WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. William Stehlin

Case No. D2010-2042

1. The Parties

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

The Respondent is William Stehlin of Rooseveltown, New York, United States of America.

2. The Domain Name and Registrar

The disputed domain name <legocitys.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2010. On November 25, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On November 26, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

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 December 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2011.

The Center appointed Marilena Comanescu as the sole panelist in this matter on January 7, 2011. 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.

The language of the proceeding is English.

4. Factual Background

The Complainant is LEGO Juris A/S a worldwide known toymaker. LEGO branded products are marketed in more than 130 countries for decades, including in the United States of America.

The Complainant owns many trademark registrations, including the trademark no. 1018875 registered in the United States of America with a filing date of September 17, 1974 for the word mark LEGO in class 28.

The LEGO trademark is well-known worldwide, its status being confirmed by official top 500 Superbrands United Kingdom of Great Britain and Northern Ireland for 2009/10, as well as in previous UDRP procedures involving the Complainant.

The Complainant also owns more than 1,000 domain names incorporating the mark LEGO, the main one being <lego.com>.

The disputed domain name <legocitys.com> was registered on September 4, 2010.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are given in the present case, as follows:

(i) The domain name <legocitys.com> is confusingly similar to its trademark LEGO:

The dominant part of the disputed domain name <legocitys.com> is identical to Complainant’s mark LEGO; the addition of the generic term “citys” and the top-level domain “.com” having no impact on the overall impression of the dominant part of the name.

Anyone who sees the disputed domain name is bound to mistake it for a name related to the Complainant believing it is a sort of connection between the Respondent and the Complainant thus creating damages for the Complainant’s mark.

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name:

From the Complainant’s searches, the Respondent does not appear to hold any registered marks or trade names corresponding to the disputed domain name. Further, there is no evidence of use of the disputed domain name by the Respondent that would give him any rights or legitimate interests in this name.

The Complainant never granted the Respondent any authorization or license to use the trademark LEGO. The Complainant never had a business relationship with the Respondent, nor there is a disclaimer on the corresponding website informing on the non-existence of a relationship between the two parties.

Given the fame of the trademark, it is highly unlikely that the Respondent was not aware of the Complainant’s rights in this mark, being rather obvious that the fame of the mark has motivated the Respondent to register the disputed domain name <legocitys.com>.

At the time of filing the Complaint the Respondent was using the disputed domain name in connection to a website displaying sponsored links, misleading the Internet users and thus tarnishing the trademark LEGO.

(iii) The disputed domain name was registered and is being used in bad faith:

The Complainant’s trademark LEGO has the status of a well-known and reputed trademark with a substantial and widespread reputation through the world.

No response was received to the Complainant’s cease and desist letter and reminders sent to the Respondent prior to commencing the present procedures.

At the time of filing the Complaint, the disputed domain name was connected to a website containing sponsored links; therefore, the Respondent was using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to “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.”

In accordance with paragraph 4(a) of the Policy, the Complainant must prove to the Panel that the following three circumstances are cumulatively met in order to obtain the transfer of the disputed domain name:

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

(ii) the Respondent does not hold rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used by the Respondent in bad faith.

Consequently, the Panel shall further analyze the eventual concurrence of the above-mentioned circumstances in the present case.

A. Identical or Confusingly Similar

There are two requirements that a complainant must establish under this element, namely: that it has rights in a trade or service mark, and that the disputed domain name is identical or confusingly similar to its mark.

The Complainant has rights in the LEGO trademark, holding registrations worldwide, including in the United States of America where the Respondent is apparently located.

The dominant part of the disputed domain name represents the Complainant’s famous trademark LEGO. In addition to this, the disputed domain name contains the generic word “citys” which is a version deriving from the word “cities” misspelled or “city’s” without apostrophe but both being without legal relevance for the present procedure. See also Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330.

Considering the brand awareness of the LEGO products worldwide, an Internet user would most probably assume a connection with the Complainant when seeking information on a website with the domain name <legocitys.com>.

A wide variety of UDRP panels have ordered the transfer of domain names incorporating trademarks and generic words as the mere addition of a generic term to a famous mark does not sufficiently distinguish the domain name from the complainant’s trademark in the mind of the consumers. See LEGO Juris A/S v. Kang Zheng, WIPO Case No. D2010-1924; Compagnie Générale des Etablissements Michelin-Michelin & Cie. v. Tgifactory, WIPO Case No. D2000-1414 and cases cited therein.

The “.com” generic Top Level Domain is irrelevant in the present analysis.

For all the above, the Panel finds that the disputed domain name <legocitys.com> is confusingly similar to the Complainant’s LEGO trademark.

Accordingly, the Panel finds that the first element of the Policy is established, and the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainant has provided a prima facie case under this element of the Policy showing that it has had no relationship with the Respondent and has not granted the Respondent any right to register and use its trademark. Therefore, the burden of proof on this element shifts to the Respondent to demonstrate its rights or legitimate interests in the disputed domain name.

The Respondent failed to submit any response in the present procedure and did not respond to the Complainant’s cease and desist letter and reminders, which were sent prior to commencing the present procedure. The silence of the Respondent may support a finding, based on other relevant circumstances, that it has no rights or legitimate interests in respect of the disputed domain name. See also Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011.

Further, there is no evidence before the Panel to suggest that the Respondent has made a bona fide use of the disputed domain name, or has been known by this domain name, or is making any legitimate noncommercial or fair use of the domain name. To the contrary, the disputed domain name containing the Complainant’s well-known trademark in the toy industry is connected to a website offering sponsored links, most of these related to toy products.

For all these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Complainant’s trademark LEGO enjoys the status of a worldwide well-known trademark in relation to construction toys and it has been used for decades, including in the United States. The disputed domain name <legocitys.com> was registered in September 2010 and contains the Complainant’s trademark in its entirety as a suffix and dominant part.

For these reasons, the Panel finds that the Respondent must have had actual knowledge of the Complainant’s trademark when the disputed domain name was registered.

Further, the Respondent is using the Complainant’s trademark for a web portal providing sponsored links, the classic method to generate financial gain via the pay-per-click or click-through device, whereby the operators of other websites pay a commission to the Respondent for traffic redirected to them.

Paragraph 4(b)(iv) of the Policy sets out non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including circumstances where, by using the disputed 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.

Given the awareness of the LEGO brand worldwide, indeed, an Internet user accessing the website corresponding to the disputed domain name <legocitys.com> and on which webpage are listed several links providing various goods including toys may be confused and believe that it is a website held and controlled by the Complainant, or somehow affiliated or related to it.

The Respondent chose not to participate in these proceedings and has not contested any of the allegations made by the Complainant, and did not provide any evidence whatsoever of any legitimate noncommercial, or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the Complainant’s trademark and therefore reinforces this approach. See also Kabushiki Kaisha Toshiba v. Shan Computers, WIPO Case No. D2000-0325; Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.

For all these reasons, the Panel finds that the third element of the Policy is established, and accordingly that the disputed domain name was registered and is being used in bad faith, pursuant to the Policy, paragraph 4(a)(iii).

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <legocitys.com> be transferred to the Complainant.

Marilena Comanescu
Sole Panelist
Dated: January 19, 2011