of Bolivia.
2. The Domain Name and Registrar
The disputed domain name <legolanddicoverycenter.com> is registered with Internet Domain Service BS Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2017. On January 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 16, 2017, 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 January 17, 2017 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 amended Complaint on January 19, 2017.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 9, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2017.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on February 23, 2017. 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 that owns the famous brands LEGO and LEGOLAND, respectively of construction toys and theme parks.
The Complainant has subsidiaries and branches throughout the world. LEGO products are sold in more than 130 countries, including in the United States of America (“United States”). LEGOLAND theme parks have over 1.4 million visitors per year.
The Complainant owns several LEGO and LEGOLAND trademark registrations in multiple jurisdictions, including in the European Union, registered in 1998. The Complainant is also the owner of numerous domain names containing the terms “lego” and “legoland”.
The Respondent registered the disputed domain name <legolanddicoverycenter.com> on September 12, 2016.
The Panel accessed the disputed domain name on March 6, 2017, which resolved to a pay-per-click parking page advertising scheme, including links such as “Legoland Discovery Center” and “Lego Land tickets”.
5. Parties’ Contentions
The Complainant makes the following contentions:
- The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The dominant part of the disputed domain name comprises the term LEGO, as well as the term LEGOLAND, which are respectively identical, to the brands LEGO and LEGOLAND, registered by the Complainant as trademarks and domain names in numerous countries all over the world. The fame of the trademarks has been confirmed in numerous previous UDRP decisions. The disputed domain name also comprises a misspelled version of the term “discovery center”. In Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488, it was stated that it is a long-established precedent that confusing similarity is generally recognized when well-known trademarks are paired up with different kinds of generic prefixes and suffixes. In this case, the additional terms actually serve to enhance the likelihood of confusion as the Complainant is the owner of the domain name <legolanddiscoverycenter.com>, registered since 2007. Furthermore, with regard to the fact that the LEGOLAND trademark is mainly used to identify and promote the famous LEGOLAND parks owned by Merlin Entertainment, an entity of which Complainant owns over 20%, the use of said term, albeit misspelled, further implies a connection to the Complainant. 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 disputed domain name and is therefore irrelevant to determine the confusing similarity between the trademark and the disputed domain name. Anyone who sees the disputed domain name is bound to mistake it for a name related to the Complainant. The likelihood of confusion includes an obvious association with the trademarks of the Complainant. With reference to the reputation of the trademarks LEGOLAND and LEGO there is a considerable risk that the public will perceive the disputed domain name either as a domain name owned by the Complainant, or that there is some kind of commercial relationship with the Complainant. By using the trademarks as a dominant part of the disputed domain name, the Respondent exploits the goodwill and the image of the Complainant’s trademarks, which may result in dilution and other damage for the Complainant’s trademarks.
- The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. Neither has the Complainant found anything, including the WhoIs details, that would suggest that the Respondent has been using LEGO or LEGOLAND in any other way that would give them any legitimate interests in the name. Consequently, the Respondent may not claim any rights established by common usage. It is also clear that no license or authorization of any other kind has been given by the Complainant to the Respondent, to use the trademark LEGO or LEGOLAND. Furthermore, the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. In addition, there is no disclaimer on the website to explain the lack of relationship to the Complainant. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Instead, the Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic and income through a website that is commercial through sponsored links. Consequently, the disputed domain name is being used for a commercial purpose. As no evidence has been found that the Respondent is using the name LEGO as a company name or has any other legal rights in the name, it is quite clear that the Respondent is simply trying to sponge off the Complainant’s world famous trademark.
