WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. PrivacyProtect.org Domain Admin / Kim Bum

Case No. D2013-0901

1. The Parties

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

The Respondents are PrivacyProtect.org Domain Admin of Queensland, Australia / Kim Bum of Seoul, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <legonasa.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 22, 2013. On May 23, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 30, 2013, 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 May 30, 2013, 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 30, 2013.

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 31, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2013.

The Center appointed Keita Sato as the sole panelist in this matter on June 28, 2013. 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.

On August 2, 2013, the Panel issued Administrative Panel Procedural Order No. 1. On August 23, 2013, the Complainant submitted an additional submission. On September 10, 2013, the Panel issued Administrative Panel Procedural Order No. 2.

4. Factual Background

The Complainant, LEGO Juris A/S, is a limited company incorporated in Billund, Denmark. The Complainant has registered trademarks in many countries, such as LEGO word mark registered for class 28 in Denmark on May 1, 1954 (registration number 604-1954), in the Republic of Korea on August 21, 1980 (registration number 66,677), in Australia on January 16, 1960 (registration number B129.258), and so on. The trademark registrations cover both locations of the Respondent.

The Respondent Kim Bum, located in Seoul, Republic of Korea, according to the WhoIs record at the concerned Registrar, and PrivacyProtect.org Domain Admin, located in Queensland, Australia.

The disputed domain name was registered on March 7, 2013.

5. Parties’ Contentions

A. Complainant

The Complainant states that it has registered LEGO trademark in many countries and over 2,400 domain names containing the term “lego” and it follows the strict policy that all domain names containing the word “lego” should be owned by the Complainant. Also, it alleges that LEGO is among the best-known trademarks in the world and that it sells products in more than 130 countries and the LEGO brand is ranked as number 8^th by Superbrands’ for 2009/10.

The Complainant also argues that the disputed domain name is confusingly similar to the Complainant’s registered trademark LEGO, since the addition of the word “nasa” does not detract from the overall impression and the disputed domain name must therefore be considered to be confusingly similar with the Complainant’s trademark. The Complainant also argues that no license or authorization to use the trademark LEGO has been given to the Respondent and that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Therefore, the Complainant insists that the Respondent has no rights and legitimate interests. Further, the Complainant contends that the Respondent registered and used the disputed domain name in bad faith, since it is highly unlikely that the Respondent was not aware of the rights the Complainant has in the LEGO trademark and the value of said trademark, at the point of the registration. By using the disputed domain name the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain but is misleadingly diverting consumers for its own commercial gain.

For these reasons, the Complainant requests the transfer of the disputed domain name to the Complainant.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(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 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 Complainant has registered trademark rights in LEGO as explained in Section 4 above. The second-level portion of the disputed domain name “legonasa” and the trademark LEGO registered by the Complainant are not identical. Then the Panel analyzes whether the disputed domain name is confusingly similar to the Complainant’s trademark. A prior UDRP decision states: “the domain names <legobrick.net> and <legoset.net> incorporate the LEGO mark in its entirety. Previous WIPO UDRP panels have held that when a domain name wholly incorporates a complainant’s registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy […] In the instant case, the combination of the suffixes “brick” and “set” with the word “lego” does not affect the overall impression of the dominant part of the disputed domain names because the resulting word has a significant meaning: “legobrick” and “legoset” are words related to the toy building blocks identified by the LEGO trademark. Therefore, in these combinations the word “lego” stands out and may lead the public to believe that there is an association with the well-known LEGO trademark”, (See LEGO Juris A/S v. Trent Clark/Darry Lowe, WIPO Case No. D2010-0482). In the Panel’s opinion, this logic could also be applied to the current case. In the current case, the dominant part of the disputed domain name is “lego”, so the disputed domain name is confusingly similar to the Complainant trademark.

The Panel thus finds that the first requisite element of the Policy is made out.

B. Rights or Legitimate Interests

The Complainant states that “no license or authorization of any other kinds has been given by the Complainant to the Respondent to use the trademark”. Under these circumstances, where the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the Respondent has the burden of production to provide appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name (see, paragraph 4(c)(i) of the Policy, and also see, paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)). Since the Respondent did not submit any argument, the Panel will analyze how the Complainant has established a prima facie case. The disputed domain name resolves to a pay-per-click website containing links to the competitors of the Complainant. Such use could not create any legitimate interests in the disputed domain name. In addition, the Respondent failed to submit any Response. Taking into consideration the Respondent’s default and the circumstances of this case, the Panel infers that the Complainant’s allegations are true where appropriate to do so (see, Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009). The Panel concludes the Respondent has no rights and legitimate interests in respect of the disputed domain name.

Accordingly, the Panel finds the second element of the Policy is made out.

C. Registered and Used in Bad Faith

First, the Panel analyzes the nature of the Respondent’s registration of the disputed domain name. As the Complainant stated, the LEGO trademark has been registered by the Complainant long before the date of the registration of the disputed domain name. The Respondent’s website constitutes a domain parking page, which has web-searching function and links to LEGO toy related websites such as “LEGO STARWARS” which is a new LEGO product line, although almost all links are dead links. Under these circumstances, the Panel finds that the Respondent should have known the Complainant’s trademark and its business. The Panel thus concludes the Respondent has registered the disputed domain name in bad faith.

Secondly, the Panel also analyzes whether the Respondent uses the disputed domain name in bad faith. The Respondent operates a pay-per-click website, which has a title (in the top area of the website) “legonasa.com” and many links to the related LEGO products. Since almost all links on the Respondent’s webpage are dead, the Respondent’s intent to keep the website is just to divert Internet users to its website and obtaining revenue from click-through advertising scheme of the website. This qualifies as bad faith under paragraph 4(b)(iv) of the Policy in that the Respondent by using the disputed domain name attempts to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website (see, P&G Prestige Products, Inc. v. Ryogo Sugai, WIPO Case No. D2009-1098). The Panel follows that decision, since the present case is in a similar factual situation with it. The Panel thus concludes the Respondent uses the disputed domain name in bad faith.

Accordingly, the Panel finds the third element of the Policy is also made out, since the disputed domain name was registered and used in bad faith.

D. Remedy

The Complainant requested for the transfer of the disputed domain name. However, we are faced with the problem that the disputed domain name incorporates two trademarks. The trademark LEGO is owned by the Complainant and the trademark NASA is owned by the National Aeronautics and Space Administration of the United States of America (NASA). The Panel finds that NASA has applied for the trademark NASA on December 18, 2010, which is on the principal register at United States Patents and Tradermark Office (USPTO) with registration number 89001633. A prior UDRP panel has stated, “the Panel considers that the transfer of <911hyundai.com> would violate a third party’s right - Hyundai - in the absence of a letter of support from it or a co-action, although the Panel is aware that in some cases such a transfer was ordered but due to specific circumstances, i.e. a probable merger between the holder of the two trademarks included in the contested domain name (Chevron Corporation v. Young Wook Kim, WIPO Case No. D2001-1142)” in Dr. Ing. h.c.F. Porsche AG v. Automotive Parts Solutions, WIPO Case No. D2003-0725. In the current case, the Panel does not find a probable merger or specific relationship between the Complainant and NASA, since NASA is a US Federal Agency. In this regard, although the Complainant alleges that NASA and LEGO signed a partnership contract relating to NASA inspired products (Annex 10.1 to the Complaint), no letter of support issued by NASA and no copy of the partnership contract was submitted.

Nonetheless, under the circumstances, the Panel still feels that the appropriate order should be the transfer of the disputed domain name to the Complainant. It is true that the submission of the letter of support issued by another trademark right holder of related trademarks or a copy of the trademark licensing contract between companies is desirable, the Panel notes that in the case of domain names which incorporate multiple company’s trademarks, a submission of a letter of support should be requested from the complainant only because infringement of a third party’s right may reasonably occur. Hence, although the Panel is of the view that we should avoid the case where there may be a potential infringement of a third party’s rights, the Panel is also mindful of the danger of a cancellation remedy, since the Respondent might register the disputed domain name again. In this current case, the Complainant and NASA have agreed to a partnership (see Annex 10 to the Complaint), so there seems a small likelihood of the Complainant later infringing a third party, namely NASA’s right. In such a situation, even though the Complainant did not submit a letter of support, the Panel is of the view that under the specific circumstances of this case, an appropriate remedy in this dispute should be the transfer of the disputed domain name to the Complainant.

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 <legonasa.com> be transferred to the Complainant.

Keita Sato
Sole Panelist
Date: October 28, 2013