- The disputed domain name was registered and is being used in bad faith. The trademarks LEGO and LEGOLAND, both belonging to the Complainant, have the status of well-known and reputed trademarks with a substantial and widespread reputation throughout the whole European Union and throughout the world. The awareness of the trademark LEGO is considered, in the whole European Union in general, to be significant and substantial. The number of third-party domain name registrations comprising the trademark LEGO in combination with other words has skyrocketed the last years. The considerable value and goodwill of the mark LEGO is, most likely, a large contribution to this and also what made the Respondent register the disputed domain name. The Respondent registered the disputed domain name on September 12, 2016. This date is subsequent to the date of registration by the Complainant of the trademarks LEGO and LEGOLAND by decades. It is obvious that it is the fame of the trademarks that has motivated the Respondent to register the disputed domain name. That is, the Respondent cannot claim to have been using the trademarks LEGOLAND or LEGO without being aware of the Complainant’s rights to it. Moreover, several of the links displayed on the disputed domain name’s website directly reference Complainant and its LEGOLAND trademark. Whether or not the Respondent has influenced what links should be included on the website is irrelevant for the finding of bad faith in this case. It is also without relevance whether or not the Respondent itself is actually getting revenue from the website. The Complainant first tried to contact the Respondent on September 29, 2016, through a cease-and-desist letter sent by email. The Complainant advised the Respondent of the unauthorized use of the LEGO and LEGOLAND trademarks within the disputed domain name and requested a voluntary transfer of the same. The Complainant also offered compensation for the expenses of registration and transfer fees (not exceeding out-of-pocket expenses). Additional letters were sent but no response was ever received. Since the efforts of trying to solve the matter amicably were unsuccessful, the Complainant chose to file a UDRP complaint. Consequently, the Respondent is using the disputed domain name to intentionally attempt to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:
(i) The disputed 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 disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel has no doubt that “lego” and “legoland” are terms directly connected with the Complainant’s brands used to identify construction toys and theme parks, respectively.
Annex 6 to the Complaint shows registrations of LEGO and LEGOLAND trademarks registered by the Complainant, including in the European Union, since 1998.
The trademarks LEGO and LEGOLAND are wholly encompassed within the disputed domain name.
The disputed domain name differs from the Complainant’s trademark basically by the addition of the element “dicoverycenter”, as well as of the gTLD “.com”.
Previous UDRP decisions have demonstrated that descriptive additions (such as “discovery center” or its misspelled variation “dicovery center”) do not alter the underlying meaning of a domain name, and do not avoid confusing similarity. This has been held in many UDRP cases (see, e.g., Inter-IKEA Systems B. V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc., WIPO Case No. D2000-0927).
It is also well established that the addition of a gTLD such as “.com” is irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.
As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; 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 at issue.
Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed nor authorized the use of its trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain name.
The disputed domain name is currently linked to a website containing a pay-per-click scheme including links that reproduce the LEGO and LEGOLAND trademarks.
Although the Respondent appears to have no authority to do so, the Respondent is making use of the confusing similarity with the LEGO trademark of the Complainant, for commercial gain, which cannot in the circumstances of the present case be considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a 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 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 the respondent 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 online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
When the disputed domain name was registered by the Respondent (in 2016) the trademarks LEGO and LEGOLAND were already well known and directly connected to the Complainant’s activities.
The disputed domain name encompasses the trademarks LEGO and LEGOLAND, together with a misspelled version of a descriptive phrase related to the Complainant’s products and services (“dicoverycenter”). According to Wikipedia, Legoland Discovery Centers are “smaller versions of the Legoland theme parks located around the world”, “featuring models and attractions inspired by the Lego building toys”.1
Also, the disputed domain name is currently linked to a website that contains reproductions of the Complainant’s trademarks under a pay-per-click scheme.
The Panel concludes that it is very unlikely that the Respondent was unaware of the Complainant’s trademark or that the adoption of the expression “legolanddicoverycenter” was a mere coincidence.
Furthermore, the pay-per-click parking page advertises products and services in direct competition with the Complainant’s official sales points. In doing so, the Respondent:
(i) creates a likelihood of confusion with the Complainant’s trademark;
(ii) potentially obtains revenue from this practice; and
(iii) deprives the Complainant from selling its products to prospective clients who are clearly looking for the Complainant.
Former UDRP decisions have considered this type of use of a domain name enough to demonstrate bad faith. See Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474; see also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
Finally, the Panel considers the absence of a reply from the Respondent to be further evidence of bad faith on the part of the Respondent in the present case.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element 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 <legolanddicoverycenter.com> be transferred to the Complainant.
Date: March 9, 2017
1 (“https://en.wikipedia.org/wiki/Legoland_Discovery_Centre”, accessed on March 9, 2017)